TRADEMARK

WHAT IS A MARK?

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. (Sec. 121.1)
WHAT IS A TRADEMARK?

 WORD (WORDMARK) ex. GOOGLE, INSTAGRAM

 SYMBOL OR DEVICE (FIGURATIVE MARK) ex. LOGOS
 COMPOSITE MARK (it has a logo and the name of the enterprise)
 SLOGAN (JUST DO IT.)
 STAMPED/MARKED CONTAINER (SAN MIGUEL BOTTLE)
MARKS OF OWNERSHOP

 TRADE MARKS

 TRADE NAMES – SM DEPARTMENT STORE, ROBINSONS, RUSTANS ETC.

 SERVICE MARKS – THE SAME AS A TRADEMARK BUT IDENTIFIES THE

SERVICE RATHER THAN THE PRODUCT.

 COLLECTIVE MARKS
SERVICE MARKS

Service marks are sometimes confusing. For example,

is McDonald's a service or a product? McDonald's the
company is a service. Within that service - providing
fast food - the company may have many products
that are also trademarked. The Big Mac is a
trademarked product.
 WHAT IS A COLLECTIVE MARK?

 Any visible sign capable of distinguishing the origin, common characteristic,

quality of goods or services of different enterprises under the control of the
registered owner. (Sec. 121.2)
 The owner may be either an association of which those enterprises are members
or any other entity, including a public institution or a cooperative.

The owner of the collective mark is responsible for ensuring the

compliance with certain standards (usually fixed in the regulations
concerning the use of the collective mark) by its members. Thus,
the function of the collective mark is to inform the public about
certain particular features of the product for which the collective
mark is used. Most countries require that an application for a
collective mark be accompanied by a copy of the regulations
which govern the use of the collective mark.
 FUNCTIONS OF A MARK
(MIRPURI VS CA)
DIFFERENTIATOR
SOURCE OR ORIGIN
QUALITY
ADVERTISING
“It has been said that 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.”

“Merchandising shortcut” – a person is induced to select what he wants, or what he has been led to
believe he wants.

“Silent salesman”
WHEN CHOOSING A MARK…
WHEN CHOOSING A MARK….

• Fanciful marks- (coined words) invented solely for the purpose functioning as a mark.
Ex. Clorox, Petron, Kodak

• Arbitrary Marks – common words which is used in a meaningless context. It has a dictionary meaning
before being adopted as a trademark in connection with goods or services unrelated to the dictionary
meaning.(Ex. Apple for computers, Camel for cigarettes and Tide for Detergents, Nokia for cellphones)

• Suggestive Marks are those that suggest some quality of ingredient of the goods or services to which the
marks are applied. They may be best described as “subtly descriptive”.
Ex. Mr. Clean for laundry soap, Close-up for toothpaste, Ivory for soap, Globe mobile

• Descriptive marks – a term with a dictionary meaning, which is used in connection with products or services
directly related to the meaning. Ex. Matibay for shoes, Pure for water, Eye Center.

• Generic Marks – do not describe the goods or services but rather name the type of product or service as
they are called. Ex. Beer, Gasoline Station, Grocery,
HOW ARE RIGHTS TO A MARK ACQUIRED?

o By use - Section 2 A of o By registration – Sec. 122 of

RA 166 (See Sec. 124.2 RA 8293
of RA 8293)

WHEN? WITHIN THREE (3)

YEARS FROM THE FILING DATE
OF THE APPLICATION.
• Trademark and service mark rights arise through
USE IN COMMERCE. In Sec. 2, of RA 166, prior use in
Philippine commerce was the basis of ownership.
(Unno Commercial vs. Gen Milling Corp, 120 SCRA,
904)
 UNNO COMMERCIAL VS. GEN MILLING
CORP.

