Law On Trademarks

Question 1

What is a trademark?

Answer 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. (121.1)

Question 2

What is a collective mark?

Answer 2

A collective mark is 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 3

What is a collective mark?

Answer 3

A collective mark is 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 4

What is a trade name?

Answer 4

A tradename is the name or designation identifying or distinguishing an enterprise. (121.3)

Question 5

Kinds of marks

Answer 5

1) Trademarks
2) Service marks
3) Collective marks
4) Well-known marks

Question 6

What is the purpose ofregistration for trademark? L

Answer 6

Purpose
1) Indicates the origin or ownership of the goods to which it is affixed
2) Guarantee the quality of a certain product
3) Advertise the articles or products which they
symbolize

Question 7

How Are Marks Acquired

Answer 7

SECTION 122. How Marks are Acquired. — The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Sec. 2-A, R.A. No. 166a)

Registration + ownership

Question 8

When is registration renewed?

Answer 8

SECTION 146. Renewal. ‑ 146.1. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request.

Within one (1) year from the fifth anniversary of the date of the registration of the mark

Question 9

What are the rights of a trademarkholder?

Answer 9

SECTION 147. Rights Conferred. ‑ 147.1.
the owner of a registered mark shall have the 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. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

Question 10

What are well-known marks?

Answer 10

Mark considered by the competent authority (courts or Director General of IPO, Director of Legal Affairs) of
the Philippines to be well-known internationally and in the Philippines.

Question 11

When to file?

Answer 11

1) Within five (5) years from the date of the registration of the mark
2) At any time, if the registered mark
 becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or
 has been abandoned, or
 its registration was obtained
fraudulently or contrary to the
provisions of this Act, or
 if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.
3) At any time, if the registered owner of the mark without legitimate reason fails to use
the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer. – NO ACTUAL USE

Question 11

Who may file a petition for cancellation of a trademark?

Answer 11

Any person who believes that he is or will be damaged by the registration of a mark.

Question 12

When may a non use of a mark be excused?

Answer 12

1) When the circumstances arise independently of the will of the trademark owner.

2) Use in a form different from the form in which it is registered – MUST NOT ALTER ITS DISTINCTIVE CHARACTER
3) The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered
4) The use of a mark by a company related with the registrant or applicant shall inure to the latter’s benefit – MUST NOT BE USED TO DECEIVE THE PUBLIC

5) The use of a mark by a person is controlled by
the registrant or applicant with respect to the nature and quality of the goods or services

Question 13

Other form of use which will bar cancellation

Answer 13

2) Use in a form different from the form in which it is registered – MUST NOT ALTER ITS DISTINCTIVE CHARACTER
3) The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered
4) The use of a mark by a company related with
the registrant or applicant shall inure to the
latter’s benefit – MUST NOT BE USED TO
DECEIVE THE PUBLIC

Question 14

Doctrine of secondary meaning

Answer 14

means that a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because it is geographically or otherwise deceptive, might nevertheless have been used for so long and so exclusively by one producer with reference to his article that, in the trade and to that branch
of the purchasing public, the word or phrase has come to mean that the article was his
property. (Ang v. Teodoro)

Question 15

Non-registrable marks

Answer 15

1) Generic marks – 123.1(h), names of products that they seek to identify; incapable of
appropriation
Ex. Ballpen – for a ballpen product
2) Indications that they have become customary to trade – 123.1(i); they no longer distinguish because they are used so often
3) Descriptive marks – 123.1 (j); there is a fine line between descriptive marks and suggestive marks
4) Deceptive or misleading marks – 123.1(g);
Ex. Coke – for alcoholic beverages
5) Marks considered to be contrary to public order or morality – 123.1(m)
6) Marks which falsely suggest a connection – 123.1(a); persons, living or dead, institutions,
beliefs, or national symbols, or bring them into contempt or disrepute
7) Flags, insignia, coat of arms, simulations – 123.1(b);
8) Relating to particular persons – 123.1(c) XPN: if with written consent
9) Shapes – 123.1(k)
10) Colors – 123.1(l); lack of distinctiveness
11) Well-known marks – 123.1(e), (f)

Question 16

TEST TO DETERMINE CONFUSING SIMILARITY

Answer 16

123.1(d) 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;

Question 17

Dominancy test

Answer 17

does not only rely on the visual but also to aural, connotative, feeling and overall impressions of the dominant feature of two competing trademarks.

