Part I

Question 1

Basis of the Intellectual Property Law or RA 8293

Answer 1

Section 2. Declaration of State Policy. - The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act.

It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines.

Question 2

Brief Historical Background

Answer 2

Intellectual Property Law started in medieval Europe. At first, only select guilds or associations were given the power and authority to control trade, business, new inventions. But then this suppressed creativity and innovation more than it encouraged it.

In 1623, the Statute of Monopolies was passed, which stopped the granting of monopolies by the government. The true and first inventor of intellectual property had exclusive control over his invention for a period of 14 years.

In 1710, Statute of Anne was passed. It was the fist copyright law.

The practice of marking works and products was at its height in the Roman Empire but the first law concerning trademarks was adopted by the British Parliament in 1266 under the reign of Henry III. Under this act, every baker had to put his mark on the bread he produced. Over time, the purpose of trademarks evolved from mere identification of maker to consumer protection.

Patent came from the latin word “litterae patentes” which means an open letter. The first system was developed in Renaissance Italy. It is said that the Venetian Patent Statute of March 19, 1474, established in the Republic of Venice is the first statutory patent system in Europe, and may be deemed to be the earliest codified patent system in the world.

In 1883, with respect to industrial property such as trademarks and patents, the Paris Convention for the Protection of Industrial Property was concluded. In the case of copyright, the Berne Convention for the Protection of Literary and Artistic Works was also concluded in 1886.

In 1893, the United International Bureau for the Protection of Intellectual Property (also known as Bureaux Internationaux Reunis pour la Protection de la Propriete Intellectuelle) was established to administer the above-mentioned 2 treaties. The bureau evolved into the World Intellectual Property Organization (WIPO) which was founded in 1967 and became a specialized United Nations agency in 1974.

It is said that the first law on intellectual property in the Philippines that was enforced was the Patent Law of Spain, which was promulgated by the Cortes on March 27, 1826 and which was extended to the Philippines.

Question 3

History of IPL in the Philippines

Answer 3

Patent Law of Spain (March 27, 1826)

RA 165 “An Act Creating a Patent Office, Prescribing its Powers and Duties, Regulating the Issuance of Patents, and Appropriating Funds therefor” (1947)

RA 166 “An Act To Provide For The Registration And Protection Of Trade-Marks, Trade-Names And Service-Marks, Defining Unfair Competition and False Marking And Providing Remedies Against The Same, And For Other Purposes” (1947)

PD 49 “Decree on Intellectual Property”&raquo_space; governed copyright (1972)

Sec. 13, Art. XIV of the 1987 Constitution “The State shall protect and secure the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such period as may be produced by law.

Question 4

World Trade Organization

Answer 4

Provides for a forum for governments to negotiate trade agreements and settle trade disputes to ensure the smooth flow of trade

Question 5

TRIPS Agreement

Answer 5

Trade Related Aspects of Intellectual Property Rights agreement

• provides a minimum standard for the protection and enforcement of intellectual property rights
• the most wide-ranging and far-reaching international treaty on intellectual property and marks the most important milestone in the development of international law in this area
• most comprehensive international treaty on intellectual property rights as it brings intellectual property rules into the framework of the WTO (Dr. Carlos Correa)
• took effect in 1995

Question 6

Treaties in response to internet and technology

Answer 6

1. WIPO Copyright Treaty
2. WIPO Performances and Phonogram Treaty

known together as “Internet Treaties”
» address the challenges posed by today’s digital technologies, in particular, the dissemination of protected material over digital networks such as the internet

> > require countries to provide a framework of basic rights, allowing creators to control and/or be compensated for the various ways in which their creations are used and enjoyed by others

> > ensure that copyright owners are adequately and effectively protected when their works are disseminated through new technologies and communications system such as the Internet, and that existing rights continue to apply in the digital environment

Question 7

RA 8293

Answer 7

Intellectual Property Code of the Philippines

• took effect on January 1, 1998
• provided the legal infrastructure for the promotion, protection and enforcement of intellectual property rights
• created the Intellectual Property Office of the Philippines and defined its powers and functions

Question 8

RA 9150

Answer 8

for the protection of layout designs (topographies) of integrated circuits (2001)

Question 9

RA 9502

Answer 9

Universally Accessible Cheaper and Quality Medicines Act of 2008
- amended certain provisions of the Intellectual Property Code such as provisions on the patentability of drugs and medicines, parallel importation of patented drugs and medicines, and special compulsory licensing for patented drugs and medicines

Question 10

RA 10372

Answer 10

amended the Intellectual Property Code to comply, among others, with the requirements of the WIPO Internet Treaties, particularly on the protection of technological measures and rights management information

also provides additional limitation on copyright, particularly for visually and reading impaired individuals, and grants enforcement functions to the Intellectual Property Office of the Philippines

Question 11

Importance of Intellectual Property

Answer 11

It is important not only in the domain of creators, authors, and inventors but also in the political and economic sphere of the country.

1. social and economic standpoint
   - progress and development through inventiveness, innovativeness, and creativity
2. business area
   - the development of new products, technologies, and solutions to address the growing needs and problems of the society are encouraged and incentivized
3. intellectual property and innovation are key elements in terms of competitiveness
4. widely distributed and enforceable property rights are key institutions that promote development
5. recognition and respect of IPR sets the foundation for our artists, inventors, authors, scientists and creators to come up with their intellectual creations and commit them for the development of their respective enterprises and the society

Question 12

4 major factors of production

Answer 12

1. land
2. labor
3. capital ** (intellectual property as intangible asset)
4. management

Question 13

Intellectual Property Law

Answer 13

deals with laws to protect and enforce rights of the creators and owners of inventions, writing, music, designs and other works, known as the “intellectual property.” There are several areas of intellectual property including copyright, trademarks, patents, and trade secrets.

Question 14

Kinds of Intellectual Property Rights

Answer 14

a. Copyright and Related Rights
- exists over “original and derivative intellectual creations in the literary and artistic domain protected from the moment of their creation

b. Trademarks and Service Marks
- 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

c. Geographic Indications
- indications which identify a good as originating in the territory, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin

d. Industrial Designs
- any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors, provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. It must be new or ornamental.

e. Patents
- any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing

f. Layout-Designs (Topographies) of Integrated Circuits
- is synonymous with ‘Topography’ and means the three-dimensional disposition, however expressed, of the elements, at least one of which is an active element, and of some or all of the interconnections of an integrated circuit, or such a three-dimensional disposition prepared for an integrated circuit intended for manufacture
- Integrated Circuit — a product, in its final form, or an intermediate form, in which the elements, at least one of which is an active element and some or all of the interconnections are integrally formed in and/or on a piece of material, and which is intended to perform an electronic function

g. Protection of Undisclosed Information (n, TRIPS)
- means protection of information lawfully held from being disclosed to, acquired by, or used by others without their consent in a manner contrary to honest commercial practices so long as such information: (i) is
secret in the sense that it is not, as a body or in the precise configuration and assembly of its components, generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question; (ii) has commercial value because it is secret; and (iii) has been subject to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it secret

Trade Secret is a plan or process, tool, mechanism or compound known only to its owner and those of his employees to whom it is necessary to confide it. The definition also extends to: (i) a secret formula or process not patented, but known only to certain individuals using it in compounding some article of trade having a commercial value; or (ii) any formula, pattern, device, or compilation of information that: (1) is used in one’s business; and (2) gives the employer an opportunity to obtain an advantage over competitors who do not possess the information

Question 15

What are the distinctions among trademark, patent and copyright?

Answer 15

Trademark - 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

Tradename - The name or designation identifying or distinguishing an enterprise

Copyright - Literary and artistic works which are original intellectual creations in the literary and artistic domain protected from the moment of their creation

Patentable Inventions - Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable

Question 16

What is a geographic indication?

Answer 16

It’s an indication which identifies a good as originating in the territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.

Question 17

What is a patent?

Answer 17

A statutory grant which confers to an inventor or his legal successor, in return for the disclosure of the invention to the public, the right for a limited period of time to exclude others from making, using, selling or importing the invention within the territory of the country that grants the patent.

Question 18

According to WIPO, intellectual property has 2 categories

Answer 18

a. Industrial Property: includes inventions (patents), trademarks, industrial designs, and geographic indications of source

b. Copyright: includes literary and artistic works
such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs.
Rights related to copyright include those of
performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and television programs

Question 19

Sec. 13, Art. XIV, 1987 Philippine Constitution

Answer 19

SECTION 13. The State shall protect and secure the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such period as may be provided by law.