 The right to register trademark is based on ownership. When the applicant

is not the owner of the trademark being applied for, he has no right to
apply for the registration of the same. Under the Trademark Law only the
owner of the trademark, trade name or service mark used to distinguish his
goods, business or service from the goods, business or service of others is
entitled to register the same. The term owner does not include the
importer of the goods bearing the trademark, trade name, service mark,
or other mark of ownership, unless such importer is actually the owner
thereof in the country from which the goods are imported.
Kabushi Kaisha Isetan v. IAC, 203 SCRA
583

 “A fundamental principle of Phil Trademarks Law is that actual

use in commerce is a pre-requisite to the acquisition of
ownership over a trademark or tradename. x x x In fact, a prior
registrant cannot claim exclusive use of the trademark unless it
uses it in commerce.”
 • Adoption alone of a trademark would not give exclusive right
thereto. Such right grows out of their actual use. Adoption is not
use. One may make advertisements, issue circulars, give out
price lists on certain goods; but these alone would not give
exclusive right of use. For trademark is a creation of use.
EXCEPTIONS:
“ Indeed, the Philippines is a signatory to this Treaty and, hence, we must
honor our obligation thereunder on matters concerning internationally
known or well known marks.

However, this Treaty provision clearly indicated the conditions which must
exist before any trademark owner can claim and be afforded rights such as
the Petitioner herein seeks and those conditions are that:

◦ the mark must be internationally known or well known; the subject of

the right must be a trademark, not a patent or copyright or anything
else;

◦ the mark must be for use in the same or similar kinds of goods, and

◦ the person claiming must be the owner of the mark.

Is the doctrine on actual use still
applicable?

Yes.Sec 124.2 requires an declaration of actual

use within 3 years from the filing date, otherwise
the application shall refused or the mark removed
from the register by the Director. Hence, to
maintain the validity of registration one has to use
the mark. In other words, it is the actual use of the
mark or trade name which perfects the ownership
of the mark.
• Sec, 145 requires a declaration of actual use
within one year from the 5th anniversary of the
date of registration otherwise the mark shall be
removed from the register
DURATION OF A TRADEMARK

 Section 145. Duration. - A certificate of registration shall remain

in force for ten (10) years: Provided, That the registrant shall file
a declaration of actual use and evidence to that effect, or
shall show valid reasons based on the existence of obstacles
to such use, as prescribed by the Regulations, within one (1)
year from the fifth anniversary of the date of the registration of
the mark. Otherwise, the mark shall be removed from the
Register by the Office. (Sec. 12, R.A. No. 166a)
 RENEWABLE EVERY 10 YEARS.
DECLARATION OF ACTUAL USE

The applicant or the registrant shall file a DAU of

the mark with evidence to that effect within three
(3) years from the filing date of the application.

Otherwise, refused or removed from the register.

5TH ANNIVERSARY

The registrant shall file a DAU of the mark with

evidence to that effect within one (1) year from the
fifth anniversary of the registration.

Otherwise, removed from the register

CONFUSION OF TRADEMARKS
• In general, confusion of marks and trade names is the
result of confusing similarity between two marks or two
trade names.

• Confusing similarity refers to resemblance between

such a mark or trade name of a person and that of
another as to likely,when applied to or used on the
respective goods, business or services causes
confusion or mistake on the part of the purchasers as
to the goods or services themselves or as to their
source or origin .
 KINDS ( CONFUSION)

• Confusion of Goods – a purchaser purchased a product in the

belief that he/ she is purchasing that of the other.

• Confusion of Business – exists when though the goods or services of

the parties are different, the defendant’s product is such as might
reasonably be assumed to originate with the plaintiff, and the
public would then be deceived either into that belief or into the
belief that there is connection between the plaintiff and defendant
when in fact such does not exist.
• While there is confusion of goods when the products
are competing, confusion of business exists when the
products are non-competing but related thereto
enough to produce confusion of affiliation.

• Likelihood of confusion is sufficient on the part of the

buying public as to deny or cancel registration of the
junior user or to constitute infringement of the mark of
the senior user.

