Intellectual Property Law

Intellectual Property Law Reviewer identifying or distinguishing an enterprise; (Sec. 38, R.

A. No. 166a)
THE LAW ON TRADEMARKS, SERVICE MARKS AND
TRADE NAMES 121.4. "Bureau" means the Bureau of Trademarks;
Q. What is a monopoly?
A. It is the control obtained by one supplier over the 121.5. "Director" means the Director of Trademarks;
commercial market within a given region (Black’s)
121.6. "Regulations" means the Rules of Practice in
Q. Is the exercise of Intellectual Property Law a form of Trademarks and Service Marks formulated by the
monopoly? Director of Trademarks and approved by the Director
A. In a way. Copyright laws allow others to enjoy an General; and
author’s economic rights when there is permission.
Trademarks protect goodwill, it does not prevent 121.7. "Examiner" means the trademark examiner. (Sec.
production of similar goods. Patent protection lasts for 38, R. A. No. 166a)
only 17 years. Q. Can a trademark be a tradename at the same time?
A. Yes.
Q. If s, why is it allowed, since the Constitution
prohibits monopolies? Q. Can smell be a proper trademark?
A. Because it provides incentive for innovation and A. The law does not seem to allow it, since a “mark” is
technological advancement. defined as a visible sign.

Q. The Constitution provides, “the State shall regulate Q. Can sound be a proper trademark? E.g. the
the acquisition, ownership, use, and disposition of distinctive sound of a Harley Davidson
property and its increments.” How does this relate to A. No. It must be a visible sign, under the IP code, and
IP law? under an American case.
A. IP Law can be viewed as an exercise of this
regulation. Copyright lasts for only 50 years. Patent Sec. 122. How Marks are Acquired. - The rights in a
protection for 17 years. Trademarks have to be used. mark shall be acquired through registration made
validly in accordance with the provisions of this law.
Sec. 121. Definitions. - As used in Part III, the following (Sec. 2-A, R. A. No. 166a)
terms have the following meanings: Q. How is trademark protection acquired?
121.1. "Mark" means any visible sign capable of A. By registration.
distinguishing the goods (trademark) or services
(service mark) of an enterprise and shall include a Q. A Singapore company sells products over the
stamped or marked container of goods; (Sec. 38, R. A. internet to the Philippines. It does not have an office in
No. 166a) RP. If a Philippine company sells products here with the
name of the Singapore company, can the Singapore
121.2. "Collective mark" means any visible sign company sue here in the Philippines, not having
designated as such in the application for registration registered its trademark here?
and capable of distinguishing the origin or any other A. Yes, it may sue. Sec. 160 provides: Any foreign
common characteristic, including the quality of goods national or juridical person who meets the
or services of different enterprises which use the sign requirements of Section 3 of this Act and does not
under the control of the registered owner of the engage in business in the Philippines may bring a civil
collective mark; (Sec. 40, R. A. No. 166a) or administrative action hereunder for opposition,
cancellation, infringement, unfair competition, or false
121.3. "Trade name" means the name or designation designation of origin and false description, whether or

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not it is licensed to do business in the Philippines under which has been obtained as a result of the promotion
existing laws. of the mark;

Q. Does it matter where title transfers, like if it were (f) Is identical with, or confusingly similar to, or
FOB Manila or FOB Singapore? constitutes a translation of a mark considered well-
A. No. known in accordance with the preceding paragraph,
which is registered in the Philippines with respect to
Sec. 123. Registrability. - goods or services which are not similar to those with
123.1. A mark cannot be registered if it: respect to which registration is applied for: Provided,
That use of the mark in relation to those goods or
(a) Consists of immoral, deceptive or scandalous services would indicate a connection between those
matter, or matter which may disparage or falsely goods or services, and the owner of the registered
suggest a connection with persons, living or dead, mark: Provided further, That the interests of the owner
institutions, beliefs, or national symbols, or bring them of the registered mark are likely to be damaged by such
into contempt or disrepute; use;

(b) Consists of the flag or coat of arms or other insignia (g) Is likely to mislead the public, particularly as to the
of the Philippines or any of its political subdivisions, or nature, quality, characteristics or geographical origin of
of any foreign nation, or any simulation thereof; the goods or services;

(c) Consists of a name, portrait or signature identifying (h) Consists exclusively of signs that are generic for the
a particular living individual except by his written goods or services that they seek to identify;
consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of (i) Consists exclusively of signs or of indications that
his widow, if any, except by written consent of the have become customary or usual to designate the
widow; goods or services in everyday language or in bona fide
and established trade practice;
(d) Is identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing or (j) Consists exclusively of signs or of indications that
priority date, in respect of: may serve in trade to designate the kind, quality,
(i) The same goods or services, or quantity, intended purpose, value, geographical origin,
(ii) Closely related goods or services, or time or production of the goods or rendering of the
(iii) If it nearly resembles such a mark as to be likely to services, or other characteristics of the goods or
deceive or cause confusion; services;

(e) Is identical with, or confusingly similar to, or (k) Consists of shapes that may be necessitated by
constitutes a translation of a mark which is considered technical factors or by the nature of the goods
by the competent authority of the Philippines to be themselves or factors that affect their intrinsic value;
well-known internationally and in the Philippines,
whether or not it is registered here, as being already (l) Consists of color alone, unless defined by a given
the mark of a person other than the applicant for form; or
registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark (m) Is contrary to public order or morality.
is well-known, account shall be taken of the knowledge
of the relevant sector of the public, rather than of the 123.2. As regards signs or devices mentioned in
public at large, including knowledge in the Philippines paragraphs (j), (k), and (l), nothing shall prevent the

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registration of any such sign or device which has pronunciation of Gold Top and Gold Toe, do not by
become distinctive in relation to the goods for which themselves, cause confusion. However, there is hardly
registration is requested as a result of the use that a variance in the appearance of the logo’s. SC used the
have been made of it in commerce in the Philippines. dominancy test and the holistic test. In either test,
The Office may accept as prima facie evidence that the there is an obvious colorable imitation.
mark has become distinctive, as used in connection
with the applicant’s goods or services in commerce, Nestle v. CA – Master not generic
proof of substantially exclusive and continuous use 356 SCRA 207 (2001)
thereof by the applicant in commerce in the Philippines
for five (5) years before the date on which the claim of CFC Corp. filed application for registration of Flavor
distinctiveness is made. Master instant coffee. Nestle filed notice of opposition
claiming trademark is confusingly similar for Master
123.3. The nature of the goods to which the mark is Roast and Master Blend are its own TM. Nestle claims
applied will not constitute an obstacle to registration. use of CFC will cause confusion and deceive purchasers
(Sec. 4, R. A. No. 166a) as dominant word present in the three trademarks is
Master. CA used holistic test, Nestle claims dominancy
A mark cannot be registered if it: test should be used.

(a) immoral, deceptive or scandalous matter HELD: Correct. Test is ordinary purchaser who in buying
more common and less expensive household products
(b) flag or coat of arms is less inclined to closely examine specific details of
similarities and dissimilarities. The word Master is
(c) name of a particular living individual or portrait of a neither a generic nor a descriptive term, and as such,
deceased President of the Philippines said term cannot be invalidated as a trademark and
may be legally protected. A generic term is the
(d) Is identical with a registered mark as to : common descriptive name of an article or substance,
(i) The same goods or services, or and a descriptive term conveys the characteristics,
(ii) Closely related goods or services, or functions, qualities and ingredient of a product to one
(iii) If it nearly resembles such a mark as to be likely to who has never seen it and does not know what it is.
deceive or cause confusion; Master is a suggestive term brought about by the
advertising scheme of Nestle, as when it uses Jaworski
Amigo v. Cluet Peabody – Idem Sonans and Puno.
354 SCRA 434 (2001)
(e) similar to, or translation of, internationally known
Cluet (NY) filed for cancellation of Amigo (RP) TM for mark, registered or not as to same goods
“Gold Toe.” Cluet owns “Gold Top. Cluet alleged Amigo
uses similar logo, uses the word “linenized” which is (f) similar to, or translation of, internationally known
their registered TM. Director of Patents and CA ruled mark, when registered, as to all goods.
for cancellation, based on application of 1) idem
sonans rule and 2) existence of a confusing similarity in Canon v. CA
appearance between the trademarks. Amigo argues
that “Gold Toe” and “Gold Top” do not sound alike and NSR Rubber filed an application for the registration of
are pronounced differently. Since the words “gold” and the mark Canon for Sandals. Canon (Japan) filed an
“toe” are generic, Cluet has no right to exclusive use. opposition, alleging that it will be damaged by the
registration of Canon for Sandals. Canon manufactures
HELD: Idem sonans argument incorrect. Admittedly the chemical products, photographic and cinematographic

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instruments, and electrical instruments. The products name “Shredded Wheat.” Nabisco also claims that it
manufactured by the parties are dissimilar but Canon has acquired a secondary meaning.
Japan points out that it has branched out its business
on various goods including footwear. Held: Nabisco has no exclusive right to use the term
“Shredded Wheat” as a trade name, for that is the
Held: Ordinarily, ownership of trademark is a property generic term of the article which describes it with a fair
right which is entitled to protection. However, when a degree of accuracy. Since the term is generic, the
TM is used for a product in which the other party does original maker of the product acquired no exclusive
not deal, the use of the same trademark on the latter’s right to use it. There is no basis for applying the
product cannot be validly objected to. The certificate of doctrine of secondary meaning. To establish a trade
registration shown by Canon Japan in RP and other name, plaintiff must show more than a subordinate
countries show that the covered goods are paints, meaning, but must show that the primary significance
chemical products and toners. Trademark owner is of the term in the minds of the consuming public is not
entitled to protection when junior user forestalls the the product but the producer.
normal expansion of the business, but Canon Japan has
failed to attach evidence that would convince that it Q. Can you trademark the terms thermos, cellophane,
has also embarked in the production of footwear aspirin?
products. A. No. These used to be big marks, but because of
“improper use” (not non-use) they were abandoned.
Q. Do you agree with the decision? Xerox is now spending billions in advertising to reclaim
A. Proper answer: The decision interpreted the law the trademark.
then. The case would have been decided differently
today, due to the amendments introduced by Sec. (i) descriptive
123.1 (e).
Q. Can a descriptive word be appropriated?
Q. Why is this the proper answer? A. No. But it can be appropriated when used in
A. Case was drafted by Negre when he was in the combination with other words.
Bureau of Trademarks.
Romero v. Maiden Form Inc.