Question 20

Republic Act No. 165

Answer 20

An Act Creating a Patent Office, Prescribing its Powers and Duties, Regulating the Issuance of Patents, and Appropriating Funds Therefor

Question 21

Republic Act No. 166

Answer 21

An Act to Provide for the Registration and Protection of Trade-Marks, Trade-Names and Service-Marks, Defining Unfair Competition and False Marking and Providing Remedies Against the Same, and For Other Purposes

Question 22

PD49

Answer 22

Decree on the Protection of Intellectual Property

Question 23

Republic Act No. 8293

Answer 23

Intellectual Property Code of the Philippines

An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for Other Purposes

Question 24

Republic Act No. 10372

Answer 24

An Act Amending Certain Provisions of Republic Act No. 8293, Otherwise Known As the “Intellectual Property Code Of The Philippines”, and for Other Purposes

Question 25

Sec. 2 Declaration of State Policies of RA 8293

Answer 25

SECTION 2. Declaration of State Policy. ‑ The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act.

The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good.

It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines.

Question 26

Sec. 3 International Conventions and Reciprocity of RA 8293

Answer 26

SECTION 3. International Conventions and Reciprocity. ‑ Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.

Question 27

Sec. 5 Functions of the Intellectual Property Office (IPO) of RA 8293

Answer 27

SECTION 5. Functions of the Intellectual Property Office (IPO).

5. 1. To administer and implement the State policies declared in this Act, there is hereby created the Intellectual Property Office (IPO) which shall have the following functions:
      a. examine applications for grant of letters patent for inventions and register utility models and industrial designs
      b. examine applications for the registration of marks, geographic indication, integrated circuits
      c. register technology transfer arrangements and settle disputes involving technology transfer payments covered by the provisions of Part II, Chapter IX on Voluntary Licensing and develop and implement strategies to promote and facilitate technology transfer
      d. promote the use of patent information as a tool for technology development
      e. publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered
      f. administratively adjudicate contested proceedings affecting intellectual property rights
      g. coordinate with other government agencies and the private sector efforts to formulate and implement plans and policies to strengthen the protection of intellectual property rights in the country
6. 2. The Office shall have custody of all records, books, drawings, specifications, documents, and other papers and things relating to intellectual property rights applications filed with the Office

Question 28

Office

Answer 28

Intellectual Property Office

Question 29

IPO Gazette

Answer 29

gazette published by the Office

Question 30

What is undisclosed information?

Answer 30

It is an information which:
1.
Is a secret in the sense that it is not, as a body or in precise configuration and assembly of components, generally known among, or readily accessible to persons within the circles that normally deal with the kind of information in question.
2.
Has commercial value because it is a secret
3.
Has been subjected to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it a secret. ((Article 39, TRIPS Agreement)

Question 31

What is undisclosed information?

Answer 31

It is an information which:

1. is a secret in the sense that it is not, as a body or in precise configuration and assembly of components, generally known among, or readily accessible to persons within the circles that normally deal with the kind of information in question
2. has commercial value because it is a secret
3. has been subjected to reasonable steps under the circumstances, by the person lawfully in control of the information, to keep it a secret. (Article 39, TRIPS Agreement)

Question 32

What is the nature of undisclosed information/trade secret?

Answer 32

Those trade secrets are of a privileged nature. The protection of industrial property encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human needs. It speeds up transfer of technology and industrialization, and thereby bring about social and economic progress. Verily, the protection of industrial secrets is inextricably linked to the advancement of our economy and fosters healthy competition in trade.

Question 33

Sec. 6-13 Organizational Structure of the IPO

Answer 33

6. 1. The Office shall be headed by a Director General who shall be assisted by two (2) Deputies Director General.
7. 2. The Office shall be divided into six (6) Bureaus, each of which shall be headed by a Director and assisted by an Assistant Director.
8. 3. The Director General, Deputies Director General, Directors and Assistant Directors shall be appointed by the President, and the other officers and employees of the Office by the Secretary of Trade and Industry, conformably with and under the Civil Service Law.

SECTION 7. The Director General and Deputies Director General.

SECTION 8. The Bureau of Patents.

SECTION 9. The Bureau of Trademarks.

SECTION 10. The Bureau of Legal Affairs.

SECTION 11. The Documentation, Information and Technology Transfer Bureau

SECTION 12. The Management Information Services and EDP Bureau

Question 34

Bureaus of the Office

Answer 34

a. The Bureau of Patents
b. The Bureau of Trademarks
c. The Bureau of Legal Affairs
d. The Documentation, Information and Technology Transfer Bureau
e. The Management Information System and EDP Bureau
f. The Administrative, Financial and Personnel Services Bureau

Question 35

Powers and functions of the Director General

Answer 35

a. Manage and direct all functions and activities of the Office, including the promulgation of rules and regulations to implement the objectives, policies, plans, programs and projects of the Office: Provided, That in the exercise of the authority to propose policies and standards in relation to the following: (1) the effective, efficient, and economical operations of the Office requiring statutory enactment; (2) coordination with other agencies of government in relation to the enforcement of intellectual property rights; (3) the recognition of attorneys, agents, or other persons representing applicants or other parties before the Office; and (4) the establishment of fees for the filing and processing of an application for a patent, utility model or industrial design or mark or a collective mark, geographic indication and other marks of ownership, and for all other services performed and materials furnished by the Office, the Director General shall be subject to the supervision of the Secretary of Trade and Industry;
b. Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Affairs, the Director of Patents, the Director of Trademarks, and the Director of the Documentation, Information and Technology Transfer Bureau. The decisions of the Director General in the exercise of his appellate jurisdiction in respect of the decisions of the Director of Patents, and the Director of Trademarks shall be appealable to the Court of Appeals in accordance with the Rules of Court; and those in respect of the decisions of the Director of Documentation, Information and Technology Transfer Bureau shall be appealable to the Secretary of Trade and Industry
c. Exercise original jurisdiction to resolve disputes relating to the terms of a license involving the author’s right to public performance or other communication of his work. The decisions of the Director General in these cases shall be appealable to the Secretary of Trade and Industry.

Question 36

Qualifications of the Director General and the Deputies Director General

Answer 36

1. must be natural born citizens of the Philippines
2. at least thirty-five (35) years of age on the day of their appointment
3. holders of a college degree
4. of proven competence, integrity, probity and independence

the Director General and at least one (1) Deputy Director General shall be members of the Philippine Bar who have engaged in the practice of law for at least ten (10) years

In the selection of the Director General and the Deputies Director General, consideration shall be given to such qualifications as would result, as far as practicable, in the balanced representation in the Directorate General of the various fields of intellectual property.

Question 37

Term of Office of the Director General and the Deputies Director General

Answer 37

shall be appointed by the President for a term of five (5) years and shall be eligible for reappointment only once: Provided, That the first Director General shall have a first term of 7 years. Appointment to any vacancy shall be only for the unexpired term of the predecessor.

Question 38

Composition of the Office of the Director General

Answer 38

1. Director General
2. Deputies Director General
3. Immediate staff and such Offices and Services that the Director General will set up to support directly the Office of the Director General

Question 39

Functions of the Bureau of Patents

Answer 39

1. Search and examination of patent applications and the grant of patents
2. Registration of utility models, industrial designs, and integrated circuits
3. Conduct studies and researches in the field of patents in order to assist the Director General in formulating policies on the administration and examination of patents

Question 40

Functions of the Bureau of Trademarks

Answer 40

1. Search and examination of the applications for the registration of marks, geographic indications and other marks of ownership and the issuance of the certificates of registration.
2. Conduct studies and researches in the field of trademarks in order to assist the Director General in formulating policies on the administration and examination of trademarks.

Question 41

Functions of the Bureau of Legal Affairs

Answer 41

1. Hear and decide opposition to the application for registration of marks; cancellation of trademarks; subject to the provisions of Section 64, cancellation of patents, utility models, and industrial designs; and petitions for compulsory licensing of patents [original and exclusive jurisdiction]
2. (a) Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights: Provided, That its jurisdiction is limited to complaints where the total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided, further, That availment of the provisional remedies may be granted in accordance with the Rules of Court. The Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings. [original and concurrent jurisdiction]
   (b) After formal investigation, the Director for Legal Affairs may impose one (1) or more of the following administrative penalties:
   (i) The issuance of a cease and desist order which shall specify the acts that the respondent shall cease and desist from and shall require him to submit a compliance report within a reasonable time which shall be fixed in the order;
   (ii) The acceptance of a voluntary assurance of compliance or discontinuance as may be imposed. Such voluntary assurance may include one or more of the following:
   (1) An assurance to comply with the provisions of the intellectual property law violated;
   (2) An assurance to refrain from engaging in unlawful and unfair acts and practices subject of the formal investigation;
   (3) An assurance to recall, replace, repair, or refund the money value of defective goods distributed in commerce; and
   (4) An assurance to reimburse the complainant the expenses and costs incurred in prosecuting the case in the Bureau of Legal Affairs.