• Purchaser – ordinary or average purchaser with at least

a modicum of intelligence; not the completely unwary
customer but those who are at least accustomed to
buy and are familiar with the goods in question
THE TEST APPLIED TO DETERMINE
CONFUSION OF GOODS

• Dominancy Test - If the competing trademark contains

the main or essential or dominant features of another, and
confusion and deception is likely to result, infringement
takes place
• Holistic Test – requires the entirety of the competing marks
must be considered in determining confusing similarity.
Trademarks in their entirety as applied to the products,
including labels and packaging are considered. It is not
enough to consider their words and compare the spelling
and pronunciation of the words.
DOMINANCY TEST

• Dominancy Test – usually applied where the marks involved

are composite marks, or consists of two or more features.
The test of dominancy is now explicitly incorporated into
law in Section 155.1 of the Intellectual Property Code which
defines infringement as the “colorable imitation of a
registered mark xxx or a dominant feature thereof. (The
particular feature that stands out is being compared with
the mark of the junior user). This was used in the following
cases : 2 Mc Donalds cases, Asia Brewery vs. CA, SMC, EN
BANC, [G.R. No. 103543. July 5, 1993.]
 HOLISTIC TEST

• Holistic Test – this test is applied in the case of Del Monte Corp.,
et al vs. Court of Appeals and Sunshine Sauce Manufacturing
Industries[G.R. No. 78325. January 25, 1990.]when it held that :

xxxxxxx to determine whether a trademark has been

infringed, we must consider the mark as a whole and not as
dissected. If the buyer is deceived, it is attributable to the
marks as a totality, not usually to any part of it. The court
therefore should be guided by its first impression, for a
buyer acts quickly and is governed by a casual glance,
xxxxxxx
THE VICTIM

End result is prejudice or damage on the part of

the senior user and the buying public.
 STATUTORY BASIS OF CONFUSION OF
TRADEMARKS

• Sec. 121.1 (e)on well known marks whether or not

registered for identical or similar goods
• Sec. 121.1 (f) on well-known registered marks with
respect to dissimilar goods provided that the use of the
marks in relation to those goods or services would
indicate a connection between those goods and
services and the owner of the registered mark and that
the interests of the owner of the registered mark are
likely to be damaged thereby.
 FREDCO VS HARVARD MANUFACTURING
 RULE 102 OF THE RULES AND REGULATIONS ON TRADEMARKS, SERVICES, TRADE NAMES AND
MARKED OR STAMPED CONTAINERS WHICH IMPLEMENTED RA 8293.
(P. 188 SALAO)

PARAGRAPH A-I.

Any combination of the foregoing criteria is sufficient to determine that a mark is well-known,
it is clearly not necessary that the mark be used in commerce in the Philippines. Thus, while
under the territoriality principle a mark must be used in commerce in the Philippines to be
entitled to protection, internationallu well-known marks are the exception to the rule.

CRITERIA FOR DETERMINING WHETHER A MARK IS WELL KNOWN.

STATUTORY BASIS OF CONFUSION OF
TRADEMARKS

• with a registered mark with an earlier filing or priority

date in respect of:
(i) the same goods or services, or
(ii) closely related goods or services, or
(iii) if it nearly resembles such a mark as to be likely to
deceive or cause confusion.
Issues:

1. Whether or not the words “Ang Tibay” is a descriptive term.

2. Whether or not the words “Ang Tibay” had acquired a secondary

meaning

3. Whether or not the pants and shirts are goods similar to shoes and
slippers within the meaning of Sections 3 and 7 of Act # 166
Held:

1. The words “Ang Tibay” is an exclamation denoting admiration of strength or durability. It is never
used adjectively to define or describe an object. Hence, the term is NOT a descriptive word within
the meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may properly and
legally be appropriated as a trademark or tradename.

2. It is unnecessary to apply the Doctrine of Secondary Meaning in the trademark parlance. The
phrase “ Ang Tibay” being neither geographic nor descriptive, was originally capable of exclusive
appropriation as a trademark. In any event, the CA’s ruling that the Doctrine of Secondary Meaning
be fully sustained is affirmed, because Teodoro’s long and exclusive use of said phrase with relative
to its products and his business, has acquired a propriety connotation.

