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Intellectual Property Law > Trademarks > Flashcards

Trademarks Flashcards

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0
Q

Intellectual Property Rights

A 
Copyright and related rights
Trademarks and service marks
Geographical indications
Industrial design
Patents
Layout designs
Protection of undisclosed information
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1
Q

Intellectual Property

A

It refers to the creations of the mind, inventions, literary and artistic works, and symbols, names, images, and designs used in commerce.

Legal rights which result from intellectual activity in the industrial, scientific, literary and artistic fields.

NOTE: no intellectual property in mere ideas or mental conceptions

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2
Q

Copyright

A

Confined to literary or artistic works which are original creations im the literary or artistic domain which are protected from the moment of their creation

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3
Q

Trademarks/servicemarks

A

Any VISIBLE sign capable of distinguishimg the goods or service of an enterprise and it includes stamp and/or marked containers

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4
Q

Geographical indication

A

One which identifies the goods as originating from a particular place wherein the quality, reputation, or other characteristics are attributable to the geographical origin.

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5
Q

Industrial design

A

Any composition of lines, colors or 3D which gives special appearance to and can serves as pattern for an industrial product or handicraft.

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6
Q

Patents

A

Any technical solution of a problem in any field of human activity which is new and it must involve inventive steps and is industrially applicable.

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7
Q

Layout design

A

3D disposition for an integrated corcuit intended for manufacture.

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8
Q

Undisclosed information

A

Secret. Has commercial value. Sbject to reasonable steps.

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9
Q

Who are entitled to the benefit of IPL? Principle of reciprocity

A

1) national or resident of a country which is a party to any convention, treaty, or agreement relating to IPL or repression of unfair competition wherein the PHL is a signatory.
2) national or resident of a country which affords PHL citizens the benefits and/or rights under IPL even there is no existing treaty between PHL and that country.

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10
Q

Principle of reverse reciprocity

A

Any condition, restriction, limitation or dimunition as well as requirement, penalty, or similar burden imposed by a foreign country to our nationals, shall be reciprocally enforced against their nationals inside the PHL.

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11
Q

National treatment principle

A

If the foreign country is a signatory to a treaty wherein the PHL is also a signatory, such protectiom shall extend to their nationals inside our country.

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12
Q

Most favored nation rule

A

Whatever favor, allowance, considerations, privilege or immunity a member state grants to the national of another country, is immediately and unconditionally accorded to nationals of other member states.

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13
Q

JURISDICTION OVER DISPUTES (original)

A

1) Director General- disputes which relate to the terms of a license involving the author’s right to public performance or other communication of his work.
2) Bureau of Legal Affairs (opposition to application; cancellation of trademarks or patents; petitions for compulsory licensing; administrative complaints for violations of laws involving IP and the claims are not less than 200k.
3) Bureau of Documentation, Information and Technology Transfer (technology transfer payments)
4) Regular courts

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14
Q

APPELLATE JURISDICTION

A

1) Director General (PLDT)
2) CA (decisions by DG in his appellate jurisdiction over TLP)
3) Secretary of Trade and Industry (decisions of DG in AJ over BDITT and his OJ over terms of licensing re: author’s right to public performance or other communications of his work)

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15
Q

MARK

A

Any visible sign capable of distinguishing the goods (trademark) or services (servicemark) of an enterprise and shall includena stamped or marked container of goods.

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16
Q

Collective Mark

A

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

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17
Q

Tradename

A

The name or designation identifying or distinguishing an enterprise/business/vocation/occupation (Converse Ribber vs Universal Rubber Case)

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18
Q

Principles

A

The right to use the trademark is separate and distinct from the business using such mark.

The right to register belongs to the owner of such mark.

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19
Q

Functions of trademark

A

Advertise the goods/services
Guarantee the quality
Indicate the origin of the goods

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20
Q

Trademark vs Tradename

A

1) Trademark- its existence is distinct from the proprietor or juridical person doing business; designates the goods/services; it must be registered in order to be protected; maybe transferred even if the business is not transferred.
2) Tradename- attached to the proprietor or juridical entity doing business; identifies/distinguishes the enterprise; no need to be registered to be secured; change of ownership of the business also transfers tha tradename.

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21
Q

Basis of ownership of a mark/acquisition of trademark.

A

Prior use is no longer required by the law. However, in order that a person may be protected, there must be a registration of such mark with the IPO, in compliance with the IPC. Registration is necessary before one can file an action for infringement. Prior use is not requiredm but actual use after registration is mandatory.

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22
Q

Duration of Trademark

A

Ten years, subject to renewal for a period of another ten years.

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23
Q

WHAT MAY NOT BE REGISTERED?