(g) misleading as to the nature, quality, characteristics Maidenform, a foreign corporation, filed an application
or geographical origin of the goods or services; for registration of the trademark Adagio for the
brassieres it manufactures. This was alleged to have
(h) generic first been used in US in 1937 and in RP in 1946. This
was granted. Romero filed a petition for cancellation
Kellogg v. National Biscuit Company on the ground that it is a common descriptive name of
an article. It was said that that Adagio has become a
Nabisco brought a suit against Kellogg to enjoin unfair common descriptive name of a particular style of
competition in the manufacture and sale of breakfast brassiere and is unregistrable.
food known as shredded wheat. Kellogg, like Nabisco,
uses the name shredded wheat and produces it in Held: No merit. Adagio is a musical term meaning slow
pillow-shaped form. Shredded wheat was introduced in or easy manner first used by owners because they are
1893 by Perky and the patent expired in 1895, going musically inclined. They also adopted other terms such
into public domain. Nabisco was the first manufacturer. as Etude, Overture, Chansonette. The fact that said
Nabisco does not claim exclusive right to make mark is used also to designate a particular style of
shredded wheat but claims exclusive right to the trade brassiere does not affect its registrability as a

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trademark. Its long and continuous use has not a place where it is not really manufactured there, e.g.
rendered it merely descriptive. Widespread Champagne is a sparkling wine from a particular city in
dissemination does not justify the [oppositor’s] use of France; no other wine can be called Champagne.
the trademark. 2. If that place is known for the goods, you can’t
register, e.g. Batangas is known for its coffee
Ong Ai Gui v. Director Exception: If that place is not particularly known for
products of that kind, e.g. Baguio Oil, Seattle’s Best
Ong Ai Gui filed an application for the registration of
the tradename, “20th Century Nylon Shirts Factory.” E. (k) shapes
I. Du Pont filed an opposition on the ground that the
word “nylon” was a name coined by Du Pont as a Kellogg v. Nabisco
generic name of a synthetic fabric and is a generic term,
the use of which is descriptive and the use would cause Nabisco claims the exclusive right to make it in pillow-
confusion in trade. Opposition was dismissed but shaped form. It is urged that all possibility of deception
director asked the word “nylon” be disclaimed. Ong and confusion would be removed it Kellogg would
appeals. adopt another form other than the pillow shape.

Held: The tradename may be registered, but it may not Held: The evidence is persuasive that this form is
be entitled to exclusive use of the terms “shirt factory” functional – that the cost of the biscuit would be
and “nylon” because the terms are merely descriptive increased and its high quality lessened if some other
or general terms, incapable of appropriation by any form were substituted for the pillow shape.
single individual to the exclusion of others. This is
because all persons have an equal right to produce and In Re Weber
vend similar articles and they also have the right to
describe them properly and to use appropriate The examining attorney of the Trademark Board
language. refused registration of Weber’s barbecue grills as
trademarks on the ground of functionality.
Q. Can generic terms be appropriated by long use?
A. no. Only descriptive words can be appropriated by Held. Wrong. The Trademark Trial and Appeals Board
long use. found that the examining attorney erred in refusing
registration in the absence of evidence that the grill’s
Q. “Xerox” is descriptive or generic? round configuration was a superior design which other
A. Seems to be generic, since it is found in the manufacturers needed to be able to use in order to
dictionary as a verb. compete effectively. Trade dress is mechanically
functional when its elements are so utilitarian or
(j) Consists exclusively of signs or of indications that superior to alternative elements that denying these
may serve in trade to designate the kind, quality, elements to competitors inhibits competition. The
quantity, intended purpose, value, geographical origin, factors that show mechanical functionality of trade
time or production of the goods or rendering of the dress include 1) if a utility patent discloses the
services, or other characteristics of the goods or utilitarian advantages of the design, 2) the utilitarian
services; advantages are touted through advertising, 3) there is
an unavailability of alternative designs, and 4) the
Q. Is a name denoting geographical location registrable design is the result of a relatively simple or inexpensive
as a trademark? manufacturing method. In this case, the kettle body
A. General rule: Can’t be used when and legs configuration for barbecue grills was found
1. It induces public to believe that it is manufactured in NOT de jure functional. Evidence was found sufficient

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to establish acquired distinctiveness. Hence, it can be (liechtenstin) objected, saying Atussin is confusingly
registered. similar to Pertussin and that the buying public will be
misled into believing that Westmont’s product is that
of Etepha’s which enjoys goodwill.
Q. What is different from this case and Kellogg?
A. Here, there is finding that the shape was not entirely Held: Tussin is a Latin rootword meaning cough. Tussin
just functional, as in Kellogg. is merely descriptive; it is generic; it furnishes to the
buyer no indication of the origin of the goods. Thus, it
(l) color is barred from registration as a tradename. While
tussin by itself cannot be used exclusively, it may
(m) Is contrary to public order or morality. become a subject of trademark by combination with
another word of phrase.
Secondary meaning Here, the two are entirely different in colors, content
and arrangement so the contrast is so pronounced that
Q. Cerveza Negra means “Black Beer” in Spanish, can it the label cannot be mistaken for another. They also
be registered? don’t sound alike when pronounced. Also, medicinal
A. Yes, it has acquired secondary meaning preparations are unlike articles of everyday use which
may freely be obtained by anyone. A buyer of medicine
Arce Sons v. Selecta must first go to a doctor for instructions on what to
purchase, and he is cautious and would examine the
Selecta Biscuit filed a petition for the registration of the product sold to him.
word Selecta as trademark to be used on its bakery
products. Arce filed an opposition saying that it has Q. Do you agree with this case?
continuously used that word in its products. It used this A. Hmm… maybe not, since you should take the point
on its milk products and as the name of a bakery. of view of an ordinary consumer who doesn’t know
Director granted trademark because the word as used what tussis means.
by Arce points only to the place of business or location
of its restaurant. Q. Would the case have been decided in the same
manner if it involved veterinary medicine?
Held: Arce has made use of Selecta not only as a A. Probably. People don’t usually buy vet medicine so
tradename, indicative of the location of the restaurant they would be careful if they do.
but also as a trademark to indicate the goods it offers
for sale to the public. The word Selecta is an ordinary Philippine Nut Industry v. Standard Brands
or common word but once adopted or coined in
connection with one’s business as an emblem or as a Philippine Nut obtained registration of “Philippine
badge of authenticity, it may acquire a secondary Planters Cordial Peanuts.” On its salted peanuts.
meaning as to be exclusively associated with its Standard Brands, a foreign corporation filed for the
products and business. cancellation of registration saying that it was the owner
of “Planters Cocktail Peanuts” trademark and that Phil
Q. Is “premium” a proper mark? Nut closely resembles and is confusingly similar to its
A. No. It is descriptive. own trademark. Phil Nut claims that “Planters” cannot
be considered a dominant feature of the product since
Etepha v. Director it is merely descriptive.

Westmont (NY) sought registration of Atussin, a Held: Without merit. Planters is an ordinary word but it
medical expectorant antihistamine. Etepha is used in the label not to describe the nature of the

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product but to project the source or origin of the salted they are buying. The law concerns itself with the casual
peanuts. Based from the logos, it is true that other purchaser who knows the commodity only by its name.
words are displayed (cordial and cocktail) but these are The word Wigan here is used in an entirely artificial
mere adjectives. As a whole, it is the word Planters sense and its association with quality had its origin
which draws the attention of the buyer and leads him exclusively in the use which E Spinner originally
to conclude that the salted peanuts originate from one intended.
and the same manufacturer. It is true that no producer
may have a monopoly of any color scheme or form of Intel v. Advanced Micro Devices
words in a label but when a competitor adopts a
distinctive or dominant mark or feature of another’s Intel uses the 386 designation for processor microchips.
trademark, the intent to pass to the public his product AMD probably used this to designate its own products
as that of another is quite obvious. and Intel filed a case against AMD.

