MODULE 1 3.

Advertise
August 28, 2020 ● Police marks - limit territory
● Merchant marks - recover lost property
CONCEPT AND HISTORY OF TRADEMARKS AND TRADEMARK PROTECTION ● Trademarks were born out of necessity
● Mark ​means any visible sign capable of distinguishing the goods (trademark) or services ○ Response to the expansion of trade
(service mark) of an enterprise and shall include a stamped or marked container of goods ○ Illiterate
○ Distinctive + Capable of distinguishing ● Used before for:
○ Must have been used (since this is the time from when you can distinguish it) ○ Personal marks
● Marks not visible: jingles, sounds ○ House marks
○ Not covered by trademark but it may be covered by copyright, unfair ○ Proprietary marks
competition ○ Marks to indicate sign
● Can only enforce rights as long as there is deception or confusion ● Captures goodwill - imprinting upon the public mind an anonymous and impersonal
● Distilleria Washington v. CA​: It is basically an intellectual creation that is susceptible to guarantee of satisfaction, creating a desire for further satisfaction
ownership and, consistently therewith, gives rise to its own elements of jus posidendi, jus ● Economizing function - identifying origin and quality will stimulate purchases. It will
utendi, jus fruendi, jus disponendi, and jus abutendi, along with the applicable jus lex, lower search costs and foster quality control
comprising that ownership. The incorporeal right, however, is distinct from the property ● Quality determines the value of the mark
in the material object subject to it. Ownership in one does not necessarily vest ownership ○ If you lose this, it is as if there is no trademark
in the other. Thus, the transfer or assignment of the intellectual property will not ● Consistency determines if the mark will have value at all; must always be of the same
necessarily constitute a conveyance of the thing it covers, nor would a conveyance of the quality otherwise the mark has no purpose
latter imply the transfer or assignment of the intellectual right ○ Must always be of the same quality, otherwise the trademark has no purpose
● There is no such thing as trademark rights in gross ● ↑ Quality, ↑ Value of the Mark
○ Meaning of rights in gross: Ownership of intangible property rights which are ○ High quality increases the value of the mark
not dependent on ownership of the tangible property they affect. ○ Low quality decreases the value of the mark
○ You still have to prove certain circumstances before you can properly claim ○ Inconsistency makes the mark worthless
that you have a trademark over a thing ● Source identifier even if unknown source
● Hanover Star Milling Co. v. Metcalf​: A man's right to the continued enjoyment of his trade ● In summary:
reputation and the goodwill that flows from it, free from unwarranted interference by 1. Protects consumers
others, is a property right for the protection of which a trademark is an instrumentality. 2. Protects the goodwill in a trademark
It is plain that, in denying the right of property in a trademark, it was intended only to 3. Protects the trademark owner
deny such property right except as appurtenant to an established business or trade in
connection with which the mark is used. DISTINCTIONS AND DIFFERENCES WITH OTHER IP RIGHTS
If he does not carry on a trade in iron, but carries on a trade in linen, and stamps a lion on
his linen, another person may stamp a lion on iron; but when he has appropriated a mark Infringement of Trademark v. Unfair Competition
to a particular species of goods, and caused his goods to circulate with this mark upon ● You can fall back to unfair competition but you have to prove deceit
them, the court has said that no one shall be at liberty to defraud that man by using that ● CIR v. San Miguel​: Trademark infringement is part of the broader law of unfair
mark and passing off goods of his manufacture as being the goods of the owner of that competition
mark. ● Differences:
● Faberge Inc v. IAC:​ One who has adopted and used a trademark on his goods does not
Infringement of Trademark Unfair Competition
prevent the adoption and use of the same trademark by others for products which are of
a difference description
Unauthorized use of a trademark Passing off of one’s goods as those of
● Champion Spark Plug v. Sanders​: A trademark only gives the right to prohibit the use of it
another
so far as to protect the owner’s goodwill against the sale of another’s product as his.
When the mark is used in a way that does not deceive the public we see no such sanctity Fraudulent intent is unnecessary Intent is essential
in the word as to prevent its being used to tell the truth. It is not taboo.
● Murpuri v. CA: M ​ odern functions of trademarks: Prior registration of the trademark is a Registration is not necessary
1. Identify the origin or manufacturer prerequisite to the action
2. Identify the quality
1
 Involves Misrepresentation Trademarks Copyrights Patents

