Copyright and Trademark Infringement

A 'trademark is any distinctive word, name, symbol, emblem, sign, or
device, or any combination thereof adopted and used by a manufacturer or

merchant on his goods to identify and distinguish them from those
manufactured, sold, or dealt in by others. Inarguably, a trademark deserves
protection. For, as Mr. Justice Frankfurter observed in Mishawaka Mfg. Co.
v. Kresge Co.:
The protection of trademarks is the law's recognition of the
psychological function of symbols. If it is true that we live by
symbols, it is no less true that we purchase goods by them. A
trade-mark is a merchandising short-cut which induces a
purchaser to select what he wants, or what he has been led to
believe what he wants. The owner of a mark exploits this
human propensity by making every effort to impregnate the
atmosphere of the market with the drawing power of a
congenial symbol. Whatever the means employed, the aim is
the same - to convey through the mark, in the minds of
potential customers, the desirability of the commodity upon
which it appears. Once this is attained, the trade-mark owner
has something of value. If another poaches upon the
commercial magnetism of the symbol he has created, the
owner can obtain legal redress.1
In Diaz vs. People2, the Supreme Court enumerated the elements of the
offense of trademark infringement under the Intellectual Property Code:
1. The trademark being infringed is registered in the
Intellectual Property Office;
2. The trademark is reproduced, counterfeited, copied, or
colorably imitated by the infringer;
3. The infringing mark is used in connection with the sale,
offering for sale, or advertising of any goods, business or
services; or the infringing mark is applied to labels, signs,
prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods,
business or services;
4. The use or application of the infringing mark is likely to
cause confusion or mistake or to deceive purchasers or others
as to the goods or services themselves or as to the source or
1Philip Morris vs. Fortune (G.R. No. 158589, 27 June 2006).
2 G .R. No. 180677, 18 February 2013.
origin of such goods or services or the identity of such
business; and
5. The use or application of the infringing mark is without the
consent of the trademark owner or the assignee thereof.
In UFC vs. Barrio Fiesta3, the Supreme Court ruled that the protection to
which the owner of a trademark is entitled extends to cases in which in
protective purchasers would be misled into thinking that the complaining
party is in any way connected with the activities of the infringer, to wit:
“Modern law recognizes that the protection to which the owner of a
trademark is entitled is not limited to guarding his goods or business
from actual market competition with identical or similar products of
the parties, but extends to all cases in which the use by a junior
appropriator of a trade-mark or trade-name is likely to lead to a
confusion of source, as where prospective purchasers would be misled
into thinking that the complaining party has extended his business
into the field (see 148 ALR 56 et seq; 53 Am Jur. 576) or is
in any way connected with the activities of the infringer; or
when it forestalls the normal potential expansion of his business.”
(Emphasis supplied.)
Illustrations of Disney princesses are considered intellectual creations in the

artistic domain, protected from the moment of their creation. Section 172 of
RA 8293 provides:
“Section 172. Literary and Artistic Works. - 172.1. Literary and

artistic works, hereinafter referred to as "works", are original
intellectual creations in the literary and artistic domain protected
from the moment of their creation and shall include in particular:
(a) Books, pamphlets, articles and other writings;
(b) Periodicals and newspapers;
(c) Lectures, sermons, addresses, dissertations prepared
for oral delivery, whether or not reduced in writing or
other material form;
(d) Letters;
3 January 20, 2016, G.R. No. 198889.

(e) Dramatic or dramatico-musical compositions;
choreographic works or entertainment in dumb shows;
(f) Musical compositions, with or without words;
(g) Works of drawing, painting, architecture,
sculpture, engraving, lithography or other works
of art; models or designs for works of art;
(h) Original ornamental designs or models for articles
of manufacture, whether or not registrable as an
industrial design, and other works of applied art;
(i) Illustrations, maps, plans, sketches, charts and
three-dimensional works relative to geography,
topography, architecture or science;
(j) Drawings or plastic works of a scientific or technical
character;
(k) Photographic works including works produced by a
process analogous to photography; lantern slides;
(l) Audiovisual works and cinematographic works and
works produced by a process analogous to
cinematography or any process for making audio-visual
recordings;
(m) Pictorial illustrations and advertisements;
(n) Computer programs; and
(o) Other literary, scholarly, scientific and artistic
works.”
The exclusive right to publicly display artwork depicting Disney characters
belongs to the owner of the copyright. Section 177 of RA 8293 states:
SECTION 177. Copyright or Economic Rights. — Subject to the
provisions of Chapter VIII, copyright or economic rights shall
consist of the exclusive right to carry out, authorize or prevent the
following acts:
177.1. Reproduction of the work or substantial
portion of the work;
177.2. Dramatization, translation, adaptation,
abridgment, arrangement or other
transformation of the work;
177.3. The first public distribution of the original
and each copy of the work by sale or other
forms of transfer of ownership;
177.4. Rental of the original or a copy of an
audiovisual or cinematographic work, a
work embodied in a sound recording, a
computer program, a compilation of data
and other materials or a musical work in
graphic form, irrespective of the ownership
of the original or the copy which is the
subject of the rental; (n)
177.5. Public display of the original or a copy of the
work;
177.6. Public performance of the work; and
177.7. Other communication to the public of the
work.

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Copyright and Trademark Infringement

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What are the elements of trademark infringement?

What does the Supreme Court say about the protection of trademarks?

A 'trademark is any distinctive word, name, symbol, emblem, sign, or

device, or any combination thereof adopted and used by a manufacturer or

Illustrations of Disney princesses are considered intellectual creations in the

“Section 172. Literary and Artistic Works. - 172.1. Literary and

3 January 20, 2016, G.R. No. 198889.

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