Intellectual Property Law - Trademark (10 years)

Question 1

infringement meaning

Answer 1

the action of breaking the terms of a law, agreement, etc.; violation

Question 2

injunction meaning

Answer 2

an authoritative warning or order

Question 3

Please provide the 3 major topic under this Intellectual Property Law

Answer 3

1. Copy Right
2. Patent
3. Trademark

Question 4

Differentiate the 3 as to:

Subject Matter of the right

1. Copy Right
2. Patent
3. Trademark

Answer 4

1. Literary. scientific or artistic work
2. New, useful and industrially applicable INVENTIONS
3. Goods manufactured or produced

Question 5

Differentiate the 3 as to:

Where right is to be registered?

1. Copy Right
2. Patent
3. Trademark

Answer 5

1. National Library
2. Intellectual Property Office
3. Intellectual Property Office

Question 6

Differentiate the 3 as to:

Protection Starts?

1. Copy Right
2. Patent
3. Trademark

Answer 6

1. Creation
2. Application
3. Issuance of Certificate of Registration

Question 7

Differentiate the 3 as to:

Duration of rights?

1. Copy Right
2. Patent
3. Trademark

Answer 7

1. Lifetime of the author plus Generally 50 years after death of the author
2. 20 years
3. 10 years. Unli renewable

Question 8

ephemeral meaning

Answer 8

lasting for a very short time.

Question 9

posthumous meaning

Answer 9

occurring, awarded, or appearing after the death of the originator

Question 10

exploit meaning

Answer 10

make full use of and derive benefit from (a resource).

Question 11

““Trademark” means

Answer 11

it means any visible sign capable of distinguishing the goods of an enterprise and shall include a stamped or marked container of goods.

Question 12

“Service mark”

Answer 12

it means any visible sign capable of
distinguishing services of an enterprise and shall include a stamped or marked container of services.

Question 13

“Collective mark”

Answer 13

means any visible sign designated as such
in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark.

Question 14

“Trade name”

Answer 14

means the name or designation identifying or
distinguishing an enterprise.

Question 15

Mode of creation of right

Answer 15

Trademark, service mark and collective market must be registered with IPO to be protected by
law while trade name need not be registered to be protected. (Created by Registration).

Question 16

insignia meaning

Answer 16

a badge or distinguishing mark of military rank, office, or membership of an organization; an official emblem.

Question 17

Non-registrable marks – A mark cannot be registered if it:

Answer 17

• Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national
  symbols, or bring them into contempt or disrepute.
• Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof.
• Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow.
• Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: I, The same goods or services, or II, Closely related
  goods or services, or III, if it nearly resembles such a mark as to be likely to deceive or cause confusion.
• Is 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 it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, that in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large,
  including knowledge in the Philippines which has been obtained as a result of the promotion of the mark.
• Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, 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: Provided, that use of the mark in relation to those goods
  or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided
  further, that the interest of the owner of the registered mark are likely to be damaged by such use.
• Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or service.
• Consists exclusively of signs that are generic for the goods or services that they seek to identify.
• Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade
  practice.
• Consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the
  goods or rendering of the services, or other characteristics of the goods or services.
• Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value.
• Consists of color alone, unless defined by a given form.
• Is contrary to public order or morality.

Question 18

Term of Trademark and Service Mark

Answer 18

It has a term of 10 years but subject to unlimited times of renewal. Therefore, it has
indefinite life.

Question 19

Trademark Infringement

Answer 19

s the unauthorized use of a trademark or service mark on or in connection with goods/services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

Question 20

Tests of Trademark Infringement

Answer 20

• Dominancy Test
• Holistic Test

Question 21

Tests of Trademark Infringement
Explain * Dominancy Test

Answer 21

it focuses on the similarity of the main,
prevalent or essential features of the competing trademarks that might cause confusion. Infringement takes place when the competing trademark contains the essential features of another. Imitation or an effort to imitate is unnecessary. The question is whether the use of the marks is likely to cause
confusion or deceive purchasers.

Usually sa maliliit na bagay o halaga. Like noodles, ketchup. Focuses on confusing similarity

Question 22

Tests of Trademark Infringement
Explain * Holistic Test

Answer 22

aka Totality Test - the focus is not only on the predominant words but also on the other features appearing on the labels.

Usually sa panglahatan, like jeans etc

Question 23

Explain Declaration of Actual Use (DAU) of Trademark

and Effect of Non compliance

Answer 23

A declaration of actual use shall be filed:

1. Within 3 years from filing date of application; Extendible for another 6 months; Otherwise deemed an abandonment of the application
2. AND another DAU within 1 year from the 5th anniv of the registration of the mark; Otherwise, the “Mark” shall be removed from the Register by the Office
3. ANF within 1 year from the date of renewal of the trademark registration

Effect of Noncompliance: Otherwise, the application will be deemed abandoned or the registration cancelled!

Question 24

3 Remedies of Trademark Owner

Answer 24

1. Recover Damages
2. Seek Injunction
3. Seek destruction of infringing materials

Note however that, exception is prior user in good faith

Question 25

Please compare the Trademark Infringement vs. Unfair Competition

Answer 25

Trademark Infringement:
-Registration of the mark is pre-requisite (kasi nga pag hindi registered, dika protected ng batas. Dika pwede mag avail ng remedy)
-No fraudulent intent is required
-Likelihood of confusion

Unfair Competition:
-No registration necessary
-Fraudulent intent is necessary
-Sale is required
-Passing-off element

Question 26

Notes:
So diba kaya ka dapat mag register sa IPO para ma protect yung Trademark mo sa mga Infringement.

Pero pag hindi ka registered, dika allowed i avail yung infringement rights. Pero may pag asa kapa sa Unfair Competition.