A

1) immoral or deceptive matter or those which may disparage or falsely suggest a connection with persons (living or dead), institutions or belief, or bring them into contempt or disrepute.
2) flag or coat of arms or insignia of PHL or any of the political subdivisions or of any foreign nation or simulation thereof.
3) name, portrait or signature of a living person unless his consent is given/ name, portrait or signature of a deceased president of the PHL while the widow is still alive unless her consent is given. *written consent
4) identical with a registered mark owned by another with earlier filing priority (same goods or sevices/closely related goods or services/ nearly resembles the mark as to be likely to deceive or cause confusion.)
5) identical or confusingly similar or a translation of a well known mark whether or not registered in our jurisdiction as to identical or similar goods.
6) well know mark registered in our jurisdiction with respect to goods or services which are not similar but the goods or services indicates a relation between such goods/services and the owner of the mark AND the owner of the registered mark is damaged.
7) mislead the public as to the nature, quality, characteristics or geographical origin of the goods and services.
8) generic
9) customary or usual designation
10) description of the quality, quantity, intended purpose, value.
11) shapes
12) color unless defined by a given form
13) contrary to public order or morality.

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24
Q

Well Known Mark

A

A mark which a competent authority in the PHL designate as well known internationally and in the PHL.

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25
Q

Determinants DRRUMSLICEEE

A

1) degree of distinction
2) reputation acquired
3) registration’s extent
4) use (duration, extent, geographical area)
5) market share in the PHL and in other countries
6) successful protection of the rights
7) litigations outcome
8) identical marks validly registered (presence or absence)
9) commercial value attributed to the mark
10) exclusivity of registration
11) exclusivity of use
12) extent of use

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26
Q

Rights of a well known mark

A

1) right to be protected whether or not registered in the PHL
2) if registered, the protection extends to the goods and services which are not related to the goods or services registered provided that there is relation between the goods or services and the owner OR that the owner suffers damage.

27
Q

Rule on descriptive name, word or phrase

A

GR: descriptive name, word or phrase of the character, quality or composition is not registrable.

E: used in arbitrary or fanciful manner/ used as part of a coined mark/ used as part of a composite mark/ acquired secondary meaning.

28
Q

Doctrine of Secondary Meaning.

A

Exclusive and continuous use of a generic or descriptive marks for 5 years or more, in connection with the applicant’s goods or services in commerce and in the mind of the public indicates ansingle source to consumers. May be registered in this case.

29
Q

Composite Marks

A

Consists of two or more elements or combination of words, phrases, designs, symbols, or colors. They cannot be registered on their own, but when combined as long as a disclaimer is given, they can be registered as composite mark.

30
Q

Coined Marks

A

Can be registered. Contractions or coined marks. (Starbrite, gaslam)

31
Q

Use of identical marks.

A

GR: not allowed and not registrable.
E: when the goods and services are not identical nor related, it is already registrable.

ie. shell for cigarettes and not similar to the shell registered for gasoline.

32
Q

Application Requirements

A

1) request for registration
2) name and address of the applicant
3) state where he is a national, where he is domiciled, and in which he has real and effective industrial or commercial establishment
4) reproductions of the mark
5) transliteration and translation of the mark or some parts thereof
6) names of goods or services for which the registration is sought
7) signature or other self identification of the applicant or his representative
8) where the applicant is a juridical entity, the under which it is organized and existing
9) where the applicant is not domiciled in the PHL, the appointment of agent or representative
10) where the applicant claims a priority right (state where there is an application, date of application and application number if applicable)
11) applicant claims color, statement to that fact
12) mark is 3D, statement of the fact.

33
Q

Declaration for Non use

A

Filed within 3years from filing of the application or within the extension period if request is timely made.

34
Q

Non use is excused.

A

1) The applicant or registrant is prohibited from using the mark because of independent act (government intervention)
2) goods or services are within the same class as that of what is registered
3) sister company
4) license agreement

35
Q

Filing date

A

The date when the office received the following:

1) request for PHL registration
2) identity of the applicant
3) indications sufficient to contact the applicant
4) reproduction of marks
5) list of goods or services.

36
Q

Priority right

A

An application for registration of mark filed in the PHL by a person who qualifies under section3 and who has filed a prior application for registration in another country, the date of filing on that cpuntry shall be considered as the date of filing in the PHL provided that:

1) application is filed within 6mos from date of earliest application
2) the mark is allowed or that the applicant must have a bona fide commercial establishment.
3) applicant may not sue prior to the granting of the application except well known mark
4) priority right may not be based upon a foreign application that has been withdrawn, abandoned, or otherwise disposed of in the foreign country.

37
Q

Certificate of registration

A

Validity of registration
Ownership of the mark
Exclusive right to use

38
Q

Expansion of Business Rule

A

The protectiom extends to the goods or services related to those which are specified in the registration.

39
Q

Principle of Related Goods or Services

A

There is infringement by using similar marks on goods that are so related that the public may be or is actually deceived and misled.

40
Q

Doctrine of dilution

A

The infringement which does not confuse in the short period of time but tends to weaken the registered mark in the long run.

41
Q

Opposition

A

It may be filed by any person who is damaged or believes to be damaged by the registration of the mark upon payment of the fee.