Secondary meaning – a word originally incapable of Held: AMD argued successfully that Intel’s 386
exclusive appropriation may nevertheless have been designation for processor microchips was generic. Intel
used so long and so exclusively by one producer with was subsequently unsuccessful in registering 486 or
reference to his article that, in that trade and to that i486. Hence, it switched to the “Pentium” and
branch of the purchasing public, the word or phrase “Celeron” names. Note that in the US, trademark
has come to mean that the article was his product. protection is acquired via use, not registration. Because
Here, there is evidence to show that the term Planters Intel’s purported mark is unregistered, Intel has the
has become a distinctive mark or symbol as salted burden of proof on the issue of genericness of the
peanuts are concerned. asserted mark

E Spinner v. Neuss Hesslein Corp. Q. Why is the E. Spinner decision different from the
Intel decision?
E Spinner (England) is engaged in manufacture and sale A. Because in Intel, the mark was generic. In E. Spinner,
of textiles. It sells khaki cloth in RP under the brand the mark is descriptive of quality because it is arbitrary.
Wigan. Neuss Hesslein (US) came to RP later and sold
khakis. It sold it under the Five Soldiers brand then it Ana Ang v. Toribio Teodoro
later asked its NY office to print the word Wigan
conspicuously on the khakis intended for sale in RP. Teodoro used “Ang Tibay” for slippers and shoes since
Wigan is used in commercial parlance as the name of a 1910. Ang registered “Ang Tibay” for shorts and shirts
canvass-like cotton fabric used to stiffen parts of on 1932. Teodoro filed a complaint to cancel the
garments. Neuss Hesslein claims to use the word to registration of the TM of Ana Ang. He claims that Ana
indicate color, saying that US dealers are accustomed Ang has not proven that she spent money for
to use the word Wigan to indicate a color of khaki cloth. advertising Ang Tibay shirts and pants. Ana Ang claims
E. Spinner files action to restrain use of the word that the term is descriptive and that there is no
Wigan, claiming that it uses that word to indicate secondary meaning attached to the term, and that the
quality. goods are different and are not likely to mislead the
general public as to their origin.
Held: The persons most to be considered is the
consumer and when the word Wigan is found on khaki, Held: “Ang Tibay” is not a descriptive term but a
the ultimate buyer or the consumer who would be led fanciful or coined phrase which may be legally
to suppose that the goods are sold by E Spinner. It appropriated. Ang Tibay is an exclamation denoting
makes no difference that dealers in the article are not admiration of strength, and can be translated to mean
deceived. They are informed and usually know what “How strong!” Ang Tibay has also acquired a secondary

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meaning because the exclusive use of the phrase for

Teodoro’s product has allowed it to acquire a (b) The name and address of the applicant;
proprietary connotation. As to the argument that the
goods are not similar, although two noncompeting (c) The name of a State of which the applicant is a
articles may be classified under two different classes by national or where he has domicile; and the name of a
the Patent office, nevertheless, if simultaneous use on State in which the applicant has a real and effective
them would be likely to cause confusion as to the industrial or commercial establishment, if any;
source or origin, then there can be unfair competition.
Also, it would prevent the natural expansion of his (d) Where the applicant is a juridical entity, the law
business and it would cause the business to be under which it is organized and existing;
confused with the second user.
(e) The appointment of an agent or representative, if
Q. Is “Ang Tibay” descriptive? the applicant is not domiciled in the Philippines;
A. Court held that it is a fanciful or coined term. The
Court says that the proper descriptive term is (f) Where the applicant claims the priority of an earlier
“matibay” and not “Ang Tibay.” application, an indication of:
(i) The name of the State with whose national office
Q. Is grammar important? the earlier application was filed or it filed with an office
A. No (?) other than a national office, the name of that office,
(ii) The date on which the earlier application was filed,
Q. Is the use of famous marks on unrelated goods and
permissible? (iii) Where available, the application number of the
A. Although they are noncompeting, if simultaneous earlier application;
use will cause confusion, it will not be permissible.
(g) Where the applicant claims color as a distinctive
Q. What are the kinds of words? feature of the mark, a statement to that effect as well
A. The words are classified to: as the name or names of the color or colors claimed
1. common words and an indication, in respect of each color, of the
a. generic – never capable of registration principal parts of the mark which are in that color;
b. descriptive – there is immediate association
- not registrable except when there is secondary (h) Where the mark is a three-dimensional mark, a
meaning, or used with other words statement to that effect;
c. suggestive – requires imegination/deduction
2. fanciful/coined - e.g. Kodak (i) One or more reproductions of the mark, as
3. arbitrary - e.g. Apple Computer prescribed in the Regulations;

(j) A transliteration or translation of the mark or of

some parts of the mark, as prescribed in the
Regulations;

(k) The names of the goods or services for which the

Sec. 124. Requirements of Application. - registration is sought, grouped according to the classes
124.1. The application for the registration of the mark of the Nice Classification, together with the number of
shall be in Filipino or in English and shall contain the the class of the said Classification to which each group
following: of goods or services belongs; and
(a) A request for registration;

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(l) A signature by, or other self-identification of, the

applicant or his representative. 127.1. Requirements. - The filing date of an application
shall be the date on which the Office received the
124.2. The applicant or the registrant shall file a following indications and elements in English or Filipino:
declaration of actual use of the mark with evidence to (a) An express or implicit indication that the
that effect, as prescribed by the Regulations within registration of a mark is sought;
three (3) years from the filing date of the application. (b) The identity of the applicant;
Otherwise, the application shall be refused or the mark (c) Indications sufficient to contact the applicant or his
shall be removed from the Register by the Director. representative, if any;
(d) A reproduction of the mark whose registration is
124.3. One (1) application may relate to several goods sought; and
and/or services, whether they belong to one (1) class (e) The list of the goods or services for which the
or to several classes of the Nice Classification. registration is sought.

124.4. If during the examination of the application, the 127.2 No filing date shall be accorded until the
Office finds factual basis to reasonably doubt the required fee is paid. (n)
veracity of any indication or element in the application,
it may require the applicant to submit sufficient Sec. 128. Single Registration for Goods and/or Services.
evidence to remove the doubt. (Sec. 5, R. A. No. 166a) - Where goods and/or services belonging to several
classes of the Nice Classification have been included in
Sec. 125. Representation; Address for Service. - If the one (1) application, such an application shall result in
applicant is not domiciled or has no real and effective one registration. (n)
commercial establishment in the Philippines, he shall
designate by a written document filed in the office, the Sec. 129. Division of Application. - Any application
name and address of a Philippine resident who may be referring to several goods or services, hereafter
served notices or process in proceedings affecting the referred to as the "initial application," may be divided
mark. Such notices or services may be served upon the by the applicant into two (2) or more applications,
person so designated by leaving a copy thereof at the hereafter referred to as the "divisional applications," by
address specified in the last designation filed. If the distributing among the latter the goods or services
person so designated cannot be found at the address referred to in the initial application. The divisional
given in the last designation, such notice or process applications shall preserve the filing date of the initial
may be served upon the Director. (Sec. 3, R. A. No. application or the benefit of the right of priority. (n)
166a)
Sec. 130. Signature and Other Means of Self-
Sec. 126. Disclaimers. - The Office may allow or require Identification. -
the applicant to disclaim an unregistrable component 130.1. Where a signature is required, the Office shall
of an otherwise registrable mark but such disclaimer accept:
shall not prejudice or affect the applicant’s or owner’s (a) A hand-written signature; or
rights then existing or thereafter arising in the (b) The use of other forms of signature, such as a
disclaimed matter, nor such shall disclaimer prejudice printed or stamped signature, or the use of a seal,
or affect the applicant’s or owner’s right on another instead of a hand-written signature: Provided, That
application of later date if the disclaimed matter where a seal is used, it should be accompanied by an
became distinctive of the applicant’s or owner’s goods, indication in letters of the name of the signatory.
business or services. (Sec. 13, R. A. No. 166a)
130.2. The Office shall accept communications to it by
Sec. 127. Filing Date. - telecopier, or by electronic means subject to the

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conditions or requirements that will be prescribed by any foreign application filed prior to such subsequent
the Regulations. When communications are made by application has been withdrawn, abandoned, or
telefacsimile, the reproduction of the signature, or the otherwise disposed of, without having been laid open
reproduction of the seal together with, where required, to public inspection and without leaving any rights
the indication in letters of the name of the natural outstanding, and has not served, nor thereafter shall
person whose seal is used, appears. The original serve, as a basis for claiming a right of priority. (Sec. 37,
communications must be received by the Office within R. A. No. 166a)
thirty (30) days from date of receipt of the telefacsimile.
Sec. 132. Application Number and Filing Date. -
130.3. No attestation, notarization, authentication, 132.1. The Office shall examine whether the
legalization or other certification of any signature or application satisfies the requirements for the grant of a
other means of self-identification referred to in the filing date as provided in Section 127 and Regulations
preceding paragraphs, will be required, except, where relating thereto. If the application does not satisfy the
the signature concerns the surrender of a registration. filing requirements, the Office shall notify the applicant
(n) who shall within a period fixed by the Regulations
complete or correct the application as required,
Sec. 131. Priority Right. - otherwise, the application shall be considered
131.1. An application for registration of a mark filed in withdrawn.
the Philippines by a person referred to in Section 3, and
who previously duly filed an application for registration 132.2 Once an application meets the filing
of the same mark in one of those countries, shall be requirements of Section 127, it shall be numbered in
considered as filed as of the day the application was the sequential order, and the applicant shall be
first filed in the foreign country. informed of the application number and the filing date
of the application will be deemed to have been
131.2. No registration of a mark in the Philippines by a abandoned. (n)
person described in this section shall be granted until
such mark has been registered in the country of origin Sec. 133. Examination and Publication. -
of the applicant. 133.1. Once the application meets the filing
requirements of Section 127, the Office shall examine
131.3. Nothing in this section shall entitle the owner of whether the application meets the requirements of
a registration granted under this section to sue for acts Section 124 and the mark as defined in Section 121 is
committed prior to the date on which his mark was registrable under Section 123.
registered in this country: Provided, That,
notwithstanding the foregoing, the owner of a well- 133.2. Where the Office finds that the conditions
known mark as defined in Section 123.1(e) of this Act, referred to in Subsection 133.1 are fulfilled, it shall,
that is not registered in the Philippines, may, against an upon payment of the prescribed fee. Forthwith cause
identical or confusingly similar mark, oppose its the application, as filed, to be published in the
registration, or petition the cancellation of its prescribed manner.
registration or sue for unfair competition, without
prejudice to availing himself of other remedies 133.3. If after the examination, the applicant is not
provided for under the law. entitled to registration for any reason, the Office shall
advise the applicant thereof and the reasons therefor.
131.4. In like manner and subject to the same The applicant shall have a period of four (4) months in
conditions and requirements, the right provided in this which to reply or amend his application, which shall
section may be based upon a subsequent regularly filed then be re-examined. The Regulations shall determine
application in the same foreign country: Provided, That the procedure for the re-examination or revival of an