The Director of Legal Affairs may also require the respondent to submit periodic compliance reports and file a bond to guarantee compliance of his undertaking;

(iii) The condemnation or seizure of products which are subject of the offense. The goods seized hereunder shall be disposed of in such manner as may be deemed appropriate by the Director of Legal Affairs, such as by sale, donation to distressed local governments or to charitable or relief institutions, exportation, recycling into other goods, or any combination thereof, under such guidelines as he may provide;
(iv) The forfeiture of paraphernalia and all real and personal properties which have been used in the commission of the offense;
(v) The imposition of administrative fines in such amount as deemed reasonable by the Director of Legal Affairs, which shall in no case be less than Five thousand pesos (P5,000) nor more than One hundred fifty thousand pesos (P150,000). In addition, an additional fine of not more than One thousand pesos (P1,000) shall be imposed for each day of continuing violation;
(vi) The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension of the validity thereof for such period of time as the Director of Legal Affairs may deem reasonable which shall not exceed one (1) year;
(vii) The withholding of any permit, license, authority, or registration which is being secured by the respondent from the Office;
(viii) The assessment of damages;
(ix) Censure; and
(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9, Executive Order No. 913 [1983]a)
10. 3. The Director General may by Regulations establish the procedure to govern the implementation of this Section.

Provisional remedies may also be granted.
Hindi sila pwede magfile ng search warrant or warrant of arrest. Go to the Courts.

Question 42

Who has the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings?

Answer 42

The Director of Legal Affairs

Question 43

Functions of the Documentation, Information and Technology Transfer Bureau

Answer 43

1. Support the search and examination activities of the Office through the following activities:
   a. Maintain and upkeep classification systems whether they be national or international such as the International Patent Classification (IPC) system
   b. Provide advisory services for the determination of search patterns
   c. Maintain search files and search rooms and reference libraries
   d. Adapt and package industrial property information.
2. Establish networks or intermediaries or regional representatives
3. Educate the public and build awareness on intellectual property through the conduct of seminars and lectures, and other similar activities
4. Establish working relations with research and development institutions as well as with local and international intellectual property professional groups and the like
5. Perform state-of-the-art searches
6. Promote the use of patent information as an effective tool to facilitate the development of technology in the country
7. Provide technical, advisory, and other services relating to the licensing and promotion of technology, and carry out an efficient and effective program for technology transfer
8. Register technology transfer arrangements, and settle disputes involving technology transfer payments

Question 44

Duties of the Management Information Services and EDP Bureau

Answer 44

1. Conduct automation planning, research and development, testing of systems, contracts with firms, contracting, purchase and maintenance of equipment, design and maintenance of systems, user consultation, and the like
2. Provide management information support and service to the Office

Question 45

Duties of the Administrative, Financial and Human Resource Development Service Bureau

Answer 45

(a) Provide services relative to procurement and allocation of supplies and equipment, transportation, messengerial work, cashiering, payment of salaries and other Office’s obligations, office maintenance, proper safety and security, and other utility services; and comply with government regulatory requirements in the areas of performance appraisal, compensation and benefits, employment records and reports
(b) Receive all applications filed with the Office and collect fees therefor
(c) Publish patent applications and grants, trademark applications, and registration of marks, industrial designs, utility models, geographic indication, and lay-out-designs of integrated circuits registrations

Question 46

Functions of the Patent and Trademark Administration Services

Answer 46

(a) Maintain registers of assignments, mergings, licenses, and bibliographic on patents and trademarks
(b) Collect maintenance fees, issue certified copies of documents in its custody and perform similar other activities
(c) Hold in custody all the applications filed with the office, and all patent grants, certificate of registrations issued by the office, and the like

Question 47

The Financial Service shall formulate and manage a financial program to ensure availability and proper utilization of funds; provide for an effective monitoring system of the financial operations of the Office. T or F.

Answer 47

True.

Question 48

The Human Resource Development Service shall design and implement human resource development plans and programs for the personnel of the Office; provide for present and future manpower needs of the organization; maintain high morale and favorable employee attitudes towards the organization through the continuing design and implementation of employee development programs. T or F.

Answer 48

True.

Question 49

Mark

Answer 49

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

Question 50

Collective mark

Answer 50

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 51

Trade name

Answer 51

the name or designation identifying or distinguishing an enterprise

Question 52

Examiner

Answer 52

trademark examiner

Question 53

How are marks acquired?

Answer 53

The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law.

Question 54

Registrability of a mark

Answer 54

A mark cannot be registered if it:

a. 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
b. 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
c. 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

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

e. 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
f. 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 interests of the owner of the registered mark are likely to be damaged by such use
g. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services
h. Consists exclusively of signs that are generic for the goods or services that they seek to identify
i. 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
j. Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services
k. 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
l. Consists of color alone, unless defined by a given form
m. Is contrary to public order or morality

Question 55

Address of Service if the applicant is not domiciled or has no real and effective commercial establishment in the Philippines

Answer 55

He shall designate by a written document filed in the Office, the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark. Such notices or services may be served upon the person so designated by leaving a copy thereof at the address specified in the last designation filed. If the person so designated cannot be found at the address given in the last designation, such notice or process may be served upon the Director.

Question 56

Holistic and Dominancy Test

Answer 56

two tests to determine likelihood of confusion

Dominancy Test: 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.

Holistic Test: considers the entirety of the marks, including labels and packaging, in determining confusing similarity. The focus is not only on the predominant words but also on the other features appearing on the labels.

Question 57

Gravamen of trademark infringement

Answer 57

The element of likelihood of confusion

Question 58

2 types of confusion in trademark infringement

Answer 58

confusion of goods and confusion of business

Confusion of goods “in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other.” In which case, “defendant’s goods are then bought as the plaintiff’s, and the poorer quality of the former reflects adversely on the plaintiff’s reputation.”

Confusion of business: “Here though the goods of the parties are different, the defendant’s product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist.”

Question 59

To establish trademark infringement, the following elements must be shown

Answer 59

1. the validity of plaintiff’s mark
2. the plaintiff’s ownership of the mark
   3) . the use of the mark or its colorable imitation by the alleged infringer results in “likelihood of confusion”

Question 60

Is prior use of the mark a requirement for its registration?

Answer 60

Yes. Before a trademark can be registered, it must have been actually used in commerce and service for not less than two months in the Philippines prior to the filing of an application for its registration.

Question 61

Implicit in the definition of infringement is the concept that the goods must be so RELATED that there is a likelihood either of confusion of goods or business.

Answer 61

Oki.

Question 62

Infringement

Answer 62

the use without consent of the trademark owner of
any “reproduction, counterfeit, copy or colorable limitation of any registered mark or tradename in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or Identity of such business; or reproduce, counterfeit, copy or colorably imitate any such mark or
tradename and apply such reproduction, counterfeit, copy or colorable limitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services.”

Question 63

Goods are related when

Answer 63

When they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same
purpose or are sold in grocery stores.

Question 64

Examples of related products

Answer 64

a. Biscuits were held related to milk because they are both food products.
b. Soap and perfume, lipstick and nail polish are similarly related because they are common household items nowadays
c. The trademark “Ang Tibay” for shoes and slippers was disallowed to be used for shirts and pants because they belong to the same general class of goods
d. Soap and pomade although non- competitive, were held to be similar or to belong to the same class, since both are toilet articles

Question 65

Examples of unrelated products

Answer 65

a. No confusion or deception can possibly result or arise when the name “Wellington” which is the trademark for shirts, pants, drawers and other articles of wear for men, women and children is used as a name of a department store
b. Also, there is quite a difference between soy sauce and edible oil
c. Also, product of ham vs. lard butter, cooking oil, abrasive detergents, polishing materials and soap of all kinds = unrelated

beyond the company’s zone of potential or natural and logical expansion and that they flow through different channels of trade

Question 66

Degree of Distinctiveness of Trademark

Answer 66

Fanciful Mark
- terms that have been invented for the sole purpose of functioning as a trademark. Examples of fanciful marks include Exxon for gasoline and Pepsi for beverages. Fanciful marks are considered the most distinctive and, thus, the worthiest of trademark protection

Arbitrary Mark
- words that are in common use, but that are not typically used to describe a significant ingredient, quality or characteristic of the product. In other words, arbitrary marks use common terms in an unexpected manner. For example, the mark veuve – which is French for widow – was found to be an arbitrary term as applied to champagne. Other examples of arbitrary marks include apple for computers and old crow for whiskey. Arbitrary marks are also considered inherently distinctive and can be registered.