3. The test employed by the courts to determine whether non-competing goods are or are not of
the same class is confusion as to the origin of the goods of the second user. Although two non-
competing goods may be classified under two different classes by the Patent Office, because they
are deemed not to possess the same descriptive properties, they would nevertheless, be held to
belong to the same class if the simultaneous use on them of identical or closely similar trademarks
would be likely to cause confusion as to the origin, or personal source of the second user’s goods.
The proprietary connotation is given paramount importance. The judgment of the Court of Appeals
is affirmed, with costs against the petitioner in the three instances.
DOCTRINE OF SECONDARY MEANING

 The doctrine of secondary meaning means that a word or phrase originally

incapable of exclusive appropriation with reference to an article in the market
has, through its long and exclusive use by one entity has effectively been
distinguished and identified as that representing the user and its products. (Pearl
& Dean (Phil.), Inc. v. Shoemart, Inc. and North Edsa Marketing, Inc. (G.R. No.
148222, August 15, 2003)
Confusion of Trademarks
(Kinds)
• Confusion of Goods – a purchaser purchased a product in the belief
that he/ she is purchasing that of the other.

• Confusion of Business – exists when though the goods or services of

the parties are different, the defendant’s product is such as might
reasonably be assumed to originate with the plaintiff, and the public
would then be deceived either into that belief or into the belief that
there is connection between the plaintiff and defendant when in
fact such does not exist. (Sterling Products International,
Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, et al,) EN
BANC, [G.R. No. L-19906. April 30, 1969.]
 CONFUSION OF TRADEMARKS
• While there is confusion of goods when the products are competing,
confusion of business exists when the products are non-competing
but related thereto enough to produce confusion of affiliation.
• Likelihood of confusion is sufficient on the part of the buying public as
to deny or cancel registration of the junior user or to constitute
infringement of the mark of the senior user.
• Purchaser – ordinary or average purchaser with at least a modicum
of intelligence; not the completely unwary customer but those who
are at least accustomed to buy and are familiar with the goods in
question
 CONFUSION (TESTS APPLIED)

• Problem involved in confusion of goods is COLORABLE

IMITATION
• Refers to a close or ingenious imitation as to be calculated
to deceive ordinary purchaser or such a resemblance as to
the original as to deceive an ordinary purchaser giving
such attention as a purchaser usually gives and to cause
him to purchase the one supposing it to be the other.
(Emerald Garment Manufacturing Co. vs. CA, [G.R. No.
100098. December 29, 1995.]
 EMERALD GARMENT VS. CA
 FACTS:
 On 18 September 1981, private respondent H.D. Lee Co., Inc. filed with the Bureau of Patents, Trademarks &
Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 for the trademark
"STYLISTIC MR. LEE" used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and
lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment
Manufacturing Corporation.

 Private respondent averred that petitioner's trademark "so closely resembled its own trademark, 'LEE' as
previously registered and used in the Philippines cause confusion, mistake and deception on the part of the
purchasing public as to the origin of the goods.

 On 19 July 1988, the Director of Patents rendered a decision granting private respondent's petition for
cancellation and opposition to registration. The Director of Patents, using the test of dominancy, declared
that petitioner's trademark was confusingly similar to private respondent's mark because "it is the word 'Lee'
which draws the attention of the buyer and leads him to conclude that the goods originated from the same
manufacturer. It is undeniably the dominant feature of the mark.

ISSUES:

 Whether or not a trademark causes confusion and is likely to deceive the public is a
question of fact which is to be resolved by applying the "test of dominancy", meaning, if
the competing trademark contains the main or essential or dominant features of another
by reason of which confusion and deception are likely to result.
RULING:

 No. Stylistic Mr. Lee is not a variation of the Lee mark. HD Lee’s variation follows the format
lee riders, “ leesure”, and “leeleens” and thus does not allow the conclusion that “Stylistic Mr.
Lee” is another variation under HD Lee’s mark. Although on stylistic Mr. Lee’s label, the word
“lee” is prominent, thetrademark should be considered as a whole and not piecemeal.
Further, “Lee” is a surname.
 Personal names nor surnames cannot be monopolized as trademarks or tradenames as
against others of the same name or surname.
 Furthermore, inasmuch as Emerald Garment has shown the use of stylistic Mr. Lee since 1975
through sales invoice from stores and retailers; and that HD Lee was not able for transactions
period to 1981; the Supreme Court allowed the use of stylistic Mr. Lee by Emerald Garment.
TEST APPLIED:

• Dominancy Test - If the competing trademark contains the main or essential or

dominant features of another, and confusion and deception is likely to result,
infringement takes place
• Holistic Test – requires the entirety of the competing marks must be considered in
determining confusing similarity. Trademarks in their entirety as applied to the products,
including labels and packaging are considered. It is not enough to consider their words
and compare the spelling and pronunciation of the words.
 DOMINANCY TEST