42
Q

Form of opposition

A

In writing
Verified
Specified grounds
Statement of facts

43
Q

Time to file

A
  • Within 30 days from the last publication.
  • Within 2mos from filing if not verified.
  • Extended for 1month and maximum period which does not exceed 4mos.
44
Q

Loss of trademark rights

A

1) by sale or assignment
2) abandonment or non use
3) acquiesence
4) estoppel
5) closure of business
6) same manner and circumstances in property rights
7) mark becomes descriptive

45
Q

Cancellation of registration

A

Any person who is damaged or believes that he will be damaged, may file for an application for the cancellation of registration

46
Q

Grounds

A

1) 5years- damage or will damage the petitioner
2) at any time- becomes generic, abandonment, illegal or fraudulent registration, used to misrepresent the goods/services, non use for uninterrupted period of 3 years without legitimate reasons

47
Q

Remedies of a losing party

A

1) MR- 15 days from receipt

2) appeal to DG of IPO

48
Q

CIVIL ACTION FROM INFRINGEMENT

A

1) use in commerce of any reproduction, copy, colorable mitation of registered mark or dominant feature thereof (SODA)
2) mere reproduction, counterfeiting, copying, colorable imitation in connection with (SODA)
NOTE: mere intention is enough. THERE MIST BE CONFUSION/DECEIPT IN THE MINDS OF THE ORDINARY PURCHASERS

49
Q

Factors to consider in confusingly similar goods

A

1) value of the goods
2) common trade channel
3) type of consumers
3) necessary expansion of business rule

50
Q

Elements of infringement

A

1) registered mark (IPO)
2) trademark is reproduced, counterfeited, copied, colorably imitated
3) used in SODA
4) cause confusion to the purchasers
5) lack of consent from the owner
6) no infringement in imported medicines

51
Q

Types of confusion

A

Confusion of goods/services

Confusion of business or origin

52
Q

Colorable Imitation

A

Such similarity in form, contents, words, sound, meaning, special arrangement or general appearance of the trademark or tradename with that of another trademark or tradename which causes confusion to ordinary purchasers.

53
Q

Idem Sonans Rule

A

Two trademarks used on identical or similar goods may be confusing if they have similar sound or pronunciation.

54
Q

Test on confusion of goods or services

A

1) Dominancy test- dominant features

2) Holistic test- totality or entirety

55
Q

Infringement

A

Use of the trademark by any person without the consent of the registered owner.

56
Q

Remedies

A

1) action for damages- owner of registered mark may recover damages from any person who infringes his right. However, the registered owner may only sue infringements subsequent to the registration. Except: well known mark.
2) injunction
3) impounding- sales invoices and other documents
4) double damages- discretion of the court, mislead the public.
5) court order for disposal or destruction
6) criminal action
7) administrative sanctions

57
Q

Measure of damages

A

1) the amount that the registered owner would have earned had his rights were not infringed OR the actual amount earned by the infringer
2) if the amount cannot be ascertained, the court shall award damages as to reasonable percentage based upon the infringer’s gross sales or the value of services the trademark was used.

58
Q

Limitations of action for infringement

A

1) right of prior user- registered owner cannot file a case for infringement against a person who has used the mark prior to him and in GF, and before the filing of the application or priority date. Except when the prior user continued the use.
2) relief against the printer- right against the future printing only.
3) relief against the newspaper- against future issues only

59
Q

Possible defenses ofnthe infringer

A

1) mark cannot be registered
2) generic
3) registration was fraudulently secured
4) abandoned mark
5) the plaintiff is guilty of laches or estoppel or consented the use
6) the trademark is not confusingly similar
7) superior right as prior user

60
Q

Unfair competition

A

Employment by a person of deception or any other means contrary to good faith by which he passes off the goods manufactured as those of another.

Act of passing off or attempt to pass off.

61
Q

Goodwill

A

The advantage or benefit which is acquired by an establishment or business in consequence of the general patronage and encouragement which it receives from habitual or constant customers on account of its local position, reputation for skill or affluence.

62
Q

Guilty of unfair competition

A

1) any person who is selling goods (general appearance of goods of another/clothes the goods with such appearance as tondeceive the public)
2) any person who by artifice, device or employs any other means calculated to induce the false belief that such person is offering the services of another which is already identified in the mind of the public.
3) any person who shall make false statement in the course of trade or commint any other act contrary to good faith of a nature calculated to discredit goods, service or business of another

63
Q

Infringement vs Unfair Competition

A

1) Infringement- unauthorized use, fraudulent intent is not necessary, prior registration is a requisite, limites scope, same class of goods or services must be involved
2) Unfair Competition- passing off or attempt to pass off one’s goods as that of another, fraudulent intent is essential, registration is not a prerequisite, wider scope, different classes of goods or services may be involved

64
Q

False Designation

A

Any person who uses a word, term, name, symbol, device, combination, or false designation in origin, false or misleading description of fact, or false or misleading representation of fact, in connection with commerce, which causes confusion or mistake as to the affiliation, connection or association of such person with another. OR commercial advertising or promotion, misrepresents the nature, characteristics, qualities or geographic origin of his goods or that of another’s. liable for civil action for damages and injunction.

Intellectual Property Law (1 decks)

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