Suggestive Mark
- those that “require imagination, thought or perception to reach a conclusion” as to the nature of the product. For example, the mark term noburst for liquid antifreeze was determined to suggest the desired result of using the product rather than immediately informing the public of an attribute of the product.[9] Examples of other suggestive marks include airbus for airplanes and jaguar for cars. Suggestive marks are considered “inherently distinctive” and can be registered.

Descriptive Mark
- if it conveys an immediate idea of an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Descriptive terms are generally not eligible for trademark registration unless they have acquired secondary meanings. Examples of descriptive terms include sharp for televisions, international business machines for computers, and cold and creamy for ice cream. The determination of whether a mark is descriptive must be made in conjunction with the specific good or service and the significance that the mark would have to the average purchaser

Generic Mark
- one that the public understands as a common name for the company’s goods or services. Generic terms cannot be registered on either the Principal or Supplemental Register. For example, a company could not register the term watch for its timepieces, or the term automobile for its cars, or the term popcorn for its snack products. The trademark examiner can obtain evidence of the public’s understanding of the term from any competent source, including dictionaries, online databases, newspapers and other publications. Based on these sources, for example, an examiner determined that churrascos was a generic term for restaurant services.

Question 67

What kind of property is intellectual property?

Answer 67

Intangible property

Question 68

Tangible vs. Intangible Property

Answer 68

Tangible assets are physical; they include cash, inventory, vehicles, equipment, buildings and investments. Intangible assets do not exist in physical form and include things like accounts receivable, pre-paid expenses, and patents and goodwill.

Question 69

The product has to be manifested first before you can claim intellectual property. T or F.

Answer 69

True. The idea itself cannot be protected if there is no manifestation.

Question 70

Sec. 13, Art. XIV of the 1987 Constitution

Answer 70

Section 13. The State shall protect and secure the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such period as may be provided by law.

Question 71

Ginaya ko yung trademark mo. Is that an offense?

Answer 71

YES. Offense similar to stealing.

Question 72

Sec. 3 of RA 8293

Answer 72

Section 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.

if a Filipino receives an IP protection in a country that also has the same treaties that the Philippines are under, both countries shall extend the rights to the nationals who may be in their countries.

Question 73

My country is a party to that convention. But my corporation has no real establishment in the Philippines. But the case was filed in the Philippines seeking protection of my IPR. Can I avail of that protection? Wala ako registration or application for any trademark sa Philippines. But I feel offended because an entity in the Philippines is copying me.

Answer 73

Yes, pwede.

a foreign corporation not doing business in the Philippines needs no license to sue before Philippine courts for infringement of trademark and unfair competition

Question 74

Example of geographical indication

Answer 74

Example of geographical indication&raquo_space; Pangasinan known for tinapang bangus. Kunyari Pangasinan’s best name ng business mo. Pwede mo gamitin yun as long as taga-Pangasinan ka nga or Pangasinan nga galing yung product&raquo_space; medyo vague pa kasi ipapass pa lang yung act.

Question 75

Is there infringement in cases of parallel importation?

Answer 75

No.

Parallel import occurs when the original products (and not counterfeit products) are imported cheaply to a country without the authorisation of the product owner who has intellectual property (IP) rights over the products. Unlike black market goods, parallel import goods are legitimate.

Question 76

Madrid Protocol

Answer 76

The Madrid System is a convenient and cost-effective solution for registering and managing trademarks worldwide. File a single application and pay one set of fees to apply for protection in up to 124 countries. Modify, renew or expand your global trademark portfolio through one centralized system.

Question 77

Publication

Answer 77

Publication upon registration

within 30 days dapat. pero what if lampas 30 days na? yung opposition case? di na pwede opposition case pero may legal remedy pa. cancellation.

Question 78

Pwede opposition and cancellation sa bureau of trademarks. Sa bureau of patents ba, meron din?

Answer 78

WALA OPPOSITION pero meron cancellation. Kasi wala avenue for publication of examined patents. May third party evaluation after examination tapos yun if approved, ok na. So cancellation lang yung pwedeng remedy.

Question 79

Administrative complaints. May jurisdictional amount ba ang RTC?

Answer 79

Wala. Because of the nature of its case. Pati special commercial court kasi sya.

Question 80

Can a product guilty of infringement be subject to donation?

Answer 80

No. Baka kasi iresell nila

Question 81

Is business name different from a tradename?

Answer 81

Yes. Business name is the business or enterprise itself. Tradename refers to what distinguishes a company from the others.

TRADENAME - defined in the code. Name of your business or kung ano yung palagi nag-aappear sa collats. ex: mcdo or golden archies

BUSINESS NAME - registered name under DTI if single proprietorship but if corporation, sa SEC; may also constitute as your trade name.

Trademark

• pwede words lang (yung name)
• logo

Question 82

Are all tradenames business names?

Answer 82

No.

Question 83

When you go to hotels, meron sila specific smell. Does this fall under our definition of trademark?

Answer 83

No. Kasi visible sign nga sya sa law. Pero sa ibang bansa, yes. As long as distinct sya.

Question 84

How are marks acquired?

Answer 84

The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law.

Question 85

Marijuana name tapos pharmaceutical business. Can it be registered?

Answer 85

No. Why? Immoral mark.

Question 86

UN Mark. di pwede iregister. Tshirt na may mark ng Philippine flag or kahit variation ganun, can you have it registered?

Answer 86

No. SO BAKIT ANG DAMI? You can use and produce it but you cannot cause the registration. Kasi pag may registration, may exclusive ownership na eh.

Question 87

IP Right is a public right. T or F.

Answer 87

False. Private right.

Question 88

Ang daming fake na binebenta. Kung sino yung may IP Right, sila yung pwede magfile ng action eh. Private owners lang, wala say dyan yung mga NBI, IPO.

Answer 88

Uki.

Question 89

Requirements of application for Trademark/Trade Name

Answer 89

The application for the registration of the mark shall be in Filipino or in English and shall contain the following:

a. request for registration
b. name and address of the applicant
c. name of a State of which the applicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any
d. where the applicant is a juridical entity, the law under which it is organized and existing
e. the appointment of an agent or representative, if the applicant is not domiciled in the Philippines

f. where the applicant claims the priority of an earlier application, an indication of:
(i) The name of the State with whose national office the earlier application was filed or if filed with an office other than a national office, the name of that office,
(ii) The date on which the earlier application was filed, and
(iii) Where available, the application number of the earlier application;

g. where the applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which are in that color
h. where the mark is a three-dimensional mark, a statement to that effect
i. one or more reproductions of the mark, as 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 registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs
l. a signature by, or other self-identification of, the applicant or his representative

The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

Question 90

One (1) application may relate to several goods and/or services, whether they belong to one (1) class or to several classes of the Nice Classification. T or F.

Answer 90

True.

Question 91

Filing Date of Trademark

Answer 91

The filing date of an application shall be the date on which the Office received the following indications and elements in English or Filipino:

a. an express or implicit indication that the registration of a mark is sought
b. the identity of the applicant
c. indications sufficient to contact the applicant or his representative, if any
d. a reproduction of the mark whose registration is sought
e. the list of the goods or services for which the registration is sought

No filing date shall be accorded until the required fee is paid.

Question 92

No registration of a mark in the Philippines by a foreign person shall be granted until such mark has been registered in the country of origin of the applicant. T or F. [International Conventions and Reciprocity]

Answer 92

True.

Question 93

If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of _______ in which to reply or amend his application, which shall then be re-examined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner.

Answer 93

4 months

Question 94

An abandoned application may be revived as a pending application within ___________ from the date of abandonment, upon good cause shown and the payment of the required fee.

Answer 94

3 months

Question 95

The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations.

Answer 95

K.

Question 96

2 types of confusion

Answer 96

1. confusion of goods: where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other
2. confusion of origin or business: where, although the goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent

Question 97

Principle of Territoriality

Answer 97

According to the principle of territoriality, intellectual property rights are limited to the territory of the country where they have been granted. The principle of territoriality permits states to tailor their national intellectual property laws to suit their level of technological and economic development.

Question 98

Nestle vs Dy

Answer 98

FACTS:
Nestle is a foreign corporation organized under the laws of Switzerland which manufactures food products and beverages. Nestle owns the “NAN” trademark for its line of infant powdered milk products.

Dy, Jr. owns 5M Enterprises. He imports Sunny Boy powdered milk from Australia and repacks the powdered milk into 3 sizes of plastic packs bearing the name “NANNY”.