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application as well as the appeal to the Director of required fee, shall issue the certificate of registration.
Trademarks from any final action by the Examiner. Upon issuance of a certificate of registration, notice
thereof making reference to the publication of the
133.4. An abandoned application may be revived as a application shall be published in the IPO Gazette. (Sec.
pending application within three (3) months from the 10, R. A. No. 165)
date of abandonment, upon good cause shown and the
payment of the required fee. Sec. 137. Registration of Mark and Issuance of a
Certificate to the Owner or his Assignee. -
133.5. The final decision of refusal of the Director of 137.1. The Office shall maintain a Register in which
Trademarks shall be appealable to the Director General shall be registered marks, numbered in the order of
in accordance with the procedure fixed by the their registration, and all transactions in respect of
Regulations. (Sec. 7, R. A. No. 166a) each mark, required to be recorded by virtue of this
law.
Sec. 134. Opposition. - Any person who believes that
he would be damaged by the registration of a mark 137.2. The registration of a mark shall include a
may, upon payment of the required fee and within reproduction of the mark and shall mention: its
thirty (30) days after the publication referred to in number; the name and address of the registered
Subsection 133.2, file with the Office an opposition to owner and, if the registered owner’s address is outside
the application. Such opposition shall be in writing and the country, his address for service within the country;
verified by the oppositor or by any person on his behalf the dates of application and registration; if priority is
who knows the facts, and shall specify the grounds on claimed, an indication of this fact, and the number,
which it is based and include a statement of the facts date and country of the application, basis of the
relied upon. Copies of certificates of registration of priority claims; the list of goods or services in respect of
marks registered in other countries or other supporting which registration has been granted, with the
documents mentioned in the opposition shall be filed indication of the corresponding class or classes; and
therewith, together with the translation in English, if such other data as the Regulations may prescribe from
not in the English language. For good cause shown and time to time.
upon payment of the required surcharge, the time for
filing an opposition may be extended by the Director of 137.3. A certificate of registration of a mark may be
Legal Affairs, who shall notify the applicant of such issued to the assignee of the applicant: Provided, That
extension. The Regulations shall fix the maximum the assignment is recorded in the Office. In case of a
period of time within which to file the opposition. (Sec. change of ownership, the Office shall at the written
8, R. A. No. 165a) request signed by the owner, or his representative, or
by the new owner, or his representative and upon a
Sec. 135. Notice and Hearing. - Upon the filing of an proper showing and the payment of the prescribed fee,
opposition, the Office shall serve notice of the filing on issue to such assignee a new certificate of registration
the applicant, and of the date of the hearing thereof of the said mark in the name of such assignee, and for
upon the applicant and the oppositor and all other the unexpired part of the original period.
persons having any right, title or interest in the mark
covered by the application, as appear of record in the 137.4. The Office shall record any change of address, or
Office. (Sec. 9 R. A. No. 165) address for service, which shall be notified to it by the
registered owner.
Sec. 136. Issuance and Publication of Certificate. -
When the period for filing the opposition has expired, 137.5. In the absence of any provision to the contrary
or when the Director of Legal Affairs shall have denied in this Act, communications to be made to the
the opposition, the Office upon payment of the registered owner by virtue of this Act shall be sent to

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him at his last recorded address and, at the same, at

his last recorded address for service. Held: The conflicting claims of the parties show that
the right claims by Developers is far from clear. The
Sec. 138. Certificates of Registration. - A certificate of prima facie validity of its registration has been put into
registration of a mark shall be prima facie evidence of serious question by the cases filed by Shangri-La 3
the validity of the registration, the registrant’s years ahead of its complaint. While it is not required
ownership of the mark, and of the registrant’s exclusive that Developer’s right be conclusively established in
right to use the same in connection with the goods or this case, it is nevertheless necessary to show that it
services and those that are related thereto specified in exists and is not vitiated by any substantial challenge or
the certificate. contradiction. Developers has failed to comply with this
requirement.
Fabrege v. CA

Co Beng Kay registered “Brute” for use on shirts, shoes Shangri-La Hotel v. CA
and slippers. Fabrege, owner of the TM “Brut” for use
on after shave lotion, shaving cream, deodorant, files Shangri-La filed a petition for cancellation of
opposition. Fabrege claims that it will cause confusion. Developer’s “Shangri-La” mark saying that this was
illegally and fraudulently obtained. Developer’s filed a
Held: Co Beng Kay may be permitted to register, since complaint for infringement against the Hotel. The Hotel
Fabrege has not ventured in the production of briefs, seeks to suspend the infringement case because of the
so it cannot be allowed to feight that Co has invaded pendency of the cancellation proceedings.
Fabrege’s exclusive domain. Justice JBL Reyes says in
the Sta. Ana case that the law does not require that the Held: The earlier institution of the Hotel of the
goods manufactured by the second user be related to cancellation proceeding cannot effectively bar the
the goods produced by the senior user. But the law subsequent filing of the infringement case by
also says that there is infringement when the Developers. The certificate of registration remains valid
reproduction is that which causes confusion. Since the and subsisting for as long as it has not been canceled
products are different, there can be no confusion. by the court. Developer’s certificate continues as prima
facie evidence of the validity of the registration. Such
Q. Would the case have been decided the same way certificate still subsists and Developer’s may thus file a
today? corresponding infringement case and recover damages.
A. No, because of Sec. 138. Further, the issue in the cancellation case is quite
different from that raised in the trial court.
Developer’s Group v. CA
Q. In the Developer’s case, why wasn’t it considered
Developer’s (RP) filed an infringement case against that the certificate gives rise to prima facie
Shangri-La Hotel claiming that it was granted the presumption, such that Developer’s still had the
‘Shangri-la” mark for restaurant services in 1983. It burden of proof?
claims that the hotel was using the mark causing it A. Court probably focused on the preliminary
prejudice. Hotel claims that it is the legal and beneficial injunction issue rather than to intellectual property law
owner of the mark which was first adopted in 1962, issues.
used in their hotel business in China, HK, Malaysia,
Singapore, etc. Hotel also filed a petition against Mirpuri v. CA (not discussed in class)
Developers for the cancellation of its registration. RTC
granted Developers an injunction and Hotel seeks to lift Escobar (RP) filed application for the use of the TM
the injunction. “Barbizon” for brassiers. Barbizon (NY) filed an

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opposition claiming that it is confusingly similar to its made in the records of the Office upon the certificate
own mark. Opposition was dismissed and the of registration or, if said certificates is lost or destroyed,
application was granted. Later, Escobar failed to file the upon a certified copy thereof.
affidavit of use, so its registration was cancelled.
Escobar reapplied for registration but assigned this to Sec. 141. Sealed and Certified Copies as Evidence. -
Mirpuri. This was again opposed by Barbizon with the Copies of any records, books, papers, or drawings
allegation that the mark was used in US and also it has belonging to the Office relating to marks, and copies of
protection under the Paris Convention. Mirpuri claims registrations, when authenticated by the seal of the
the defense of res judicata. Office and certified by the Director of the
Administrative, Financial and Human Resource
Held: The two caes do not have identical causes of Development Service Bureau or in his name by an
action. In the present case, Barbizon introduced a fact employee of the Office duly authorized by said Director,
that did not exist at the time the first case was filed and shall be evidence in all cases wherein the originals
terminated. The cancellation from non-use could not would be evidence; and any person who applies and
have occurred in the first case, and this gave Barbizon pays the prescribed fee shall secure such copies. (n)
another cause to oppose the second application. Res
judicata extends only to facts and conditions as they Sec. 142. Correction of Mistakes Made by the Office. -
existed at the time the judgment was rendered. When Whenever a material mistake in a registration incurred
new facts intervene furnishing new basis, there is no through the fault of the Office is clearly disclosed by
longer res judicata. the records of the Office, a certificate stating the fact
and nature of such mistake shall be issued without
Sec. 139. Publication of Registered Marks; Inspection of charge, recorded and a printed copy thereof shall be
Register. - attached to each printed copy of the registration. Such
139.1. The Office shall publish, in the form and within corrected registration shall thereafter have the same
the period fixed by the Regulations, the mark effect as the original certificate; or in the discretion of
registered, in the order of their registration, the Director of the Administrative, Financial and
reproducing all the particulars referred to in Subsection Human Resource Development Service Bureau a new
137.2. certificate of registration may be issued without charge.
All certificates of correction heretofore issued in
139.2. Marks registered at the Office may be inspected accordance with the Regulations and the registration
free of charge and any person may obtain copies to which they are attached shall have the same force
thereof at his own expense. This provision shall also be and effect as if such certificates and their issuance had
applicable to transactions recorded in respect of any been authorized by this Act. (n)
registered mark. (n)
Sec. 143. Correction of Mistakes Made by Applicant. -
Sec. 140. Cancellation upon Application by Registrant; Whenever a mistake is made in a registration and such
Amendment or Disclaimer of Registration. - Upon mistake occurred in good faith through the fault of the
application of the registrant, the Office may permit any applicant, the Office may issue a certificate upon the
registration to be surrendered for cancellation, and payment of the prescribed fee: Provided, That the
upon cancellation the appropriate entry shall be made correction does not involve any change in the
in the records of the Office. Upon application of the registration that requires republication of the mark. (n)
registrant and payment of the prescribed fee, the
Office for good cause may permit any registration to be Sec. 144. Classification of Goods and Services. -
amended or to be disclaimed in part: Provided, That 144.1. Each registration, and any publication of the
the amendment or disclaimer does not alter materially Office which concerns an application or registration
the character of the mark. Appropriate entry shall be effected by the Office shall indicate the goods or

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services by their names, grouped according to the recorded goods or services for which the renewal is not
classes of the Nice Classification, and each group shall requested, grouped according to the classes of the
be preceded by the number of the class of that Nice Classification to which that group of goods or
Classification to which that group of goods or services services belongs and presented in the order of the
belongs, presented in the order of the classes of the classes of the said Classification; and
said Classification.
(g) A signature by the right holder or his representative.
144.2. Goods or services may not be considered as
being similar or dissimilar to each other on the ground 146.2. Such request shall be in Filipino or English and
that, in any registration or publication by the Office, may be made at any time within six (6) months before
they appear in different classes of the Nice the expiration of the period for which the registration
Classification. was issued or renewed, or it may be made within six (6)
months after such expiration on payment of the
Sec. 145. Duration. - A certificate of registration shall additional fee herein prescribed.
remain in force for ten (10) years: Provided, That the
registrant shall file a declaration of actual use and 146.3. If the Office refuses to renew the registration, it
evidence to that effect, or shall show valid reasons shall notify the registrant of his refusal and the reasons
based on the existence of obstacles to such use, as therefor.
prescribed by the Regulations, within one (1) year from
the fifth anniversary of the date of the registration of 146.4. An applicant for renewal not domiciled in the
the mark. Otherwise, the mark shall be removed from Philippines shall be subject to and comply with the
the Register by the Office. requirements of this Act.

