TRADEMARK

TRADEMARK
I. DEFINITION
II. NON-REGISTRABLE MARKS
III. HOW MARKS ACQUIRED
IV. RIGHTS CONFERRED BY A TRADEMARK
V. TRADEMARK INFRINGEMENT
DEFINITION
Sec. 121.1
Any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or
marked container of goods.
NON-REGISTRABLE MARKS
Sec. 123.1 A mark cannot be registered if it:

d) Is identical with a registered mark in respect of:

the same goods or services or
Closely related goods or services

Or if it nearly resembles such a mark as to be likely to deceive or cause

confusion.
Tests in Determining Likelihood of
Confusion
1. Dominancy Test – similarity of the prevalent features; confusing
similarity is determined by the aural, visual and connotative and
overall impressions created by the marks
2. Holistic Test – only relies on visual comparisons (note: abandoned in
the case of Kolin v. Taiwan Kolin)
Types of Confusion
Confusion of goods – products are competing
Confusion of business – products are non-competing but related
enough to produce confusion of affiliation
Cases Decided by the Court
"MCDONALD'S" and "MACJOY"
Applying the dominancy test, the Court finds that herein petitioner's
"MCDONALD'S" and respondent’s "MACJOY" marks are confusingly similar with
each other such that an ordinary purchaser can conclude an association or
relation between the marks.
To begin with, both marks use the corporate "M" design logo and the prefixes
"Mc" and/or "Mac" as dominant features. The first letter "M" in both marks puts
emphasis on the prefixes "Mc" and/or "Mac" by the similar way in which they are
depicted i.e., in an arch-like, capitalized and stylized manner. For sure, it is the
prefix "Mc," an abbreviation of "Mac," which visually and aurally catches the
attention of the consuming public. Verily, the word "MACJOY" attracts attention
the same way as did "McDonalds," "MacFries," "McSpaghetti”,"McDo," "Big Mac"
and the rest of the MCDONALD'S marks which all use the prefixes Mc and/or Mac.
Besides and most importantly, both trademarks are used in the sale of fastfood
product.
"Big Mak" mark for hamburger of LC Big Mak Burger, Inc. is confusingly
similar with the registered "Big Mac" mark for the same food product of
McDonald's Corporation.
Applying the dominancy test, the Court finds that respondents' use of the
"Big Mak" mark results in likelihood of confusion. First, "Big Mak" sounds
exactly the same as "Big Mac." Second, the first word in "Big Mak" is
exactly the same as the first word in "Big Mac." Third, the first two letters
in "Mak" are the same as the first two letters in "Mac." Fourth, the last
letter in "Mak" while a "k" sounds the same as ”c" when the word "Mak" is
pronounced. Fifth, in Filipino, the letter "k" replaces "c" in spelling, thus
"Caloocan" is spelled "Kalookan.' The Court also noted that respondents
have adopted in "Big Mak" not only the dominant but also almost all the
features of "Big Mac." Applied to the same food product of hamburgers,
with both marks aurally and visually the same, it will likely result in
confusion in the public.
"NANNY" is confusingly similar to "NAN."
Applying the dominancy test in the present case, the Court finds that
"NANNY" is confusingly similar to "NAN." "NAN" is the prevalent
feature of Nestlé's line of infant powdered milk products. It is written in
bold letters and used in all products. The line consists of PRE-NAN,
NAN-H.A., NAN-1, and NAN-2. Clearly, "NANNY" contains the prevalent
feature "NAN." The first three letters of "NANNY" are exactly the same
as the letters of "NAN." When "NAN" and "NANNY" are pronounced,
the aural effect is confusingly similar.
PHILIPS v. PHILITES for fluorescent bulb, incandescent light, starter and
ballast.
Applying both the dominancy and holistic test, the Supreme Court ruled
that the consuming public does not have the luxury of time to ruminate the
phonetic sounds of the trademarks, to find out which one has a short or
long vowel sound. At bottom, the letters "PHILI" visually catch the attention
of the consuming public and the use of respondent's trademark will likely
deceive or cause confusion. Most importantly, both trademarks are used in
the sale of the same goods, which are light bulbs.
A comparison between petitioner's registered trademark "PHILIPS" as
used in the wrapper or packaging of its light bulbs and that of
respondent's applied for trademark "PHILITE" as depicted in the
container or actual wrapper/ packaging of the latter's light bulbs will
readily show that there is a strong similitude and likeness between the
two trademarks that will likely cause deception or confusion to the
purchasing public. The fact that the parties' wrapper or packaging
reflects negligible differences considering the use of a slightly different
font and hue of the yellow is of no moment because taken in their
entirety, respondent's trademark "PHILITES" will likely cause confusion
or deception to the ordinary purchaser with a modicum of intelligence.
NON-REGISTRABLE MARKS
e) Identical with or confusingly similar to, or constitutes a translation of
a mark which is considered by the competent authority of the
Philippines to be well-known internationally and in the Philippines,
whether or not registered here
Used for identical or similar goods or services
f) Identical with, or confusingly similar to, or constitutes a translation of
a mark considered well-known, which is registered in the Philippines