Nestle requested Dy, Jr. to refrain from using “NANNY” and to undertake that he would stop infringing the “NAN” trademark. Dy, Jr. did not act on Nestle’s request.
Nestle filed a complaint against Dy, Jr. for infringement before the RTC - Dumaguete City. Dy, Jr. filed a motion to dismiss alleging that the complaint did not state a cause of action.

RTC: Dismissed the complaint.
Nestle appealed to the Court of Appeals.
CA: Set aside the order and remanded the case to the trial court for further proceedings.
Nestle filed with the trial court a motion to transfer the case to the RTC - Cebu City, which was
designated as a special court for intellectual property rights.
RTC: Found Dy, Jr. liable for infringement.
Dy, Jr. appealed the decision to the Court of Appeals.
CA: Reversed the RTC decision and found Dy, Jr. not liable for infringement.
Nestle filed a motion for reconsideration.
CA: Denied the motion for lack of merit.
Hence, this petition.

ISSUE: Whether Dy, Jr. is liable for infringement? – Yes.

RULING:
The element of likelihood of confusion is the gravamen of trademark infringement. There are 2 types of confusion in trademark infringement: confusion of goods and confusion of business.

In Sterling Products International, Inc. v. Farbenfabriken Bayer Aktiengesellschaft, the Court distinguished the two types of confusion: Confusion of goods “in which event the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other.” In which case, “defendant’s goods are then bought as the plaintiff’s, and the poorer quality of the former reflects adversely on the plaintiff’s reputation.” Confusion of business: “Here though the goods of the parties are different, the defendant’s
product is such as might reasonably be assumed to originate with the plaintiff, and the public would then be deceived either into that belief or into the belief that there is some connection between the plaintiff and defendant which, in fact, does not exist.”

There are two tests to determine likelihood of confusion: dominancy test and holistic test. Dominancy Test 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. Holistic Test considers the entirety of the marks, including labels and packaging, in determining
confusing similarity. The focus is not only on the predominant words but also on the other features appearing on the labels. In the light of the facts of the present case, the Court holds that the Dominancy Test is applicable.

Applying the dominancy test in the present case, the Court finds that “NANNY” is confusingly similar to “NAN.” “NAN” is the prevalent feature of Nestle’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.
In determining the issue of confusing similarity, the Court takes into account the aural effect of the letters contained in the marks.

Question 99

Mcdonalds’s Corporation vs L.C. Big Mak Burger, Inc.

Answer 99

Doctrine:
To establish trademark infringement, the following elements must be shown: (1) the validity of plaintiff’s
mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its colorable imitation by the alleged infringer results in “likelihood of confusion.” Of these, it is the element of likelihood of confusion that is the gravamen of trademark infringement.

Facts:
Petitioner McDonald’s is the owner of the ‘Big Mac’ mark for its double-decker hamburger sandwich here and in the US.

Respondent L.C., a domestic corporation which operates fast-food outlets and snack vans applied for the registration of the ‘Big Mak’ mark for its hamburger sandwiches.

Petitioner opposed on the ground that ‘Big Mak’ was a colorable imitation of its registered ‘Big Mac’ mark for the same food products. Respondents denied there is colorable imitation and argued that petitioner cannot exclusively appropriate the mark ‘Big Mac’ because the word ‘Big’ is a generic and descriptive term. Petitioner filed a complaint for trademark infringement and unfair competition. The trial court found for petitioners. CA held otherwise.

Issue:

(1) Whether or not the word ‘Big Mac’ can be exclusively appropriated by petitioner;
(2) Whether or not there is colorable imitation resulting in likelihood of confusion;
(3) Whether or not there is unfair competition.

Ruling:
(1) YES. A mark is valid if it is “distinctive” and thus not barred from registration under Section 4 of RA 166.
However, once registered, not only the mark’s validity but also the registrant’s ownership of the mark is prima
facie presumed. The “Big Mac” mark, which should be treated in its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods, such as “Lite” for beer or “Chocolate Fudge” for chocolate soda drink. Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists, such as “Arthriticare” for arthritis medication. On the contrary, “Big Mac” falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents. As such, it is highly distinctive and thus valid. Significantly, the trademark “Little Debbie” for snack cakes was found arbitrary or fanciful.

(2) YES. In determining likelihood of confusion, jurisprudence has developed two tests, the dominancy test and the holistic test. The dominancy test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion. In contrast, the holistic test requires the court to consider the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. This Court, however, has relied on the dominancy test rather than the holistic test. The test of dominancy is now explicitly incorporated into law in Section 155.1 of the Intellectual Property Code which defines infringement as the “colorable imitation of a registered mark xxx or a dominant feature thereof.”
Applying the dominancy test, the Court finds that respondents’ use of the “Big Mak” mark results in likelihood of confusion. Aurally the two marks are the same, with the first word of both marks phonetically the same, and the second word of both marks also phonetically the same. Visually, the two marks have both two words and six letters, with the first word of both marks having the same letters and the second word having the same first two letters. In spelling, considering the Filipino language, even the last letters of both marks are the same. Clearly, 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, the two marks will likely result in confusion in the public mind. Certainly, “Big Mac” and “Big Mak” for hamburgers create even greater confusion, not only aurally but also visually. Indeed, a person cannot distinguish “Big Mac” from “Big Mak” by their sound. When one hears a “Big
Mac” or “Big Mak” hamburger advertisement over the radio, one would not know whether the “Mac” or “Mak”
ends with a “c” or a “k.”

(3) YES. The essential elements of an action for unfair competition are (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive the public and defraud a competitor. The confusing similarity may or may not result from similarity in the marks, but may result from other external factors in the packaging or presentation of the goods. The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown. Unfair competition is broader than trademark infringement and includes passing off goods with or without trademark infringement. Trademark infringement is a form of unfair competition. Trademark infringement constitutes unfair competition when there is not merely likelihood of confusion, but also actual or probable deception on the public because of the general appearance of the goods. There can be trademark infringement without unfair competition as when the infringer discloses on the labels containing the mark that he manufactures the goods, thus preventing the public from being deceived that the goods originate from the trademark owner. Respondents’ goods are hamburgers which are also the goods of petitioners. Since respondents chose to apply the “Big Mak” mark on hamburgers, just like petitioner’s use of the “Big Mac” mark on hamburgers, respondents have obviously clothed their goods with the general appearance of petitioners’ goods. There is actually no notice to the public that the “Big Mak” hamburgers are products of “L.C. Big Mak Burger, Inc.” and not those of petitioners who have the exclusive right to the “Big Mac” mark. This clearly shows respondents’ intent to deceive the public. We hold that as found by the RTC, respondent corporation is liable for unfair competition.

Question 100

Skechers USA, Inc. vs Inter Pacific Industrial Trading Corp.

Answer 100

FACTS:
In the course of Sketchers’ business, petitioner has registered the trademark “SKETCHERS” and trademark “S” (within an oval design) with the Intellectual Property Office (IPO).

The petitioner filed with Branch 24 of the Regional Trial Court (RTC) of Manila an application for the issuance of search warrants against an outlet and warehouse operated by respondents for infringement of trademark.

As a result of the raid, more than 6,000 pairs of shoes bearing the “S” logo were seized. Later, respondents moved to quash the search warrants, arguing that there was no confusing similarity between petitioner’s “Skechers” rubber shoes and its “Strong” rubber shoes.

ISSUE:
Whether Inter Pacific Industrial Trading Corp. is guilty of trademark infringement?

HELD:
Yes. The respondents were guilty of trademark infringement. The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause confusion. In determining similarity and likelihood of confusion, jurisprudence has developed tests-the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments.

In contrast, the Holistic or Totality Test necessitates a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words, but also on the other features appearing on both labels so that the observer may draw conclusion
on whether one is confusingly similar to the other.
Relative to the question on confusion of marks and trade names, jurisprudence has noted 2 types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other; and (2) confusion of business (source or origin confusion), where, although
the goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent.

Applying the Dominancy Test to the case at bar, this Court finds that the use of the stylized “S” by respondent in its Strong rubber shoes infringes on the mark already registered by petitioner with the IPO. While it is undisputed that petitioner’s stylized “S” is within an oval design, to this Court’s mind, the dominant feature of the trademark is the stylized “S,” as it is precisely the stylized “S” which catches the eye of the purchaser. Thus, even if respondent did not use an
oval design, the mere fact that it used the same stylized “S”, the same being the dominant feature of petitioner’s trademark, already constitutes infringement under the Dominancy Test.