Range Limited range but has a more Broader and more inclusive Nature Source identification of Original literary and Inventions and designs
recognized exclusive right goods or services artistic expressions

Protected Property Against wrongful act Scope Protects against Protect against Excludes others from
likelihood of confusion unauthorized copying making, using or selling
Coverage Restricted to its technical meaning All wrongful acts of competition not the invention
necessarily involving trademark rights
Purpose Protects owners and Encourages and Encourages and rewards
public from unfair rewards creative creative invention
Trademark v. Patent competition expression
Trademark Patent
How to Registration Creation Registration
Obtain
Adoption of something already in existence Create something from nothing
Rights

Trademark Cases Principal Prima facie evidence of Prima facie evidence of Gives rise to patent
Should Trademark Law be associated with Copyrights and Patents? Advantages validity and ownership; ownership rights
of gives rise to trademark
● Pros:
Registration rights
1. Copyrights and Patents are used to level up trademark doctrines
2. Similar subject matter - embodied the personality of the owner Basis for Ownership and actual Originality Novelty, inventive step
● Cons Registration use and usefulness
1. No creation of works
2. Copyright and patents are concerned with the creation and its protection, whereas
trademark is concerned with forgery and fraud

US Constitution PH Constitution

Clause 8 - To promote progress of science and Article XIV, Section 13. The State shall protect
useful arts, by securing for limited times to and secure the exclusive rights of scientists,
● Weakest: Unlike the others, you still have to prove certain circumstances (first use, etc)
authors and inventors the exclusive right to inventors, artists, and other gifted citizen to
their respective writings and discoveries their intellectual property and creation, before you are entitled to it
(Copyrights and Patent clause) particularly when beneficial to the people, for ● Strongest: Mere use of the patented thing, even if accidentally made, can make that user
such period as may be provided by law liable
Clause 3 - To regulate commerce with foregin
nations, and among the several states, and wit SOURCES OF TRADEMARK LAW
the Indian tribes (Commerce clause)

Kho v. CA
● Trademarks - any visible sign capable of distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a stamped or marked container of
goods. A trade name means the name or designation identifying or distinguishing an
enterprise
● Copyrights - confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the moment of their creation
● Patents - refer to any technical solution of a problem in any field of human activity which
is new, involves an inventive step is and is industrially applicable

2
October 9, 2020 ○ Internet Search (Google, Dictionaries)
■ Determine whether the word is a name of a place associated to the
REGISTRATION OF MARKS product, if the word is immoral in some countries
● Crowded/Weak
Distinctiveness of Marks ○ Fiesta (class 29 for food products) -- Suggestive mark
● Mark refers to any sign capable of distinguishing the goods (trademark), or services ○ Kojic Acid - Descriptive/Generic
(service mark) of an enterprise and shall include a stamped or marked container ● Factors
● R - registered trademark, ™ - that word is being appropriated or used by another entity or ○ Type of Mark (word, figurative, combination)
person as a trademark to distinguish his service or good ■ Determine dominant element--your priority in conducting the
● Spectrum of Distinctiveness search
○ Fanciful - most distinctive bc they are invented words so you cannot find them ○ Meaning
in the dictionary, coined words (Google, Uniqlo) ○ Phonetic equivalent
○ Arbitrary - distinctive and can be registered although they are words that can ■ Compare not just visual but also the sound
be found in the dictionary, they are used for goods or services which are not ○ Goods and services covered by the mark
related to it (Apple, Arrow) ■ In comparing the similarity, we look at visual but also these
○ Suggestive - can be registered but do not directly tell the consumers what the ● Tips
product is or what the characteristics of the product are (you need imagination ○ Type in the word
that what is being related to it is that product) (Fresh for candy, Spacewalk) ○ Phonetic equivalent
○ Descriptive - cannot be registered bc everybody in the industry should be able ○ Picture equivalent
to use that for the product (effective, protect) ○ Foreign equivalent (translation)
■ Exception: Acquired distinctiveness ● Tips for figurative mark
○ Generic - what we call the products (vaccine, face mask) ○ Search word equivalent
■ Booking.com case - combination of 2 generic terms is considered as ○ Search using Vienna Code or Description
generic but it still decided in favor of the company bc it depends on ○ Use “Image Search” functionality in WIPO Global Brand Database but it is not
the understanding of the consumer well-configured (does not filter well--populated and polluted search results)