 Dominancy Test – usually applied where the marks involved are

composite marks, or consists of two or more features. The test of
dominancy is now explicitly incorporated into law in Section 155.1
of the Intellectual Property Code which defines infringement as
the “colorable imitation of a registered mark xxx or a dominant
feature thereof. (The particular feature that stands out is being
compared with the mark of the junior user). This was used in the
following cases : 2 Mc Donalds cases, Asia Brewery vs. CA, SMC,
EN BANC, [G.R. No. 103543. July 5, 1993.] Societe Des Produits
Nestlé, S.A. v. Court of Appeals, [G.R. No. 112012, 4 April 2001]
HOLISTIC TEST

• Holistic Test – this test is applied in the case of Del Monte Corp., et al vs. Court
of Appeals and Sunshine Sauce Manufacturing Industries[G.R. No. 78325.
January 25, 1990.]when it held that :
xxxxxxx to determine whether a trademark has been infringed, we must
consider the mark as a whole and not as dissected. If the buyer is deceived, it is
attributable to the marks as a totality, not usually to any part of it. The court
therefore should be guided by its first impression, for a buyer acts quickly and is
governed by a casual glance, xxxxxxx
This test was rejected in the case of Societe Des Produits Nestlé, S.A. v. Court of
Appeals, [G.R. No. 112012, 4 April 2001]
Mighty Corp v. E & J Gallo Winery, 434
SCRA 473(14 July 2004)

• In the said case, the Supreme Court distinguished the two tests :
• The Dominancy Test focuses on the similarity of the prevalent
features of the competing trademarks which might cause
confusion or deception, and thus infringement. If the
competing trademark contains the main, essential or dominant
features of another, and confusion or deception is likely to
result, infringement takes place.
Mighty Corp v. E & J Gallo Winery, 434
SCRA 473(14 July 2004)

 Duplication or imitation is not necessary; nor is it necessary that

the infringing label should suggest an effort to imitate. The
question is whether the use of the marks involved is likely to
cause confusion or mistake in the mind of the public or deceive
purchasers. “
 APPLICATION OF THE TEST:
 In Societe Des Produits Nestle, S.A. v. CA, the Court, applying the
dominancy test, concluded that the use by the respondent therein of
the word “MASTER” for its coffee product “FLAVOR MASTER” was likely
to cause confusion with therein petitioner’s coffee products’ “MASTER
ROAST” and “MASTER BLEND.”
T]he totality or holistic test is contrary to the elementary postulate of
the law on trademarks and unfair competition that confusing similarity
is to be determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by the marks in
controversy as they are encountered in the realities of the
marketplace. “ (Emphasis supplied)
APPLICATION OF THE TEST:

 In Societe Des Produits Nestle v. Court of Appeals, 356 SCRA

207(2001), Supreme Court held : “ In view of the difficulty of
applying jurisprudential precedents to trademark cases due to
the peculiarity of each case, judicial fora should not readily
apply a certain test or standard test just because of seeming
similarities. As this Court has pointed above, there could be more
telling differences that similarities as to make a jurisprudential
precedent inapplicable.”
 APPLICATION OF THE TEST:

• In Mc Donald’s Corporation v. LC Big Mak, 437 SCRA 10 (18 August

2004) , the SC stated : “ This Court, however, has relied on the
dominancy test rather than the holistic test. The dominancy test
considers the dominant features in the competing marks in
determining whether they are confusingly similar. Under the
dominancy test, courts give greater weight to the similarity of the
appearance of the product arising from the dominant features of
the registered mark regarding the differences. Courts will consider
mode the aural and visual impressions created by the marks in
the public mind, giving little weight to factors like prices, quality,
sales outlets and market segments. X x x
 APPLICATION OF THE TEST:

 In Mc Donald’s Corporation v. MacJoy Fastfood Corp., G.R. No.