As can be readily observed by simply comparing petitioner’s Energy model and respondent’s Strong rubber shoes, respondent also used the color scheme of blue, white and gray utilized by petitioner. Even the design and “wavelike” pattern of the midsole and outer sole of respondent’s shoes are very similar to petitioner’s shoes, if not exact patterns thereof. At the side of the midsole near the heel of both shoes are two elongated designs in practically the same location.
Even the outer soles of both shoes have the same number of ridges, five at the back and six in front. On the side of respondent’s shoes, near the upper part, appears the stylized “S,” placed in the exact location as that of the stylized “S” on petitioner’s shoes. On top of the “tongue” of both shoes appears the stylized “S” in practically the same location and size. Moreover, at the
back of petitioner’s shoes, near the heel counter, appears “Skechers Sport Trail” written in white lettering. However, on respondent’s shoes appears “Strong Sport Trail” noticeably written in the same white lettering, font size, direction and orientation as that of petitioner’s shoes. On top of the heel collar of petitioner’s shoes are two grayish-white semi-transparent circles. Not
surprisingly, respondent’s shoes also have two grayish-white semi-transparent circles in the exact same location.

Based on the foregoing, this Court is at a loss as to how the RTC and the CA, in applying the holistic test, ruled that there was no colorable imitation, when it cannot be any clearer and more apparent to this Court that there is colorable imitation. The dissimilarities between the shoes are too trifling and frivolous that it is indubitable that respondent’s products will cause confusion and
mistake in the eyes of the public. Respondent’s shoes may not be an exact replica of petitioner’s shoes, but the features and overall design are so similar and alike that confusion is highly likely.

Question 101

Shangri-la International Hotel Management Ltd., et. Al. vs. Developers Group of Companies, Inc.,

Answer 101

Facts:
At the core of the controversy are the “Shangri-La” mark and “S” logo.

On June 21, 1988, the petitioners filed with the Bureau of Patents, Trademarks and Technology Transfer (BPTTT) a petition, praying for the cancellation of the registration of the “Shangri-La” mark and “S” logo
issued to respondent Developers Group of Companies (DGCI) on the ground that the same were illegally
and fraudulently obtained and appropriated for the latter’s restaurant business. They also filed in the
same office a case, praying for the registration of the same mark and logo in their own names.

Until 1987 or 1988, the petitioners did not operate any establishment in the Philippines, albeit they advertised their hotels abroad since 1972 in numerous business, news, and/or travel magazines widely circulated around the world, all readily available in Philippine magazines and newsstands. They, too, maintained reservations and booking agents in airline companies, hotel organizations, tour operators, tour promotion organizations, and in other allied fields in the Philippines.

DGCI filed a complaint against petitioners Shangri-La International Hotel Management, Ltd. (SLIHM), alleging that for the last eight years, it has been the prior exclusive user in the Philippines of the mark and logo in question and the registered owner thereof for its restaurant and allied services.

In their Answer, petitioners accused DGCI of appropriating and illegally using the “Shangri-La” mark and “S” logo, adding that the legal and beneficial ownership thereof pertained to SLIHM and that the Kuok Group and its related companies had been using this mark and logo since March 1962 for all their
corporate names and affairs. They further claimed having used, since late 1975, the internationally-known and specially-designed “Shangri-La” mark and “S” logo for all the hotels in their hotel chain.

Issue:
Whether or not respondent’s prior use of the mark is a requirement for its registration.

Held:
Yes. Under the provisions of R.A. No. 166, as amended, which was in effect up to December 31, 1997, hence, the law in force at the time of respondent’s application for registration of trademark, the root of ownership of a trademark is actual use in commerce. Section 2 of said law requires that before a trademark can be registered, it must have been actually used in commerce and
service for not less than two months in the Philippines prior to the filing of an application for its registration.

Registration, without more, does not confer upon the registrant an absolute right to the registered mark.
The certificate of registration is merely a prima facie proof that the registrant is the owner of the registered mark or trade name. Evidence of prior and continuous use of the mark or trade name by another can overcome the presumptive ownership of the registrant and may very well entitle the former to be declared owner in an appropriate case. Ownership of a mark or trade name may be acquired not necessarily by registration but by adoption and use in trade or commerce. As between actual use of a mark without registration, and registration of the mark without actual use thereof, the former prevails over the latter. For a rule widely accepted and firmly entrenched, because it has come down through the years, is that actual use in commerce or business is a pre-requisite to the acquisition of the right of ownership.

While the present law on trademarks has dispensed with the requirement of prior actual use at the time
of registration, the law in force at the time of registration must be applied, and thereunder it was held that as a condition precedent to registration of trademark, trade name or service mark, the same must
have been in actual use in the Philippines before the filing of the application for registration. Trademark
is a creation of use and therefore actual use is a pre-requisite to exclusive ownership and its registration
with the Philippine Patent Office is a mere administrative confirmation of the existence of such right.

Question 102

Mang Inasal Philippines, Inc. vs IFP Manufacturing Corp.

Answer 102

Facts:
On May 26, 2011, IFO filed with IPO an application for registration of the mark “OK Hotdog Inasal Mark” in connection with goods class 30 of the Nice Classification.

Mang Inasal, Home of Real Pinoy Style Barbeque and Device (Mang Inasal Mark) was registered with IPO in 2006 and had been used for its chain of restaurants since 2003. Mang Inasal opposed the registration of
OK Hotdog Inasal Mark.

Mang Inasal averred that OK Hotdog Inasal Mark & Mang Inasal Mark share similarities both as to their
appearance and as to the goods or services which tend to suggest a false connection or association between said marks and would likely cause confusion on the part of the public.

Both marks feature the same dominant element, the word “INASAL” printed and stylized in the exact same manner. IPO-BLA (Bureau of Legal Affairs) dismissed Mang Inasal’s opposition. The Director General of IPO also dismissed the appeal of Mang Inasal. Court of Appeals denied the appeal as well.

Issue:
Whether OK Hotdog Inasal Mark is confusingly similar to Mang Inasal thus trademark application of the former must be denied.

Ruling:
Yes. OK Hotdog Inasal Mark is likely to cause deception or confusion on the part of the public.

The proscription of Sec 123.I (d) iii of RA 8293 provides that “a mark that is similar to a registered mark or a mark with an earlier filing or priority date (earlier mark) and which is likely to cause confusion on the part of the public cannot be registered with IPO, The OK Hotdog Mark is similar to Mang Inasal Mark. Using the dominancy test, OK Hotdog Inasal Mark is a colorable
imitation of Mang Inasal as it adopted one of its dominant and most distinctive features, the “INASAL” element. It is potential to project the deceptive and false impression that OK Hotdog Inasal is somehow linked or associated with Mang Inasal. The mere fact that there are other elements in OK Hotdog Inasal MArk that are not present in Mang Inasal MArk actually does little to change the probable public perception that both marks are linked and associated.

The goods for which the registration of the OK Hotdog Inasal Mark is sought are related to the services being represented by Mang Inasal Mark. The services of both marks deal with inasal and inasal-flavored products which ultimately fixes the relations between such goods and services. An average buyer who comes across the curls marketed under OK Hotdog Inasal
Mark is likely to be confused as to the true source of such curls. It is not unlikely that such buyers would be led into the assumption that the curls are of Mang Inasal and that the latter ventured into the snack manufacturing or has supplied flavorings for respondent’s product. Reputation of Mang Inasal would be taken advantage of and placed at the mercy of OK
Hotdog.

Question 103

Emerald Garments Mfg. vs Court of Appeals

Answer 103

FACTS:
On 18 September 1981, private respondent H.D. Lee Co., Inc., a foreign corporation organized under the laws of Delaware, U.S.A., filed with the Bureau of Patents, Trademarks & Technology Transfer (BPTTT) a Petition for Cancellation of Registration No. SR 5054 (Supplemental Register) for the trademark “STYLISTIC MR. LEE” used on skirts, jeans, blouses, socks, briefs, jackets, jogging suits, dresses, shorts, shirts and lingerie under Class 25, issued on 27 October 1980 in the name of petitioner Emerald Garment Manufacturing Corporation, a domestic corporation organized and existing under Philippine laws.

Private respondent averred that petitioner’s trademark “so closely resembled its own trademark, ‘LEE’ as previously registered and used in the Philippines, and not abandoned, as to be likely, when applied to or used in connection with petitioner’s goods, to cause confusion, mistake and deception on the part of the purchasing public as to the origin of the goods.”

The Director of Patents found private respondent to be the prior registrant of the trademark “LEE” in the Philippines and that it had been using said mark in the
Philippines. Moreover, the Director of Patents, using the test of dominancy, declared that petitioner’s trademark was confusingly similar to private respondent’s mark because “it is the word ‘Lee’ which draws the attention of the buyer and leads him to conclude that the goods originated from the same manufacturer. It is undeniably the dominant feature of the mark.”