TM Search Registrability of Marks ​(Sec. 123.1)

It is important to do this prior to the filing of application to: ● Immoral, deceptive, scandalous, disparage, flags, coat of arms, and other elements
● Determine the existence of an earlier registered or filed mark that is confusingly similar ● Names, portraits or signatures
to or identical with the mark sought to be registered ○ Except if he is the applicant himself or if authorized
● Gather information concerning elements that comprise the mark (words that Bureau of ● MIsleading marks
Trademarks asked for disclaimer--so clue that the word is descriptive) ○ Bolpen for pencils
● Assess the registrability of the mark (either proceed or redesign the trademark, or enter a ○ Baby Powder for detergents
disclaimer, useful in giving advice to client) ■ One way to argue is to allege that baby powder for detergents may
● Avoid legal challenges such as opposition and cancellation (advice client to apply for a diff only be considered as suggestive (that detergent smells like baby
mark or to add elements to avoid confusing similarity with the other existing trademarks) powder)
● Tools ○ Kalinga Gold for coffee
○ TM Search Databases (WIPO Global Brand Database, TMView, ASEAN TMView) ○ Champagne for wine not from Champagne, France
■ ASEAN TMView - limited ASEAN countries using electronic ■ Geographical
databases ● Generic
○ WHO Database Search (INN) ● Customary or usual in trade
■ International Nonproprietary Names ○ Tablet, Citybus, VCO
■ Provides for generic names ○ Only acquired meaning in a particular industry, field
○ WIPO Article 6ter Database ● Descriptive
■ Protected flags, emblems, coat of arms, hallmarks, etc ○ As to kind
○ Plant Variety Protection Database (DA-BPI) ○ As to purpose (Gargol Mouth Flush)
■ For plants --- new plant varieties ○ As to origin
3
 ● Color ○ PHP1,212 per class (filing fee)-- if small entity
○ Color alone unless defined by a given form (UPS truck, Duracell battery) ○ + PHP 290 (if color claim)
● 3D Marks ○ PHP2,400 for publication and issuance
○ Consisting of shapes ● Nice Classification
○ When the mark consists of shapes necessitated by technical factors, nature of ○ 45 classes
goods--functional not meant to identify the origin--not registrable ■ 1-34 refer to goods
○ But if only for aesthetic purposes -- pwede ■ 35-45 refer to services
● Marks against public order or morality (catch all provision) ○ According to the fields where the goods/services belong
○ Mary Jane for cigarettes ● eTMfile
○ Pro-Terrorism ○ System for the online applications only for trademark applications
● Identical Marks ● Online Application
○ Exactly the same or almost exactly the same (insignificant difference/s) ○ TM details
■ “Ford” for tools was refused ○ Goods and services
○ Different fonts ○ Claim of priorities
● Confusingly similar marks ■ If a client has previously filed an application abroad and wants to
○ There are differences but the dominant elements are similar (Big Mac v. Big claim earlier filing date in that foreign country as long as it has been
Mak, Havaianas v. Hawaianas, Red Bull v. *pic of red bull*) filed within 6 mos.
○ Applicant and Agent's details
Registration Process ○ Confirm and Sign
1. Filing of an application ○ Online Payment
a. Requirements ● When is the filing date? Under the IP Code, no filing date shall be accorded if payment has
b. According to filing or priority date not been made so date must be the day the applicant paid the filing fee
2. Search and Examination ○ This is your priority date
a. Actions and responses (examiner issues registrability report then applicant ○ Resident agent is required if applicant not domiciled in PH
responds) ● Title
b. If it meets -- APPLICATION ○ Word
3. Publication (30 days) ○ Figurative mark - No title
a. If there is an opposition, it is heard by the office appealable to Bureau of Legal ○ If foreign characters then you need to give the translation
Affairs then amay be appealed to DirGen of IPO then CA then SC ● Disclaimer does not mean you have to remove them as part of the mark but you cannot
b. If it becomes final and executory, Issuance of certification of registration then have exclusive right over those