Sec. 146. Renewal. - Sec. 147. Rights Conferred. -

146.1. A certificate of registration may be renewed for 147.1. The owner of a registered mark shall have the
periods of ten (10) years at its expiration upon exclusive right to prevent all third parties not having
payment of the prescribed fee and upon filing of a the owner’s consent from using in the course of trade
request. The request shall contain the following identical or similar signs or containers for goods or
indications: services which are identical or similar to those in
(a) An indication that renewal is sought; respect of which the trademark is registered where
such use would result in a likelihood of confusion. In
(b) The name and address of the registrant or his case of the use, of an identical sign for identical goods
successor-in-interest, hereafter referred to as the or services, a likelihood of confusion shall be presumed.
"right holder";
147.2. The exclusive right of the owner of a well-known
(c) The registration number of the registration mark defined in Subsection 123.1(e) which is registered
concerned; in the Philippines, shall extend to goods and services
which are not similar to those in respect of which the
(d) The filing date of the application which resulted in mark is registered: Provided, That use of that mark in
the registration concerned to be renewed; relation to those goods or services would indicate a
connection between those goods or services and the
(e) Where the right holder has a representative, the owner of the registered mark: Provided, further, That
name and address of that representative; the interests of the owner of the registered mark are
likely to be damaged by such use. (n)
(f) The names of the recorded goods or services for
which the renewal is requested or the names of the Sec. 148. Use of Indications by Third Parties for

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Purposes Other than those for which the Mark is Used. of a mark, or an application therefor, shall provide for
- Registration of the mark shall not confer on the effective control by the licensor of the quality of the
registered owner the right to preclude third parties goods or services of the licensee in connection with
from using bona fide their names, addresses, which the mark is used. If the license contract does not
pseudonyms, a geographical name, or exact indications provide for such quality control, or if such quality
concerning the kind, quality, quantity, destination, control is not effectively carried out, the license
value, place of origin, or time of production or of contract shall not be valid.
supply, of their goods or services: Provided, That such
use is confined to the purposes of mere identification 150.2. A license contract shall be submitted to the
or information and cannot mislead the public as to the Office which shall keep its contents confidential but
source of the goods or services. (n) shall record it and publish a reference thereto. A
license contract shall have no effect against third
Sec. 149. Assignment and Transfer of Application and parties until such recording is effected. The Regulations
Registration. - shall fix the procedure for the recording of the license
149.1. An application for registration of a mark, or its contract. (n)
registration, may be assigned or transferred with or
without the transfer of the business using the mark. (n) Sec. 151. Cancellation. -
151.1. A petition to cancel a registration of a mark
149.2. Such assignment or transfer shall, however, be under this Act may be filed with the Bureau of Legal
null and void if it is liable to mislead the public, Affairs by any person who believes that he is or will be
particularly as regards the nature, source, damaged by the registration of a mark under this Act as
manufacturing process, characteristics, or suitability for follows:
their purpose, of the goods or services to which the (a) Within five (5) years from the date of the
mark is applied. registration of the mark under this Act.

149.3. The assignment of the application for (b) At any time, if the registered mark becomes the
registration of a mark, or of its registration, shall be in generic name for the goods or services, or a portion
writing and require the signatures of the contracting thereof, for which it is registered, or has been
parties. Transfers by mergers or other forms of abandoned, or its registration was obtained
succession may be made by any document supporting fraudulently or contrary to the provisions of this Act, or
such transfer. if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the
149.4. Assignments and transfers of registration of source of the goods or services on or in connection
marks shall be recorded at the Office on payment of with which the mark is used. If the registered mark
the prescribed fee; assignment and transfers of becomes the generic name for less than all of the
applications for registration shall, on payment of the goods or services for which it is registered, a petition to
same fee, be provisionally recorded, and the mark, cancel the registration for only those goods or services
when registered, shall be in the name of the assignee may be filed. A registered mark shall not be deemed to
or transferee. be the generic name of goods or services solely
because such mark is also used as a name of or to
149.5. Assignments and transfers shall have no effect identify a unique product or service. The primary
against third parties until they are recorded at the significance of the registered mark to the relevant
Office. public rather than purchaser motivation shall be the
test for determining whether the registered mark has
Sec. 150. License Contracts. - become the generic name of goods or services on or in
150.1. Any license contract concerning the registration connection with which it has been used. (n)

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Pagasa claims that failure or neglect to assert its

(c) At any time, if the registered owner of the mark trademark rights for more than five years bars Kaisha
without legitimate reason fails to use the mark within from filing the petition.
the Philippines, or to cause it to be used in the
Philippines by virtue of a license during an Held: Law requires actual commercial use of the mark
uninterrupted period of three (3) years or longer. prior to registration. Here, Kaisha was prior registrant
but it did not present proof that it had considerable
151.2. Notwithstanding the foregoing provisions, the sales since its first use. The invoices submitted date
court or the administrative agency vested with back to 1957 showing sale of samples. Samples are not
jurisdiction to hear and adjudicate any action to for sale and are of no commercial value. Only after
enforce the rights to a registered mark shall likewise more than 7 years too did Kaisha file for cancellation.
exercise jurisdiction to determine whether the An unreasonable length of time had already passed
registration of said mark may be cancelled in before the right was asserted. There is a presumption
accordance with this Act. The filing of a suit to enforce of neglect already amounting to abandonment.
the registered mark with the proper court or agency
shall exclude any other court or agency from assuming Bata Industries v. CA
jurisdiction over a subsequently filed petition to cancel
the same mark. On the other hand, the earlier filing of New Olympian sought registration of Bata as trademark
petition to cancel the mark with the Bureau of Legal for casual rubber shoes, claiming that it has used this
Affairs shall not constitute a prejudicial question that mark since 1970. Bata (Canada) opposed this saying
must be resolved before an action to enforce the rights that it owns and has not abandoned the trademark
to same registered mark may be decided. Bata. It was shown that Bata shoes were indeed sold in
RP prior to WWII, until 1948.
Q. Is there a presumption of abandonment under the
law? Held: Any slight goodwill generated by Bata was
A. Yes. If the registered owner of the mark without completedly abandoned and lost in the more than 35
legitimate reason fails to use the mark within the years that have passed since it last used the trademark.
Philippines, or to cause it to be used in the Philippines Bata has no Philippine goodwill that would be damaged
by virtue of a license during an uninterrupted period of by the registration of the mark in New Olympian’s favor.
three (3) years or longer, a petition may be filed for the
cancellation of the mark. Sec. 152. Non-use of a Mark When Excused. -
152.1. Non-use of a mark may be excused if caused by
Q. What if your TM expires and before you register it, circumstances arising independently of the will of the
someone registers before you file? trademark owner. Lack of funds shall not excuse non-
A. It would depend on the gap. If it’s just a matter of use of a mark.
days or months, prior registrant has priority. It long gap,
senior registrant has priority. 152.2. The use of the mark in a form different from the
form in which it is registered, which does not alter its
Pagasa Industrial v. CA distinctive character, shall not be ground for
cancellation or removal of the mark and shall not
1961 - Kaisha registers YKK as trademark for slide diminish the protection granted to the mark.
fasteners and zippers.
1967- Pagasa files application for registration of YKK for 152.3. The use of a mark in connection with one or
zippers. more of the goods or services belonging to the class in
1977 - Kaisha files petition for cancellation of Pagasa’s respect of which the mark is registered shall prevent its
registration claiming both are confusingly similar. cancellation or removal in respect of all other goods or

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services of the same class. sale, offering for sale, distribution, or advertising of
goods or services on or in connection with which such
152.4. The use of a mark by a company related with use is likely to cause confusion, or to cause mistake, or
the registrant or applicant shall inure to the latter’s to deceive, shall be liable in a civil action for
benefit, and such use shall not affect the validity of infringement by the registrant for the remedies
such mark or of its registration: Provided, That such hereinafter set forth: Provided, That the infringement
mark is not used in such manner as to deceive the takes place at the moment any of the acts stated in
public. If use of a mark by a person is controlled by the Subsection 155.1 or this subsection are committed
registrant or applicant with respect to the nature and regardless of whether there is actual sale of goods or
quality of the goods or services, such use shall inure to services using the infringing material.
the benefit of the registrant or applicant. (n) Q. Is registration needed for infringement cases?
A. Yes. Sec. 155 says, “any person who shall, without
Sec. 153. Requirements of Petition; Notice and Hearing. the consent of the owner of the REGISTERED MARK….”
- Insofar as applicable, the petition for cancellation
shall be in the same form as that provided in Section Similar Goods – Dominancy/wholistic test
134 hereof, and notice and hearing shall be as provided
in Section 135 hereof. Nestle v. CA

