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    Negre Notes - TM

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    JeahMaureenDominguez
    This document summarizes key concepts regarding trademarks under Philippine law: 1) Trademarks are visible signs that distinguish goods/services of one enterprise from another and can be inherently distinctive (suggestive, arbitrary, fanciful) or descriptive. 2) Trademark rights are acquired through valid registration, though prior use may provide ownership under some interpretations. Registration must be renewed every 10 years. 3) Trademark owners have the exclusive right to use their mark for related goods/services to prevent likelihood of confusion in the public. Infringement involves unauthorized use that causes confusion. 4) While trademark registration is territorial, exceptions exist for internationally well-known marks, bad faith foreign registrations, and trademark

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    Negre Notes - TM

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    This document summarizes key concepts regarding trademarks under Philippine law: 1) Trademarks are visible signs that distinguish goods/services of one enterprise from another and can be inherently distinctive (suggestive, arbitrary, fanciful) or descriptive. 2) Trademark rights are acquired through valid registration, though prior use may provide ownership under some interpretations. Registration must be renewed every 10 years. 3) Trademark owners have the exclusive right to use their mark for related goods/services to prevent likelihood of confusion in the public. Infringement involves unauthorized use that causes confusion. 4) While trademark registration is territorial, exceptions exist for internationally well-known marks, bad faith foreign registrations, and trademark

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    This document summarizes key concepts regarding trademarks under Philippine law: 1) Trademarks are visible signs that distinguish goods/services of one enterprise from another and can be inherently distinctive (suggestive, arbitrary, fanciful) or descriptive. 2) Trademark rights are acquired through valid registration, though prior use may provide ownership under some interpretations. Registration must be renewed every 10 years. 3) Trademark owners have the exclusive right to use their mark for related goods/services to prevent likelihood of confusion in the public. Infringement involves unauthorized use that causes confusion. 4) While trademark registration is territorial, exceptions exist for internationally well-known marks, bad faith foreign registrations, and trademark

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    © All Rights Reserved
    Download as PDF, TXT or read online from Scribd
    Download as pdf or txt
    91 views2 pages

    Negre Notes - TM

    Uploaded by

    JeahMaureenDominguez
    This document summarizes key concepts regarding trademarks under Philippine law: 1) Trademarks are visible signs that distinguish goods/services of one enterprise from another and can be inherently distinctive (suggestive, arbitrary, fanciful) or descriptive. 2) Trademark rights are acquired through valid registration, though prior use may provide ownership under some interpretations. Registration must be renewed every 10 years. 3) Trademark owners have the exclusive right to use their mark for related goods/services to prevent likelihood of confusion in the public. Infringement involves unauthorized use that causes confusion. 4) While trademark registration is territorial, exceptions exist for internationally well-known marks, bad faith foreign registrations, and trademark

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    Negre Notes IP Lecture November 24, 2017

    TRADEMARK
    Any visible sign capable of distinguishing the goods or services produced or provided
    by one enterprise from those of other enterprises
    o Visible sign (NOT sound or smell)
    o Distinctive

    Distinctiveness of a mark
    Generic > no one is supposed to use it (ie. Aspirin)
    Descriptive > describes the product directly, immediately
    Suggestive (inherently distinctive) > blu ray , makes you think what the product is ie.
    Jaguar
    Arbitrary or fanciful (inherently distinctive) > apple
    o Arbitrary: common word used arbitrarily (Apple)

    Ownership of a mark
    Sec. 122
    o 159.1
    TM rights are acquired through valid registration
    o BUT see Berris v Abyadang and EY Industrial v Shen Dar > ownership acquired
    through prior use (Negre disagrees with the decision because the law is clear,
    this is the old law)

    Prior use NOT a requirement before application but there must be ACTUAL use after
    application within 3 years from filing of application
    o Declaration of Actual use
    Protection
    o 10 years from registration
    renewable every ten years

    rights of TM owner
    right to exclusive use of the mark in connection with ones own goods or services
    resulting in likelihood of confusion
    right to prevent others from use of an identical mark for the same, similar or related
    goods or services

    will TM registration abroad be valid and binding here?


    NO, GR is territoriality
    BUT exceptions
    o Internationally well-known mark (lacoste, In n out)
    o Bad faith registration (Birkenstock in Marikina)
    BF in TM is NOT BF in tort but mere knowledge of existence of a prior
    user, no need for bad intent
    o Dilution of mark
    TM Infringement
    Elements
    o Ownership of TM through registration
    o TM is reproduces, counterfeited, copied, or clourably imitated by another
    Colorable imitation (Rule 18, Sec. 4, AM 10-3-10 SC)
    Kamukha
    Ounterfeiting: Class A
    o Unauthorized use with sale, offering for sale or advertising of any such goods,
    business or services or those related
    Use of identical or similar mark for non-identical, dissimilar or non-
    related goods = No infringement
    o Likelihood of confusion
    Gravamen of infringement
    NO actual confusion necessary, only likelihood
    Types
    As to the goods themselves
    Source of origin of such goods (Mcdo Case) > 434 SCRA 473
    (2004)

    Mory Cario C2018


    Imam buy this sana but I bought the wrong one pala
    Tests of confusion
    Diaz v People
    Dominancy Test
    Prevalent features of the product
    What the consumer remembers
    GR word mark is the one remembered
    Holistic Test
    Marks in their entirety

    Other factors
    Idem Sonans rule
    Aural effects of the words and lettered cotaned in the
    marks are also considered in determining the issue of
    confusin similarity
    o Pycogenol v pco-genol

    TM fair Use
    Sec. 148
    Using bona fide their names for purposes of mere identification and cannot mislead the
    public as to the source of the goods or services

    Tradename infringement
    Same protection as for TOM
    o Sec. 165. 3 in relation to Sec. 153 to 156 IPC
    Only but big difference: registration is NOT a requirement for ownership of a
    Tradename
    o Sec. 163.2 (a) IPC
    o Registration with the IPO
    o GR 169504 March 2010 Coffee partnrs inc v san Francisco coffee

    All that is required is that the Trade name is previously used in trade or commerce in the
    Philippines

    Sec. 165. 2(b) IPC

    Tradename infringement
    Elements
    o Same BUT registration with IPO not required

    Unfair competition
    Protecting ones good will
    Passing off or attempting to pass off (GR 169974, 2010)
    Hoarding of softdrink or beer bottles (not unfair under IPC but yes under CC)
    Elements
    o General appearance
    o Intent to deceive
    True test of unfair competition
    o Whether there is an intent to deceive

    Mory Cario C2018

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