What can be considered as a dominant feature?
– the striking, evident designs, special, easily remembered features that catches the attention of an ordinary consumer.

Idem sonans rule – aural considerations are used; provides that courts have taken into consideration the aural effects of words.

Question 18

Colorable imitation

Answer 18

such denotes a closed imitation as to be calculated to deceive the ordinary person or purchaser.

Question 19

What is unfair competition?

Question 20

What are the requisites of
Unfair competition?

Answer 20

Requisites
1) Whether or not a registered mark is
employed
2) There is employment of deception or any other means contrary to good faith
3) There is passing off of one’s good as another or there is confusing similarity in the general appearance of the goods

Question 21

What are the defenses against infringement?

Answer 21

1) Prior use of defendant
2) No likelihood of confusion or mistake or
deception of purchasers
3) Plaintiff’s claimed mark is not protected
4) Plaintiff’s mark has become generic
5) Plaintiff’s fraudulent registration
6) Plaintiff’s mark was abandoned
7) Plaintiff has not come to court with clean hands
8) Laches or estoppel
9) Non-competing products or services infringement without unfair competition when same
10) Defendant’s good faith

Question 22

What are the defenses against infringement?

Answer 22

1) Prior use of defendant
2) No likelihood of confusion or mistake or
deception of purchasers
3) Plaintiff’s claimed mark is not protected
4) Plaintiff’s mark has become generic
5) Plaintiff’s fraudulent registration
6) Plaintiff’s mark was abandoned
7) Plaintiff has not come to court with clean hands
8) Laches or estoppel
9) Non-competing products or services infringement without unfair competition when same
10) Defendant’s good faith

Question 23

What are the remedies against trademark infringement?

Answer 23

1) Civil action for damages
2) Impounding of infringing goods by the court 3) Imposition of double damages
4) Injunctive relief
5) Disposing of infringing goods outside the
channels of commerce
6) Destruction of infringing goods
7) Criminal action
8) Administrative action before IPO
9) Prohibition on importation

Question 24

What is um fusion of goods?

Answer 24

There is confusion of goods when an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another, in which case defendants goods are then bought as the plaintiff’s and its poor quality reflects badly in the plaintiff’s reputation

Question 25

What is confusion of business?

Answer 25

There is confusion of business when the goods of the parties are different but the defendants’ product cam reasonably be assumed to originate from the plaintiff thus receiving the public into believing that there is some connection between the plaintiff and defendant which in fact does not exist.

Question 26

Is there a need to prove actual confusion?

Answer 26

Section 22 requires the less stringent standard of likelihood of confusion only. While proof of actual confusion is the best evidence of infringement its absence isinconsequential.

Question 27

What is a geographically descriptive term?

Answer 27

It is any noun or adjective that designates geographical location and would lend to be regarded by buyers as descriptive of the geographic location of origin of the goods or services

Question 28

What are the grounds for cancellation of trademarks which may be filed at any time?

Answer 28

2) At any time, if the registered mark
 becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or
 has been abandoned, or
 its registration was obtained fraudulently or contrary to the provisions of this Act, or
 if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.
3) At any time, if the registered owner of the mark without legitimate reason fails to use
the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer. – NO ACTUAL USE

Question 29

What is trademark infringement?

Answer 29

The unauthorized use of a registered trademark, or of a colorable imitation of the same for similar or related goods in which such use is likely to cause confusion or mistake or to deceive.

Question 30

What are the elements of trademark infringement?

Answer 30

(1) The trademark being infringed is registered in
the Intellectual Property Office; however, in infringement of trade name, the same need not be
registered;
(2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;
(3) The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name 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

(4) The use or application of the infringing mark or trade name is likely to 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

(5) It is without the consent of the trademark or trade name owner or the assignee thereof.

Question 31

What is colorable imitation?

Answer 31

Denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually givesi as to cause the one supposing it to be the other.

Question 32

What is colorable imitation?

Answer 32

Denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually givesi as to cause the one supposing it to be the other.

Question 33

What is the idems sonams rule?

Answer 33

Aural effects of the words and letters contained in the marks are used in determining the issue of confusing similarity