Publication ● Goods/Services must be specific and broad terms are unacceptable (specify what kind of
c. If there is no opposition, then issuance of registration then publication beverage)
● One application may cover several classes
● Filing Methods ○ It may be divided into 2 or more applications before the publication of the
○ Online filing through the eTMfile (now mandatory) mark for opposition
○ Manual filing (under exceptional circumstances) ● Vienna Classification
○ Filing by mail or courier (under exceptional circumstances) ○ Pertains to figurative elements of the marks
● Requirements (127) ○ 29 categories from celestial bodies to colors
○ App Form ● Formality and Substantive Exam
○ Identity ○ Registrability report is the first action issued by examiner if he/she has
○ Address objections which must state all the issues
○ List of goods/services, etc ○ Example: broad, incomprehensible, misclassified, unclassified
● Types of Applicants ○ Classification eTools
○ Small Entity - Assets not more than PHP100M (SUCs, Youth Filers, and Gov’t ■ eTMfile
Agencies given discounts) ■ Madrid Goods and Services Manager (MGS)
● Fees ■ ASEAN TMClass
○ Per class basis (Nice Classification) ■ UPSTO IDM
4
 ■ EU TMClass ○ If you file an incomplete response
■ WIPO Nice Classification ○ May be revived by filing a request within 3 months from the date of
○ Remedies if one class only affected in a multi-class application abandonment and upon payment of refiling free (based on FAME)
■ Disagree and argue ○ Failure to revive then final abandonment
■ Request for the division of application ■ Remedy: Re-file application provided not barred by res judicata
■ Limit the goods/services in the affected class ● Refusal of examiner may be appealed to Director of BOT
■ Delete entire affected class ● Petition to question the correctness of an action of examiner which is not subject to
■ Submit co-existence agreement (negotiate with owner of the mark) appeal
■ Request for suspension of action ○ Example: disclaimer issue
● Disclaimer ○ Does not finally dispose of the case
○ Generic term or elements ● Appeal
○ Descriptive ○ Notice of appeal 2 months from mailing date
○ Customary ○ May be extended to 2 month
○ Do not function as TM (established in --, etc.) ○ 2 months from the filing of Notice of Appeal without need of notice or order
● Remedies if opposed bc descriptive from the director -- submit appellant’s brief
○ Disagree and argue ○ Examiner should submit answer within 2 months and reply may be filed only 1
■ Why not descriptive month from such date
■ Argue that it is suggestive ○ MR to Director of BOT or Appeal to the DG within 1 month
■ Invoke Anti-Dissection Rule ● Allowance when the action by the examiner giving the applicant a notice to pay the
■ Argue it is a unitary mark publication fee -- Allowance for Publication for Opposition
■ Disclaim separately ● Certification is prima facie evidence
○ Agree with examiner ○ Of the validity of registration
■ Only a disclaimer ○ Ownership
■ Mark can still be registered but client cannot claim exclusive right ○ Exclusive right
over the disclaimed part ● Duration: 10 years from registration renewable every 10 years
● Official Action
○ Registered mail/courier Maintenance Requirements
○ IPOPHL Box ● DAU
○ e-COrr ○ First declaration must be filed with evidence within 3 years from filing date of
○ Email, etc application--otherwise, refused or removed
● Responses ■ Photographs of mark attached to product or signage of
○ eDocfile electronic filing (now mandatory) establishment
○ By email or manual (under exceptional circumstances) ○ 5th anniversary use -- file within 1 year from the 5th anniversary otherwise
○ Registered mail or courier (under exceptional circumstances) removed
○ Period to respond is 2 months from MAILING DATE OF THE OFFICIAL ACTION ● Renewal DAU
extendible for 2 months upon written request and payment of extension fee ○ 2017
● New Normal ○ Within 1 year from the date of renewal otherwise removed
○ e-Corr (how IPO will communicate with you)
○ eDocfile (how you will communicated with IPO)
● Steps
○ Request Type
○ Affected Mark
○ Attachment and Declaration
○ Applicant’s details
○ Agent’s details, etc
● Abandonment
○ Fail to respond within the 2 month period or the extended period
5