ISSUE:
Whether or not petitioner’s trademark Sytlistic Mr. Lee, is confusingly similar with the private respondent’s trademark Lee or Lee-Rider, Lee-Leens and Lee-Sures

HELD:
NO. The petitioner’s trademark is not confusingly similar to that of the private respondent. The pertinent provision of R.A. No. 166 (Trademark Law) states thus:
Sec. 22. Infringement, what constitutes. — Any person who shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable imitation of any registered mark or trade-name in connection with the sale, offering for sale, or advertising of any goods,
business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or identity of such business; or reproduce, counterfeit, copy or colorably imitable any such mark or trade name and apply such reproduction, counterfeit, copy, or colorable imitation to
labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services; shall be liable to a civil action by the registrant for any or all of the remedies herein provided.

Proceeding to the task at hand, the essential element of infringement is colorable imitation. This term has been defined as “such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

In determining whether colorable imitation exists, jurisprudence has developed two kinds of tests — the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals and other cases and the Holistic Test developed in Del Monte Corporation v. Court of Appeals and its proponent cases.

If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or
deceive purchasers.

In determining whether the trademarks are confusingly similar, a comparison of the words is not the only determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other.

Applying the foregoing tenets to the present controversy and taking into account the factual circumstances of this case, we considered the trademarks involved as a whole and rule that petitioner’s “STYLISTIC MR. LEE” is not confusingly similar to private respondent’s “LEE” trademark.
Petitioner’s trademark is the whole “STYLISTIC MR. LEE.” Although on its label the word “LEE” is prominent, the trademark should be considered as a whole and not piecemeal. The dissimilarities between the two marks become conspicuous, noticeable and substantial enough to matter especially in the light of the following variables that must be factored in.

As we have previously intimated the issue of confusing similarity between trademarks is resolved by considering the distinct characteristics of each case. In the present controversy, taking into account these unique factors, we conclude that the similarities in the trademarks in question are not sufficient as to likely cause deception and confusion tantamount to
infringement.

For lack of adequate proof of actual use of its trademark in the Philippines prior to petitioner’s use of its own mark and for failure to establish confusing similarity between said trademarks, private respondent’s action for infringement must necessarily fail.

Question 104

Esso Standard Eastern vs Court of Appeals

Answer 104

FACTS:
Petitioner Esso Standard Eastern, Inc., a licensed corp. to do business in the Philippines, is engaged in the sale of petroleum products with its trademark ESSO.

Private respondent is a domestic corporation engaged in the manufacture and sale of cigarettes also using the trademark ESSO on its cigarettes.

Petitioner commenced a case for trademark infringement in the Court of First Instance of
Manila. Petitioner asserted that the use by the respondent of the same trademark ESSO on its cigarettes was being carried out for the purpose of deceiving the public as to its quality and origin to the detriment and disadvantage of its own products.

ISSUE: W/N there is trademark infringement on the part of UNITED CIGARETTE CORPORATION

RULING:
No. Implicit in the definition of infringement is the concept that the goods must be so related that there is a likelihood either of confusion of goods or business.

Definition: The law defines infringement as the use without consent of the trademark owner of any “reproduction, counterfeit, copy or colorable limitation of any registered mark or tradename in connection with the sale, offering for sale, or advertising of any goods, business or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or services, or Identity of such business; or reproduce, counterfeit, copy or colorably imitate any such mark or tradename and apply such reproduction, counterfeit, copy or colorable limitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services.”

Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores.

It is undisputed that the goods on which petitioner uses the trademark ESSO, petroleum products, and the product of respondent, cigarettes, are non-competing. The goods are obviously different from each other with “absolutely no iota of similitude.”

The mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind.

The public knows too well that petitioner deals solely with petroleum products that there is no possibility that cigarettes with ESSO brand will be associated with whatever good name petitioner’s ESSO trademark may have generated. Although petitioner’s products are numerous, they are of the same class or line of merchandise which are non-competing with respondent’s product of cigarettes, which as pointed out in the appealed judgment is beyond petitioner’s “zone of potential or natural and logical expansion.”
Another factor that shows that the goods involved are non-competitive and non-related is the
appellate court’s finding that they flow through different channels of trade:
● The (petitioner’s) products are distributed principally through gasoline service and lubrication stations, automotive shops and hardware stores.
● The (respondent’s) cigarettes are sold in sari-sari stores, grocery stores, and other small distributor outlets.
● (Respondent’s) cigarettes are even peddled in the streets
● (Petitioner’s) ‘gasul’ burners are not.

Finally, the general appearances of each mark as a whole, the possibility of any confusion is unlikely particularly the color and the background:
● The color of the “ESSO” used by the plaintiff for the oval design where the blue word ESSO is contained is the distinct and unique kind of blue which the plaintiff never used on any product where the combination of colors is similar to the label of the Esso cigarettes
● The plaintiff’s trademark comes all in either red, white, blue or any combination of the three colors and that not even a shade of these colors appears on the trademark of the appellant’s cigarette.
● The only color that the appellant uses in its trademark is green.
● The brand ESSO being used by the defendants and the trademark ESSO of the plaintiff is that the former has a rectangular background, while in that of the plaintiff the word ESSO is enclosed in an oval background.

Question 105

EXAMPLES OF RELATED PRODUCTS:
● Biscuits were held related to milk because they are both food products.
● Soap and perfume, lipstick and nail polish are similarly related because they are
common household items now a days.
● The trademark “Ang Tibay” for shoes and slippers was disallowed to be used for
shirts and pants because they belong to the same general class of goods.
● Soap and pomade although non- competitive, were held to be similar or to belong to
the same class, since both are toilet articles.
EXAMPLES OF UNRELATED PRODUCTS:
● But no confusion or deception can possibly result or arise when the name
“Wellington” which is the trademark for shirts, pants, drawers and other articles of
wear for men, women and children is used as a name of a department store.
● Also, there is quite a difference between soy sauce and edible oil.
● Also, product of ham vs. lard butter, cooking oil, abrasive detergents, polishing
materials and soap of all kinds = unrelated

Answer 105

Uki

Question 106

UFC Phils. vs Barrio Fiesta Mfg. Inc.

Answer 106

Facts: The first usage of the mark “PAPA” originated in 1954 by Neri Papa. The rights for the trademark were then transferred to Hernan Reyes by Papa himself in 1981. In 1983, he assigned the trademark to Acres & Acres, Heinz-UFC Philippines. Upon the expiration of the registry of trademark, UFC re-registered the design, as well as the registration of the trademark of “PAPA
Ketsarap”.

Fiesta Barrio registered their own sauce, this time, it was labeled as “PAPA Boy & Device”. Both parties tried to amicably settle the dispute regarding the trademark but to no avail. Fiesta Barrio went to the IPO-BLA to register their own trademark. IPO-BLA denied such motion. In their decision, the IPO-BLA concluded that there are distinct similarities between the two trademarks, with the most dominant features being the word “PAPA”.

Issue:
Whether or not the trademark sought to be registered by Barrio Fiesta infringes UFC’s intellectual property rights.

Ruling:
The court held in affirmative. In ruling, the Supreme Court stated that the dominant features of both trademarks would be confusingly similar to an average consumer. Respondents can provide an infinite amount of excuses as to why they think that there is no infringement. As established by their provided pieces of evidence, it is convincing that it is not the alleged hog in the middle of the logo, but the visible “PAPA” marking which stands as the dominant feature of their trademark.

Question 107

Taiwan Kolin Corp., Ltd. vs. Kolin Electronics Co., Inc.

Answer 107

FACTS:
Taiwan Kolin filed with the Intellectual Property Office (IPO), a trademark application for the use of “KOLIN” on a combination of goods, including colored televisions, refrigerators, window-type and split-type air conditioners, electric fans and water dispensers. Said goods fall under Classes 9, 11, and 21 of the Nice Classification (NCL).

The application would eventually be considered abandoned for Taiwan Kolin’s failure to respond to
IPO’s Paper No. 5 requiring it to elect one class of good for its coverage. However, the sam application was subsequently revived through another application, with petitioner electing Class 9 as the subject of its application, particularly: television sets, cassette recorder, VCD Amplifiers, camcorders and other audio/video electronic equipment, flat iron, vacuum cleaners, cordless handsets, videophones, facsimile machines, teleprinters, cellular phones and automatic goods vending machine. The application would in time be duly published.