With respect to goods or services which are not similar to those with respect
to which registration is applied for
Would indicate a connection between those goods or services
Cases Decided by the Court
The word "Barbizon" cannot be registered as a trademark for ladies
underwear, since it is an internationally well-known trademark for
lingerie.
In the case of Sehwani’s In-N-Out Burger, the Supreme Court held that
"In-N-Out Burger" is a well-known mark, given its registration in various
countries around the world and comprehensive advertisements. As
such, the mark is entitled to protection even though there is no actual
use of such mark in the Philippines.
"Harvard" is the trade name of the world-famous Harvard University, and it is also a
trademark of Harvard University. Under the Paris Convention, Harvard University is
entitled to protection in the Philippines of its trade name "Harvard" even without
registration of such trade name in the Philippines. This means that no educational entity
in the Philippines can use the trade name "Harvard without the consent of Harvard
University. "Harvard" is a well-known name and mark not only in the United States but
also internationally, including the Philippines. It is internationally known as one of the
leading educational institutions in the world.
As such, even before Harvard University applied for registration of the mark "Harvard"
in the Philippines, the mark was already protected under the Paris Convention. It should
be noted though in that in the case of Fredco, the "Harvard" mark was not for the use of
an educational institution but for t-shirts, polo shirts, sandos, briefs, jackets and slacks.
Fredco filed a petition for cancellation of the mark "Harvard" against the President and
Fellows of Harvard College alleging that the mark Harvard for said merchandise was first
used in the Philippines by the New York Garments, Fredco's predecessor-in-interest.
The Supreme Court, as previously pointed out, ruled that it was a mistake to register in
favor of Fredco's predecessor-in-interest the trademark "Harvard" for slacks and similar
merchandise because it suggested a connection with Harvard University.
NON-REGISTRABLE MARKS
h) Generic marks
i) Genericidal marks – customary or usual to designate the goods or
services
j) Descriptive marks
Cases Decided by the Court
a) Lyceum (for school)

The word "Lyceum" generally refers to a school or an institution of

learning. While the Latin word "lyceum" has been incorporated into the
English language, the word is also found in Spanish (liceo) and in French
(lycee). "Lyceum" is in fact as generic in character as the word
"university.

" Since "Lyceum" or "Liceo" denotes a school or institution of learning,

it is not unnatural to use this word to designate an entity which is
organized and operating as an educational institution.
PALE PILSEN (for beer)
The words pale pilsen as part of Asia Brewery's (ABI) trademark does not
constitute an infringement of San Miguel Corporation’s (SMC) trademark:
SAN MIGUEL PALE PILSEN, for "pale pilsen" are generic words descriptive of
the color ("pale"), of a type of beer ("pilsen"), which is a light bohemian
beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages. Moreover, ABI's use
of the steinie bottle, similar but not identical to the SAN MIGUEL PALE
PILSEN bottle, is not unlawful as SMC did not invent but merely borrowed
the steinie bottle from abroad and it has not claimed neither patent nor
trademark protection for that bottle shape and design.
Master (for coffee)
The word MASTER is neither generic nor descriptive and as such, it cannot
be invalidated as a trademark. It is instead a suggestive term brought about
by the advertising scheme of Nestlé.
Suggestive terms are those which, in the phraseology of one court, require
"imagination, thought and perception to reach a conclusion as to the
nature of the goods." Such terms, "which subtly connote something about
the product," are eligible for protection in the absence of secondary
meaning. While suggestive marks are capable of shedding "some light"
upon certain characteristics of the goods or services in dispute, they
nevertheless involve "an element of incongruity, "figurativeness," or
"imaginative effort on the part of the observer.
This is evident from the advertising scheme adopted by Nestlé in
promoting its coffee products. In this case, Nestlé has, over time, promoted
its products as "coffee perfection worthy of masters."
Papa (for catsup)
It is not a generic mark. The Merriam-Webster dictionary defines
"Papa" simply as "a person's father." True, a person's father has no
logical connection with catsup products, and that precisely makes
"PAPA" as an arbitrary mark capable of being registered, as it is
distinctive, coming from a family name that started the brand several
decades ago.
La Salle (for educational institution)
The word salle only means "room" in French. The word la, on the other hand,
is a definite article ("the") used to modify salle.
Thus, since salle is nothing more than a room, the use of the term is actually
suggestive.
A suggestive mark is therefore a word, picture, or other symbol that suggests,
but does not directly describe something about the goods or services in
connection with which it is used as a mark and gives a hint as to the quality
or nature of the product. Suggestive trademarks therefore can be distinctive
and are registrable.
The appropriation of the term "la salle" to associate the words with the lofty
ideals of education and learning is in fact suggestive because roughly
translated, the words only mean "the room." Thus, the room could be
anything — a room in a house, a room in a building, or a room in an office.
In fact, the appropriation by the De La Salle Brothers is fanciful,
whimsical and arbitrary because there is no inherent connection
between the words la salle and education, and it is through their
painstaking efforts that the term has become associated with one of
the top educational institutions in the country. Even assuming
arguendo that la salle means "classroom" in French, imagination is
required in order to associate the term with an educational institution
and its particular brand of service. The phrase "De La Salle" is not
merely a generic term, De La Salle Brothers' use of the phrase being
suggestive and may properly be regarded as fanciful, arbitrary and
whimsical, it is entitled to legal protection,
HOW MARKS ACQUIRED
Sec. 122
Registration made validly in accordance with the provisions of RA 8293
RIGHTS CONFERRED BY A
TRADEMARK
Exclusive right to prevent all third parties not having the owner’s
consent from using in the course of trade identical or similar signs or
containers for goods or services which are identical or similar to those
in respect of which the trademark is registered where such use would
result in a likelihood of confusion.
TRADEMARK INFRINGEMENT
a. The trademark being infringed is registered in the Intellectual Property Office;
b. The trademark is reproduced, counterfeited, copied, or colorably imitated by
the infringer;
C. The infringing mark is used in connection with the sale, offering for sale, or
advertising of any goods, business or services; or the infringing mark is applied
to labels, signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods, business or
services;
d. The use or application of the infringing mark is likely ta cause confusion or
mistake or to deceive purchasers or others as to the goods or services
themselves or as to the source or origin of such goods or services or the identity
of such business; and
e. The use or application of the infringing mark is without the consent of the
trademark owner or the assignee thereof.