Sec. 154. Cancellation of Registration. - If the Bureau of Flavor Master v. Master Roast. Applied the dominancy
Legal Affairs finds that a case for cancellation has been test.
made out, it shall order the cancellation of the
registration. When the order or judgment becomes
final, any right conferred by such registration upon the Asia Brewery v. CA & San Miguel Corporation
registrant or any person in interest of record shall
terminate. Notice of cancellation shall be published in Grino-Aquino, J.
the IPO Gazette.
SMC filed a complaint against Asia Brewery Inc. (ABI)
Sec. 155. Remedies; Infringement. - Any person who for infringement and unfair competition for ABI’s Beer
shall, without the consent of the owner of the Pale Pilasen or Beer na Beer. SMC cites the following
registered mark: issues (ratio follows issue)
155.1. Use in commerce any reproduction, counterfeit, 1. SMC Pale Pilsen has rectagular hops and malt design
copy, or colorable imitation of a registered mark or the which is similar with ABI’s trademark – Test of
same container or a dominant feature thereof in Dominancy was used where similarity in size form and
connection with the sale, offering for sale, distribution, color while relevant is not conclusive. Here, “Beer”
advertising of any goods or services including other does not appear in SMC’s TM, “San Miguel” does not
preparatory steps necessary to carry out the sale of any appear in ABI’s TM. No similarity in sound, spelling or
goods or services on or in connection with which such appearance. No evidence presented by SMC proving
use is likely to cause confusion, or to cause mistake, or that anyone who purchases ABI can be deceived that it
to deceive; or is SMC’s.
2. Bottle’s are bottled in amber-colored steinie bottles
155.2. Reproduce, counterfeit, copy or colorably of 320 ml capacity – steinie bottles are similar but not
imitate a registered mark or a dominant feature identical. Also, the bottle is a standard type originally
thereof and apply such reproduction, counterfeit, copy developed in US and not an SMC design. Also,
or colorable imitation to labels, signs, prints, packages, protection is confined to nonfunctional features.
wrappers, receptacles or advertisements intended to Amber color is for preventing transmission of light and
be used in commerce upon or in connection with the provides maximum protection to beer. Also, 320 ml is

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the standard prescribed under a circular of the DTI. shoes and rubber slippers. Converse files an opposition
Court also held that there is a substantial price saying that the TM is confusingly similar to the word
difference. “Converse”. Converse presents lone witness, a private
merchant with stores selling Converse that the sales in
Negre: The case seems to be decided in a wrong her store averaged 12-20 pairs a month purchased
manner, by an old lady justice. San Miguel Light comes mostly by basketball palyers of local private
out in transparent bottles, and there are green and educational institutions. She presents sales invoices as
yellow bottles in the market. Also, after consuming 3 proof.
beers, you can’t really tell the difference in taste.
Held: “Converse” is the dominant word which identifies
petitioner. Universal admits that Converse has known
Del Monte v. CA & Sunshine Sauce that the word Converse belongs to and is being used by
petitioner. Boundless choice of words are available and
Del Monte (US) granted PhilPack (RP) right to when there is no reasonable explanation for the
manufacture and sell products under Del Monte TM defendant’s choice of such a mark, the inference is
and it registered the TM. Sunshine manufactures sauce inevitable that it wsa chosen to deceive. Sales invoices
too, contained in various kinds of bottles including the are best proof of actual sales of Converse products in
Del Monte bottle which it bought from junk shops. RP. Sale of 12-20 pairs is not considered insignificant
Philpack files complaint for TM infringement and for because the shoes are of high expensive quality which
unfair competition. CA held that a side-by-side not too many people can afford. Such actual use of
comparison shows no colorable imitation of TM since goods in the local market establishes trademark use
design is different. which serves as the basis for action aimed at trademark
pre-emption.
Held: Side-by-side comparison is not the final test of
similarity. Average shopper is usually in a hurry and Q. What is the best proof of use of the product in the
does not inspect every product on the shelf as if he country?
were browsing in a library. So the casual purchaser A. Sales invoices.
who is unsuspicious must be the standard. The factors
to consider are (1) the training and education of the Q. What if the sales were done over the internet, is it
usual purchaser, (2) the cost of the article and the (3) sufficient to establish actual use?
conditions under which it is usually purchased. Thus, A. Yes. There is no need for actual presence in RP.
there is TM infringement of the mark but none as to
the bottle because although bad faith of Sunshine is Q. What if the foreign based company does advertising
evident since Del Monte’s bottle states, “Del Monte in cable, is it sufficient to prove use of the mark in RP?A.
Corp, Not to be Refilled,” there is still no infringement No definite answer, but Converse seems to require
since the bottle’s design was registered only in the actual sales, since it says that sales invoices are the
Supplemental Register and this does not vest the best proof of use in a country.
registrant with the exclusive right to use the label nor
does it give rise to the presumption of validity of the Emerald Garments v. CA
registration.
HD Lee (Lee Jeans) filed for the cancellation of the TM
of Emerald Garments called “Stylistic Mr. Lee” (skirts,
Converse Rubber v. Universal Rubber jeans, blouses, socks, briefs, jackets, jogging suits). HD
Lee claims that the products are so closely related that
Universal Rubber filed an application for the it will cause confusion, mistake and deception. CA used
registration of “Universal Converse” for use on rubber the test of dominancy saying that if the competing

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trademark contains the essential or dominant features Duplication is not necessary, not is it necessary that the
of another, such that it will cause confusion and infringing label should suggest an effort to imitate. Also,
deception, then there would be infringement. Thus, the product is purchased by cooks and household help,
since the labels are similar, the CA ruled there was sometimes illiterate who are guided by pictorial
infringement. representations and the sound of the word. There is
also greater danger here since the products are cheap.
Held: The SC used the holistic test which says that the
entirety of the marks in question must be considered in Q. What was the factor considered by the court?
determining confusing similarity. It ruled that there is A. Same animals and similar products.
no infringement. Emerald’s TM is “Stylistic Mr. Lee”
and is not confusingly similar to “Lee.” Since the Q. Would there be infringement in crocodile and
product is jeans which are not inexpensive, the casual alligator?
buyer is more cautious and discriminating. Confusion A. Yes.
and deception is less likely. The average consumer also
buys his jeans by brand. Also, “Lee” is primarily a Q. Tiger and lion?
surname, so HD Lee can’t acquire exclusive ownership A. Yes.
of the term. In addition, HD Lee failed to show prior
actual commercial use of its “Lee” TM in RP before it Q. Would the ruling be the same if the case involved
filed its application. leather goods?
A. It may have been decided differently since the case
Q. Would the result have been different had a different would involve expensive products where the buyers
test been used? are wary and not illiterate.
A. It seems that way, since the CA used dominancy test
and the result was different from the SC decision which Philips Export v. CA & SEC
used the holistic test.
Philips Export (Netherlands) owns TM for “Philips,” for
Q. Why was this case decided differently from the electrical products. Standard Philips (RP) was issued a
Converse? certificate of registration by SEC for the business of
A. In Converse, there was proof of actual prior chain rollers, belts, bearing. PE filed a complaint asking
commercial use. for the cancellation of SP’s name and filed for a
petition for injunction. SEC ruled against PE, saying that
Lim Hoa v. Director Sec. 18 of the Corp. Code is applicable only when the
corporate names are identical.
Lim Hoa filed for application of registration of TM
consisting of two midget roosters in combat with the Held: The right to use a corporate name is a property
word Bantam, for food seasoning. Agricom Dev’t right, a right in rem which it may assert. Corp Code
opposed the application saying that it is confusingly gives two requirements: (1) That complaint acquired a
similar with its own TM which is a pictorial prior right over such name and (2) that the proposed
representation of a hen with the words “Hen Brand” name is either identical, deceptively or confusingly
and “Marca Manok” also used in food seasoning. similar, or patently deceptive. PE’s prior adoption of
the term “Philips” is not in doubt, and the test as to
Held: There is such similarity between them as to cause whether it would be confusing is the ordinary person.
confusion. In the test of dominancy, similarity in size, “Philips” is indeed the dominant word. Note that
form, color, while relevant, is not conclusive. If the although no proof was presented of actual confusion, it
competing trademark contains the main or essential is sufficient that confusion is probably or likely to occur.
dominant features of another, infringement takes place.

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Q. Where did the case emanate? for the use of sheet polarizing material, lamps, optical
A. From SEC. lans. It files an action for injunction against Polarad
claiming that its use infringed on its trademark and is
Q. Does SEC have jurisdiction over the case? unfair competition. Polarad is engaged in manufacture
A. Yes because it involves corporate names. of microwave generating devices and TV studio
equipment. Polarad admits that he had some
Q. Who has jurisdiction over cases involving corporate knowledge of plaintiff’s use of the name Polaroid, but
names under PD 902-A, the SEC or the RTC? not as to electronics. Polarad used the name as early as
A. This is still a grey area. 1945, but there was no protest. It registered in 1953,
and plaintiff delayed suit until 1956. Polaroid claims
Q. Which test should be applied in this case? that laches does not apply in tm cases since injunction,
A. The court seemed to apply the dominancy test. Note rather than damages, are sought.
that when goods are similar and the marks are identical,
Sec. 147.1 gives a presumption of the likelihood of Held: Plaintiff is guilty of laches. Doctrine of laches has
confusion. no such reach as claimed when the goods are different.
TM owner’s interest is in preventing such use because
Spectrum of the Likelihood of Confusion he may wish to preempt the market for later
Same goods Different goods exploitation. Here, owner’s rights in such appendant
markets are easily lost. They must be asserted early,
lest they be made the means of reaping a harvest
which others have sown.