Respondent Kolin Electronics Co., Inc. opposed petitioner’s revived application. As argued, the mark Taiwan Kolin seeks to register is identical, if not confusingly similar, with its “KOLIN” mark covering the following products under Class 9 of the NCL: automatic voltage regulator, converter, recharger, stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC.

Petitioner argued that it should be accorded the benefits of a foreign-registered mark under Secs. 3 and 131.1 of Republic Act No. 8293 (IP Code) since it has already registered the “KOLIN” mark in the People’s Republic of China, Malaysia and Vietnam, all of which are parties to the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights.

ISSUE: Whether petitioner is entitled to its trademark registration of “KOLIN” over its specific goods of
television sets and DVD players.

RULING: Yes, since identical marks may be registered for products from the same classification provided, they are not related to each other. Mere uniformity in categorization, by itself, does not automatically preclude the registration of what appears to be an identical mark. Verily, whether or not the products covered by the trademark sought to be registered by Taiwan Kolin, on the one hand, and those covered by the prior issued certificate of registration in favor of Kolin Electronics, on the other, fall under the same categories in the NCL is not the sole and decisive factor in determining a possible violation of Kolin Electronics’ intellectual property right should petitioner’s application be granted. It is hornbook doctrine that emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics.

The Supreme Court clarified that the same classification of goods does not necessarily mean that the goods are related. Petitioner’s products, i.e., televisions and DVD players, belong to audiovisiual
equipment, while that of respondent, consisting of automatic voltage regulator, converter, recharger,
stereo booster, AC-DC regulated power supply, step-down transformer, and PA amplified AC-DC,
generally fall under devices for controlling the distribution and use of electricity.

The Supreme Court reiterated that emphasis should be on the similarity of the products involved and not on the arbitrary classification or general description of their properties or characteristics. In resolving whether are related, several factors must be considered. Among these are:
a) the business (and its location) to which the goods belong;
b) the class of product to which the goods belong;
c) the product’s quality, quantity, or size, including the nature of the package, wrapper or container;
d) the nature and cost of the articles;
e) the descriptive properties, physical attributes or essential characteristics with reference to their form,
composition, texture or quality;
f) the purpose of the goods;
g) whether the article is bought for immediate consumption, that is, day-to-day household items;
h) the fields of manufacture;
i) the conditions under which the article is usually purchased; and
j) the channels of trade through which the goods flow, how they are distributed, marketed, displayed
and sold.

As mentioned, the classification of the products under the NCL is merely part and parcel of the factors to
be considered in ascertaining whether the goods are related. It is not sufficient to state that the goods
involved herein are electronic products under Class 9 in order to establish relatedness between the goods,
for this only accounts for one of many considerations.

Question 108

Dermaline Inc. vs Myra Pharmaceuticals, Inc.

Answer 108

Facts:
Dermaline filed before the IPO an application for registration of the trademark DERMALINE DERMALINE INC.

In response to the Opposition in the IPO publication, Myra Pharmaceuticals filed a verified opposition alleging that:
a. Trademark sought to be registered by Dermaline so resembles its trademark “DERMALIN”
b. Trademark will likely cause confusion, mistake and deception to the purchasing public
c. Dermaline’s use and registration of its applied trademark will diminish the distinctiveness and dilute the goodwill of Myra’s “DERMALIN”
3. Myra alleged the following identicality
a. The first 8 letters of the trademark
b. Pronunciation for both marks
c. Both marks have 3 syllables
d. Each syllable is identical in sound and appearance, even if the last syllable has
an extra “E”

Myra contends that its IPR is still valid and subsisting 10 years from June 8, 2006. Dermaline countered that

a. a simple comparison of the trademark would show that they have entirely different features and distinctive presentation
b. a comparison of the words is not the only determinant, but their entirety must be considered in relation to the goods to which they are attached, including the other features appearing in both labels.
c. its trademark is for health and beauty services from while Myra’s classified under medicinal goods against skin disorders.
6. The IPO-Bureau of Legal Affairs sustained the opposition of Myra. The ODG of IPO dismissed the consequent appeal. CA affirmed and upheld the rejection of Dermaline’s application for registration of trademark.

Issue:
Whether the IPO’s erred in rejecting Dermaline’s application for registration of trademark.

Ruling:
No, the IP was correct in rejecting DERMALINE’s application for registration of trademark. As correctly applied by the IPO in this case (Dominancy Test), while there are no set rules that can be deduced as what constitutes a dominant feature with respect to trademarks applied for registration; usually, what are taken into account are signs, color, design, peculiar shape or name, or some special, easily remembered earmarks of the brand that readily attracts and catches the attention of the ordinary consumer. While it is true that the two marks are presented differently the likelihood of confusion is still apparent. This is because they are almost spelled in the same way, and they are pronounced practically in the same manner. Thus, when an ordinary purchaser, for example, hears an advertisement of Dermaline’s applied trademark over the radio, chances are he will associate it with Myra’s registered mark. Dermaline’s stance that its product belongs to a separate and different classification from Myra’s products with the registered trademark does not eradicate the possibility of mistake on the part of the purchasing public to associate the former with the latter, especially considering that both classifications
pertain to treatments for the skin. Thus, the public may mistakenly think that Dermaline is connected to or associated with Myra, such that, considering the current proliferation of health and beauty products in the market, the purchasers would likely be misled that Myra has already expanded its business through Dermaline from merely carrying pharmaceutical topical
applications for the skin to health and beauty services.

Question 109

Fredco Manifacturing Co. vs. President and Fellows of Harvard College

Answer 109

Facts:
In 2005, Fredco Manufacturing Corporation filed a petition for cancellation before the Bureau of Legal Affairs of the Philippine Intellectual Property Office against the President and Fellows of Harvard College for the registration of its mark “Harvard Veritas Shield Symbol” under the Classes 16, 18, 21, 25 and 28 of the Nice International Classification of Goods an Services alleging that its predecessor-in-interest, New York Garments Manufacturing & Export Co., Inc., has been already using the mark “Harvard” since 1985 when it registered the same mark under Class 25 of the Nice Classification.

Thus, Harvard University is not a prior user of the mark in the Philippines and, therefore, has no right to register the mark. On the other hand, Harvard University claimed that the mark “Harvard” has been
adopted by Harvard University in Cambridge, Massachusetts, USA since 1639.

Furthermore, it alleges that the name and mark “Harvard” and “Harvard Veritas Shield Symbol” is registered in more than 50 countries, including the Philippines, and has been used in commerce since 1872. In fact, the name and mark is rated as one of the top brands of the world, being worth between $750M and $1B.

Issue:
W/N CA erred in affirming the decision of ODG-IPO

Held:
The Petition has no merit.
Although R.A. 166 Section 2 states that before a mark can be registered, it must have been actually used in commerce for not less than two months in the Philippines prior to filing an application for its registration, a trademark registered in a foreign country which is a member of the Paris Convention is allowed to register without the requirement of use in the commerce in the Philippines. Under Section 37 of R.A. 166, registration based on home certificate is allowed and does not require the use of the mark in the Philippines. Furthermore, R.A. 8293 Section 239.2 provides that marks which have been registered under R.A. 166 shall remain in force but shall be subject to the
provisions of R.A. 8293, which does not require the prior use of the mark in the Philippines.

Why the petition must fail?
1. The inclusion of the origin “Cambridge, Massachusetts” in Fredco’s mark connotes that Fredco is associated with Harvard University, which is really not true. The registration of Fredco’s mark should have been rejected.
2. The Philippines is a signatory of the Paris Convention, which provides for the protection against violation of intellectual property rights to all the member countries regardless of whether the trademarks is registered or not in a particular
country.

1980, Luis Villafuerte issued a memo to the Director of Patents ordering the latter to reject all pending applications of marks which involves a well-known brand around the world by applicants other than the owner of the mark.

1983, Roberto Ongpin affirmed the memo of Villafuerte by commanding the Director of Patents to implement measures which will comply with the provisions of the Paris Convention. He provided criteria that should be considered to any marks that are well-known in the Philippines or marks that belong to persons subject to the protection of the Convention.

Currently, well-known marks are protected under Section 123.1(e) of R.A. 8293. Additionally, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers provides for the criteria in determining a well-known mark. The use of the mark in commerce is not anymore required because it is enough that “any combination” of the criteria be met in order for a
mark to be well-known.

The ODG-IPO traced the origin of the mark “Harvard”. It ruled that Harvard University had been using the mark centuries before Fredco although the latter may have used the mark first in the Philippines before the former.
Likewise, CA ruled that the name and mark “Harvard” and “Harvard Veritas Shield Symbol” were first used in the United States since 1953 under Class 25.

Finally, the Supreme Court declared the mark “Harvard” to be well-known internationally, including the Philippines.