166115 (2 Feb 2007) , the SC said : “Applying the dominancy test to
the instant case, the Court finds that herein petitioner’s
“MCDONALD’S” and respondent’s “MACJOY” marks are confusingly
similar with each other such that an ordinary purchaser can
conclude an association or relation between the marks. The Court
said that while it agreed with the CA’s enumeration of the
differences between the two marks, it believed that the dominancy
test was the one suitable in this case. It noted that both McDonald’s
and MacJoy used the corporate “M” design logo and the prefixes
“Mc” and/or “Mac” as dominant features
 WHEN ARE GOODS CONSIDERED RELATED?

• Esso Standard vs. CA, 116 SCRA 336 – Implicit in the definition of
infringement is the concept that the goods must be so related that
there is a likelihood either of confusion of goods or business.
• For as long as the non-competing goods are related, there may
be infringement
• When are goods related? When they belong to the same class or
have the same descriptive properties; when they possess the same
physical attributes or essential characteristics with reference to
their form, composition, texture or quality. They may be related if
they serve the same purpose or are sold in the same channels of
trade.
 CAN THERE BE INFRINGEMENT IF THE
GOODS ARE NON-COMPETING?

• Ang Tibay vs. Teodoro, 74 Phil. 50 – “The courts have come to realize that
there can be unfair competition or unfair trading even if the goods are
non competing, and that such unfair trading can cause injury or
damage to the first user of a given trademark. First, by prevention of
natural expansion of the business and second, by having his business
reputation confused with and put at the mercy of the 2nd user. When
noncompetitive products are sold under the same mark, the gradual
whittling away or dispersion of the identity and hold upon the public mind of
the mark created by its first user, inevitably results. The original owner is
entitled to the preservation of the valuable link between him and the public
that has been created by his ingenuity and merit of his wares and services.”
CAN THERE BE INFRINGEMENT IF THE
GOODS ARE NON-COMPETING?

• Philippine Refining Co. v. N. Sam , [GR No. L-26676, July 30,

1982] – “When the business of the parties are non-competitive
and their products so unrelated that the use of the identical
trademarks is not likely to give rise to confusion, there is no
infringement. “
• Faberge v. IAC, 215 SCRA 316 – “The certificate of registration
can confer upon the registrant exclusive right to use its symbol
only to those goods specified in the certificate”
WELL KNOWN MARKS

• Preferential treatment is accorded well-known marks. Basis is

Paris Convention and TRIPS.
• Foreign nationals should be given the same treatment in each
of the member countries as that country makes available to its
own citizens.
• Under the IP Code, it is not enough that the foreign nationals
invoke that their country is a member of the Paris Convention,
they must allege and show proof that their country of origin
grants the same privileges to Filipinos as well.
 TRADEMARK INFRINGEMENT

• Section 155 defines infringement

• Elements of Infringement :
(1) The trademark infringed is registered with the IPO
(2) the trademark or tradename is reproduced, counterfeited, copied or colorably
imitated by the infringer
(3) The infringing mark or trade name is used in connection with the sale, offering for
sale or advertising of any goods or services or the infringing mark is applied to labels,
signs, prints, packages, wrappers, receptacles or intended to be used upon or in
connection with such goods, business or services.
(4) The use of the mark or its colorable imitation will likely cause confusion or mistake on
the part of the purchasers
(5) It is without consent of the trademark owner
TRADEMARK INFRINGMENT:

• To establish trademark infringement, the senior user must show :

(1) the validity of plaintiff’s mark;
(2) the plaintiff’s ownership of the mark; and
(3) the use of the mark or its colorable imitation by the alleged
infringer results in “likelihood of confusion
The owner of the registered mark or his assignee or transferee as
recorded in the IPO may file an action for infringement.
TRADEMARK INFRINGMENT

• Fraudulent use of another’s mark

• Substitution of reproduction of another trademark
• Colorable imitation of trademark (infringer does not normally
copy but only makes colorable changes, employing enough
points of similarity to confuse the public with enough points of
differences to confuse the courts – Del Monte case)
• Copying of dominant features
• Copying the general appearance ( holistic test) – usually
applied in household goods
TRADEMARK INFRINGEMENT

 “Where a comparison between two marks shows such

resemblance in the general appearance or general features as
would likely deceive ordinary purchaser of ordinary household
goods or products exercising ordinary care and to induce him to
believe that the goods bearing the marks are products of the
one and the same enterprise, the use by the junior user of the
mark may result in the infringement of the senior mark.
Conversely, where the dissimilarities predominate, there may be
no infringement.”
UNFAIR COMPETITION