Q. What are the factors cited by the court in deciding

infringement cases when the products are different?
A. 1. Strength of the mark
Identical marks Different marks 2. Degree of similarity between the two marks
3. Proximity of the products
4. Likelihood that the prior owner will bridge the gap
5. Actual confusion
6. Defendant’s good faith in adopting its own mark
7. Quality of the defendant’s product
8. Sophistication of the buyers

QUALITY INNS INTERNATIONAL, INC. v. McDONALD’S

CORPORATION

On September 21, 1987 , Quality Inns International, Inc.

Negre: There should be no difference between the announced a new chain of economy hotels to be
dominancy and holistic test. With either test, you marketed under the name “McSleep Inn.” McDonald’s
should arrive at the same conclusion, based on this Corporation responded immediately claiming that the
spectrum. name “McSleep” infringed on the McDonald’s family of
marks that are characterized by the prefix “Mc”
Dissimilar Goods combined with a generic word. Robert C. Hazard, Jr.,
Polaroid v. Polarad CEO of Quality International in 1980, claimed he was
driving down the highway when it hit him, “to name
Polaroid (Delaware) is registrant of the name Polaroid the new economy chain McSleep,” and had no intent

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of using McDonald’s goodwill to its advantage. McSleep.

McDonald’s contends that it is the owner of a family of A. Yes, if accompanied with testimony of the person
marks each of which is formulated by combining the conducting the survey, or if it falls under the
prefix “Mc” with a generic word to form a fanciful commercial list exception.
trademark or service mark. It contends that “McSleep
Inn” that had been adopted by Quality International is
likely to cause confusion and that Quality International Sec. 156. Actions, and Damages and Injunction for
selected the word Mc Sleep deliberately to trade on Infringement. -
the goodwill and reputation of McDonald’s. 156.1. The owner of a registered mark may recover
damages from any person who infringes his rights, and
Conclusion: The Court finds and concludes that (1) the measure of the damages suffered shall be either
McDonald’s is entitled to enforce its family of marks the reasonable profit which the complaining party
that are characterized by the combination of the prefix would have made, had the defendant not infringed his
“Mc” with a generic word; (2) the name McSleep Inn is rights, or the profit which the defendant actually made
likely to cause an appreciable number of the public to out of the infringement, or in the event such measure
be confused by believing McSleep Inn is sponsored, of damages cannot be readily ascertained with
associated, affiliated, connected, or endorsed by reasonable certainty, then the court may award as
McDonald’s; and (3) the adoption and use by Quality damages a reasonable percentage based upon the
International of the name McSleep Inn was a deliberate amount of gross sales of the defendant or the value of
attempt to benefit by the good will and reputation of the services in connection with which the mark or
McDonald’s. The Court found trademark infringement, trade name was used in the infringement of the rights
unfair competition, and dilution under the Illinois of the complaining party.
statute.
156.2. On application of the complainant, the court
Q. In this case, what were the 7 factors applied? may impound during the pendency of the action, sales
Similar with the earlier ones given. These are invoices and other documents evidencing sales. (n)
considered in determining the likelihood of confusion:
(1) the strength of distinctiveness of the mark, 156.3. In cases where actual intent to mislead the
(2) the similarity of the two marks, public or to defraud the complainant is shown, in the
(3) the similarity of the goods or services with the discretion of the court, the damages may be doubled.
marks identify,
(4) the similarity of the facilities used by the parties in 156.4. The complainant, upon proper showing, may
conducting their businesses, also be granted injunction.
(5) the similarity of advertising used by the parties, Q. What are the types of remedies granted for
(6) the defendant’s intent, infringement?
(7) and actual confusion. A. 1) Damages, 2) impounding of sales invoice, 3)
If we apply the facts of the case to this statute, we will injunction.
see that some of these conditions have been met.
Q. What kind of damages are compensable?
Q. Can bad faith in trademark infringement cases be A. Only loss of profit. But when there is intent to
presumed? mislead, double the profit.
A. No, it should be proven.
NOTE: It is thus evident that even when there is no
Q. Are surveys admissible? Since in the Quality Inn case, intent to mislead, there can be infringement.
a survey was presented by McDonald’s which showed
that people associated McDonald’s with Quality Inn’s Q. Can the court award damages when there is no

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notice to infringer? Like when he is not aware that he is any person who, in good faith, before the filing date or
infringing? the priority date, was using the mark for the purposes
A. It appears that the court can do this, since intent to of his business or enterprise: Provided, That his right
mislead is not essential. (?) may only be transferred or assigned together with his
enterprise or business or with that part of his
Sec. 157. Power of Court to Order Infringing Material enterprise or business in which the mark is used.
Destroyed. -
157.1. In any action arising under this Act, in which a 159.2 Where an infringer who is engaged solely in the
violation of any right of the owner of the registered business of printing the mark or other infringing
mark is established, the court may order that goods materials for others is an innocent infringer, the owner
found to be infringing be, without compensation of any of the right infringed shall be entitled as against such
sort, disposed of outside the channels of commerce in infringer only to an injunction against future printing.
such a manner as to avoid any harm caused to the right
holder, or destroyed; and all labels, signs, prints, 159.3. Where the infringement complained of is
packages, wrappers, receptacles and advertisements in contained in or is part of paid advertisement in a
the possession of the defendant, bearing the registered newspaper, magazine, or other similar periodical or in
mark or trade name or any reproduction, counterfeit, an electronic communication, the remedies of the
copy or colorable imitation thereof, all plates, molds, owner of the right infringed as against the publisher or
matrices and other means of making the same, shall be distributor of such newspaper, magazine, or other
delivered up and destroyed. similar periodical or electronic communication shall be
limited to an injunction against the presentation of
157.2. In regard to counterfeit goods, the simple such advertising matter in future issues of such
removal of the trademark affixed shall not be sufficient newspapers, magazines, or other similar periodicals or
other than in exceptional cases which shall be in future transmissions of such electronic
determined by the Regulations, to permit the release communications. The limitations of this subparagraph
of the goods into the channels of commerce. shall apply only to innocent infringers: Provided, That
such injunctive relief shall not be available to the
Sec. 158. Damages; Requirement of Notice. - In any suit owner of the right infringed with respect to an issue of
for infringement, the owner of the registered mark a newspaper, magazine, or other similar periodical or
shall not be entitled to recover profits or damages an electronic communication containing infringing
unless the acts have been committed with knowledge matter where restraining the dissemination of such
that such imitation is likely to cause confusion, or to infringing matter in any particular issue of such
cause mistake, or to deceive. Such knowledge is periodical or in an electronic communication would
presumed if the registrant gives notice that his mark is delay the delivery of such issue or transmission of such
registered by displaying with the mark the words electronic communication is customarily conducted in
"Registered Mark" or the letter R within a circle or if accordance with the sound business practice, and not
the defendant had otherwise actual notice of the due to any method or device adopted to evade this
registration. section or to prevent or delay the issuance of an
injunction or restraining order with respect to such
Sec. 159. Limitations to Actions for Infringement. - infringing matter. (n)
Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed under Sec. 160. Right of Foreign Corporation to Sue in
this Act shall be limited as follows: Trademark or Service Mark Enforcement Action. - Any
foreign national or juridical person who meets the
159.1 Notwithstanding the provisions of Section 155 requirements of Section 3 of this Act and does not
hereof, a registered mark shall have no effect against engage in business in the Philippines may bring a civil

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or administrative action hereunder for opposition, answer changes later)

cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or Q. What if the product is a life-saving drug imported by
not it is licensed to do business in the Philippines under the government?
existing laws. A. The government may probably import it by exerting
Q. Converse and Canon required prior actual use in RP its police power.
of the mark in order for the foreign oppositor’s case to
prosper. Is actual use in RP still required?
A. It appears that this is no longer a requirement, since Q. Where do you draw the line?
the foreign national who sues under this section is A. Maybe for life-saving drugs, or important
required not to engage in business in the Philippines. technologies like fast growing rice palay. If not,
government will be depriving persons of proprietary
Yu v. CA rights (property) without due process.

Philip Yu is the exclusive distributor of House of Mayfair Q. What does TRIPS and WTO provide on parallel
wallcovering products. Unisia imported the same goods importation?
via FNF Trading and sold the products in the domestic A. Once the product is distributed, he can no longer
market. Yu filed for injunction. Unisia claims ignorance control resale because the right is limited to the first
of the exclusive contract. distribution.