• Sec. 168 defines unfair competition

• Elements of unfair competition
(1) confusing simil arity in the general appearance of the goods, and
(2) intent to deceive the public and defraud a competitor
• The confusing similarity may or may not result from similarity in the marks,
but may result from other external factors in the packaging or presentation
of the goods. The intent to deceive and defraud may be inferred from the
similarity of the appearance of the goods as offered for sale to the public.
Actual fraudulent intent need not be shown
 UNFAIR COMPETITION

• Sec. 168 defines unfair competition

• Elements of unfair competition
(1) confusing similarity in the general appearance of the goods, and
(2) intent to deceive the public and defraud a competitor
• The confusing similarity may or may not result from similarity in the marks,
but may result from other external factors in the packaging or
presentation of the goods. The intent to deceive and defraud may be
inferred from the similarity of the appearance of the goods as offered for
sale to the public. Actual fraudulent intent need not be shown.
LIKELIHOOD OF FRAUD IS SUFFICIENT. The basis of unfair competition then
is fraud.
A. False designation of origin and false description or representation are forms of unfair competition (
Sec. 169)
“Any person who, on or in connection with any goods or services, or any container for goods, uses in
commerce any word, term, name, symbol, or device or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false misleading representation of
fact, Which:
“(a) Is likely to cause confusion, or to cause mistake, or to deceive as to affiliation, connection, or
association of such person, or as to the origin, sponsorship, or approval of his or her goods,
services, or commercial activities by another person; or
“(b) In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another person’s goods, services, or commercial activities, shall
be liable to civil action for damages and injunction provided in Sections 156 and 157 of this act by
any person who believes that he or she is likely to be damaged by such act.
TRADEMARK INFRINGMENT VS UNFAIR
COMPETITION

• Infringement • Unfair Competition

1. is the unauthorized use of a 1. is the passing off of one's goods as those
trademark of another.

2. fraudulent intent is unnecessary 2. fraudulent intent is essential

3. registration is not necessary.
3. the prior registration of the
trademark is a prerequisite to the
action,
REMEDIES AVAILABLE:

• JUDICIAL REMEDIES
A. Civil Actions
a) Damages – amount of damages prayed for determines jurisdiction. It is a condition
precedent that before a plaintiff may recover damages, the mark has been in use in trade
or commerce in the country.
b) Note : Only loss of profits are compensable. But when there is intent to mislead, double the
profit. (applicable to unfair competition, unlawful use of trade name and false designation
of origin, false description or representation)
c) Injunctions based on infringement or unfair competition
d) Destruction of infringing labels
e) Impounding of sales invoices
f) Cancellation of registration
REMEDIES AVAILABLE:

• JUDICIAL REMEDIES
A. False designation of origin and false description or representation are forms of
unfair competition.
Remedies available are damages, injunction and destruction of infringing materials.
(Sec. 169.2)
B. False declaration or representation (Sec. 162)
Remedy :damages
• JUDICIAL REMEDIES
B. Criminal Action
The criminal action may be instituted independently of the civil action, fraud being a
common element of such crime and the court may impose criminal penalties
independent of the civil and administrative sanctions. The rule against forum shopping
does not apply to the filing of a criminal action before the Office of the Prosecutor before
the courts.
• JUDICIAL REMEDIES
B. Criminal Action
> imprisonment from 2 yrs to 5 yrs and a fine ranging from P 50,000 to 200,000 shall be
imposed on any person committing acts mentioned in sections 168, 155 and 169.1
> Sections 170, 155 and 168 of RA 8293 have thus repealed Arts. 188 and 189 of the Revised
Penal Code.
REMEDIES:

C. Administrative Remedies
(through inter partes proceedings)
• Inter partes or contested cases are administrative proceedings to resolve
conflicting claims over trademarks, trade names, service marks and names or
other marks of ownership, namely :
1. Opposition proceedings – file a notice of opposition after publication of
application in the IPO gazette
2. Cancellation proceedings - filing of a petition to cancel the registration of a
mark.