Held: The right to perform an exclusive distributorship Q. So should B have been able to prevent importation,
agreement and to reap the profits resulting from such since after the first sale, there is no more right to
performance are proprietary rights which a party may control sale? Won’t there be a monopoly if this is the
protect and which may not be diminished by the case?
expedient act of utilizing a person to obtain goods from A. Yes, it does seem that way, because only the
the supplier to defeat the very purpose for which the government, in the exercise of police power, can
exclusive distributorship was conceptualized at the deprive persons of property rights without due process.
expense of the exclusive distributor. Also, the House of
Mayfair in England was duped into believing that the
goods ordered through FNF Trading was to be shipped Sec. 161. Authority to Determine Right to Registration.
to Nigeria only but the goods were actually sold in the - In any action involving a registered mark, the court
Philippines. may determine the right to registration, order the
cancellation of a registration, in whole or in part, and
Q. What does this case have to do with IP rights? otherwise rectify the register with respect to the
(actual question asked by Negre) registration of any party to the action in the exercise of
A. IP rights, like exclusive distributorship, are this. Judgment and orders shall be certified by the
proprietary rights which a party may protect. court to the Director, who shall make appropriate entry
upon the records of the Bureau, and shall be controlled
Q. Co. A based in Singapore has exclusive distribution thereby.
with Co. B in RP for product “D.” Can Co. B prevent Co.
C from bringing the product to the Philippines? Sec. 162. Action for False or Fraudulent Declaration. -
A. Yes. Any person who shall procure registration in the Office
of a mark by a false or fraudulent declaration or
Q. What if C is not aware of the exclusive representation, whether oral or in writing, or by any
distributorship? false means, shall be liable in a civil action by any
A. From the case, it seems that intent is required. (but person injured thereby for any damages sustained in

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consequence thereof. shall be made with the transfer of the enterprise or

part thereof identified by that name. The provisions of
Sec. 163. Jurisdiction of Court. - All actions under Subsections 149.2 to 149.4 shall apply mutatis
Sections 150, 155, 164, and 166 to 169 shall be mutandis.
brought before the proper courts with appropriate
jurisdiction under existing laws. Sec. 166. Goods Bearing Infringing Marks or Trade
Names. - No article of imported merchandise which
Sec. 164. Notice of Filing Suit Given to the Director. - It shall copy or simulate the name of any domestic
shall be the duty of the clerks of such courts within one product, or manufacturer, or dealer, or which shall
(1) month after the filing of any action, suit, or copy or simulate a mark registered in accordance with
proceeding involving a mark registered under the the provisions of this Act, or shall bear a mark or trade
provisions of this Act, to notify the Director in writing name calculated to induce the public to believe that
setting forth: the names and addresses of the litigants the article is manufactured in the Philippines, or that it
and designating the number of the registration or is manufactured in any foreign country or locality other
registrations and within one (1) month after the than the country or locality where it is in fact
judgment is entered or an appeal is taken, the clerk of manufactured, shall be admitted to entry at any
court shall give notice thereof to the Office, and the customhouse of the Philippines. In order to aid the
latter shall endorse the same upon the filewrapper of officers of the customs service in enforcing this
the said registration or registrations and incorporate prohibition, any person who is entitled to the benefits
the same as a part of the contents of said filewrapper. of this Act, may require that his name and residence,
(n) and the name of the locality in which his goods are
manufactured, a copy of the certificate of registration
Sec. 165. Trade Names or Business Names. - of his mark or trade name, to be recorded in books
165.1. A name or designation may not be used as a which shall be kept for this purpose in the Bureau of
trade name if by its nature or the use to which such Customs, under such regulations as the Collector of
name or designation may be put, it is contrary to public Customs with the approval of the Secretary of Finance
order or morals and if, in particular, it is liable to shall prescribe, and may furnish to the said Bureau
deceive trade circles or the public as to the nature of facsimiles of his name, the name of the locality in
the enterprise identified by that name. which his goods are manufactured, or his registered
mark or trade name, and thereupon the Collector of
165.2. (a) Notwithstanding any laws or regulations Customs shall cause one (1) or more copies of the
providing for any obligation to register trade names, same to be transmitted to each collector or to other
such names shall be protected, even prior to or proper officer of the Bureau of Customs. (Sec. 35, R. A.
without registration, against any unlawful act No. 166)
committed by third parties. Q. Can the customs seize the goods?
(b) In particular, any subsequent use of the trade name A. It appears under this section that all they can do is to
by a third party, whether as a trade name or a mark or prevent entry. But under Art. 9 of the Paris Convention,
collective mark, or any such use of a similar trade name “All goods unlawfully bearing a trademark or trade
or mark, likely to mislead the public, shall be deemed name shall be seized on importation into those
unlawful. countries of the Union where such mark or trade name
is entitled to legal protection.” Note that under the
165.3. The remedies provided for in Sections 153 to Paris convention, authorities shall not be bound to
156 and Sections 166 and 167 shall apply mutatis effect seizure. If the legislation of a country does not
mutandis. permit seizure on importation, it shall be replaced by
prohibition of importation or by seizure on inside the
165.4. Any change in the ownership of a trade name country.

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guilty of unfair competition, and shall be subject to an

Sec. 167. Collective Marks. - action therefor.
167.1. Subject to Subsections 167.2 and 167.3,
Sections 122 to 164 and 166 shall apply to collective 168.3. In particular, and without in any way limiting the
marks, except that references therein to "mark" shall scope of protection against unfair competition, the
be read as "collective mark." following shall be deemed guilty of unfair competition:

167.2 (a) An application for registration of a collective (a) Any person, who is selling his goods and gives them
mark shall designate the mark as a collective mark and the general appearance of goods of another
shall be accompanied by a copy of the agreement, if manufacturer or dealer, either as to the goods
any, governing the use of the collective mark. themselves or in the wrapping of the packages in which
(b) The registered owner of a collective mark shall they are contained, or the devices or words thereon, or
notify the Director of any changes made in respect of in any other feature of their appearance, which would
the agreement referred to in paragraph (a). be likely to influence purchasers to believe that the
goods offered are those of a manufacturer or dealer,
167.3. In addition to the grounds provided in Section other than the actual manufacturer or dealer, or who
149, the Court shall cancel the registration of a otherwise clothes the goods with such appearance as
collective mark if the person requesting the shall deceive the public and defraud another of his
cancellation proves that only the registered owner uses legitimate trade, or any subsequent vendor of such
the mark, or that he uses or permits its use in goods or any agent of any vendor engaged in selling
contravention of the agreements referred to in such goods with a like purpose;
Subsection 166.2 or that he uses or permits its use in a
manner liable to deceive trade circles or the public as (b) Any person who by any artifice, or device, or who
to the origin or any other common characteristics of employs any other means calculated to induce the
the goods or services concerned. false belief that such person is offering the services of
another who has identified such services in the mind of
167.4. The registration of a collective mark, or an the public; or
application therefor shall not be the subject of a license
contract. (c) Any person who shall make any false statement in
the course of trade or who shall commit any other act
Sec. 168. Unfair Competition, Rights, Regulation and contrary to good faith of a nature calculated to
Remedies. - discredit the goods, business or services of another.
168.1. A person who has identified in the mind of the
public the goods he manufactures or deals in, his 168.4. The remedies provided by Sections 156, 157 and
business or services from those of others, whether or 161 shall apply mutatis mutandis.
not a registered mark is employed, has a property right Q. What is unfair competition?
in the goodwill of the said goods, business or services A. It is the passing off of one’s goods as those of
so identified, which will be protected in the same another.
manner as other property rights.
Compana General de Tabacos v. Alhambra Cigar
168.2. Any person who shall employ deception or any
other means contrary to good faith by which he shall Compania files case against Alhambra who sold
pass off the goods manufactured by him or in which he cigarettes bearing the words “Alhambra Isabelas,” for
deals, or his business, or services for those of the one TM infringement and unfair competition, arising from
having established such goodwill, or who shall commit the use of the word “Isabelas.”
any acts calculated to produce said result, shall be

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Held: In infringement case, the action does not Prior registration is required
proceed on the theory that the public will be Registration is not necessary
defrauded, although that may be the result. It is on the
claim that the plaintiff’s right on the mark ahs been Sec. 169. False Designations of Origin; False Description
invaded. There is no need to proof anything more than or Representation. -
right to the exclusive use. No proof of fraud or intent to 169.1. Any person who, on or in connection with any
defraud is necessary. In unfair competition, the action goods or services, or any container for goods, uses in
is exclusively based on fraud. A violation of TM cannot commerce any word, term, name, symbol, or device, or
be carried on with an action of unfair competition any combination thereof, or any false designation of
based on similarity to the plaintiff’s TM. The law does origin, false or misleading description of fact, or false or
not permit these two actions to be maintained on the misleading representation of fact, which:
same facts.
(a) is likely to cause confusion, or to cause mistake, or
(As to infringement case) to deceive as to the affiliation, connection, or
There can be no registration of a TM which represents association of such person with another person, or as
the geographical place of production or the origin of to the origin, sponsorship, or approval of his or her
the product or is merely the description. Also, there is goods, services, or commercial activities by another
no secondary meaning of the word “Isabela” acquired person; or
by long association with plaintiff’s cigarettes. There are
also other cigarettes using “Isabela.” (b) in commercial advertising or promotion,
misrepresents the nature, characteristics, qualities, or
Q. Can a person file for both trademark infringement geographic origin of his or her or another person’s
and unfair competition? goods, services, or commercial activities, shall be liable
A. Yes, they are not mutually exclusive. to a civil action for damages and injunction provided in
Sections 156 and 157 of this Act by any person who
Q. Can you file for both in the same action? believes that he or she is or likely to be damaged by
A. Yes. But in Alhambra, if the action is based on the such act.
mark, it is only an action for infringement.
169.2. Any goods marked or labeled in contravention
of the provisions of this Section shall not be imported
into the Philippines or admitted entry at any
customhouse of the Philippines. The owner, importer,
Q. Compare infringement and unfair competition. or consignee of goods refused entry at any
A. See chart. customhouse under this section may have any recourse
under the customs revenue laws or may have the
remedy given by this Act in cases involving goods
Trademark Infringement refused entry or seized. (Sec. 30, R. A. No. 166a)
Unfair Competition
What is? Sec. 170. Penalties. - Independent of the civil and
Unauthorized use of a trademark administrative sanctions imposed by law, a criminal
Passing off of one’s product for another based on penalty of imprisonment from two (2) years to five (5)
general appearance years and a fine ranging from Fifty thousand pesos
Bad faith/intent necessary? (P50,000) to Two hundred thousand pesos (P200,000),
No. shall be imposed on any person who is found guilty of
Intent to deceive/Fraudulent intent is essential committing any of the acts mentioned in Section 155,
Registration of the trademark required? Section 168 and Subsection 169.1.

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Q. What actions are available to TM holders?

A. Civil, criminal and administrative cases.

Q. What is the venue?

A. For civil cases, either MTC (below P300K, below
P400K for Manila) or RTC depending on the amount.
For criminal cases, it is unclear if jurisdiction should
depend on the imprisonment or fine.
For administrative cases, the DTI for tradenames, the
IPO for trademarks.

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