Week 10 Case 26 G.R. No. 114508 Flashcards
Inter Partes Case (IPC) No. 686: Barbizon Name Use
Inter Partes Case (IPC) No. 2049: Reapplication of Mirpuri, which was denied
What is the definition of a trademark in RA 166 (Trademark Law) and RA 8293 (Intellectual Property Code of the Philippines)?
A
“trademark” is defined under R.A. 166, the Trademark Law, as including “any word, name, symbol, emblem, sign or device or any combination thereof
adopted and used by a manufacturer or merchant to identify his goods and
distinguish them from those manufactured, sold or dealt in by others.”
This definition has been simplified in R.A. No. 8293, the Intellectual Property Code of
the Philippines, which defines a “trademark”, as “any visible sign capable of distinguishing goods.”
What are the five (5) functions of a trademark in Philippine jurisprudence?
What are the three (3) functions of a trademark according to modern authorities on trademark law?
In Philippine jurisprudence, the
functions of a trademark are:
1) to point out distinctly the origin or ownership of the
goods to which it is affixed;
2) to secure to him, who has been instrumental in
bringing into the market a superior article of merchandise, the fruit of his industry and skill;
3) to assure the public that they are procuring the genuine
article;
4) to prevent fraud and imposition; and
5) to protect the manufacturer
against substitution and sale of an inferior and different article of his product.
Meanwhile, modern authorities on trademark law view trademarks as performing three
distinct functions:
(1) they indicate origin or ownership of the articles to which they are attached;
(2) they guarantee that those articles come up to a certain
standard of quality; and
(3) they advertise the articles they symbolize.
What is the Paris Convention?
The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, is multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin;
and at the same time aims to repress unfair competition. The Convention is essentially a compact among various countries which, as members of the Union, have pledged to accord to citizens of the other member countries trademark and other rights comparable to those accorded their own citizens by their domestic laws for an effective protection against unfair competition. In
short, foreign nationals are to be given the same treatment in each of the member countries as that country makes available to its own citizens. Nationals
of the various member nations are thus assured of a certain minimum of international protection of their industrial property.
What does Article 6bis of the Paris Convention govern?
This Article governs protection of well-known trademarks.
Under the first paragraph, each country of the Union bound itself to undertake to refuse or cancel the registration, and prohibit the use of a trademark which is a reproduction, imitation or translation, or any essential part of which
trademark constitutes a reproduction, liable to create confusion, of a mark
considered by the competent authority of the country where protection is sought, to be well-known in the country as being already the mark of a person
entitled to the benefits of the Convention, and used for identical or similar goods.
Is Article 6bis of the Paris Convention a self-executing provision?
Yes.
It is a self-executing provision and does not require legislative enactment to give it effect in the member country. It may be applied directly by the tribunals and officials of each member country by the mere publication or proclamation of the Convention, after its ratification
according to the public law of each state and the order for its execution.
What is the essential requirement under Article 6bis?
The essential requirement under Article 6bis, is that the trademark to be protected must be “well-known” in the country where protection is sought. The power to determine whether a trademark is well-known lies in the “competent authority of the country of registration or use.” This competent authority would be either the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before a court.
What is the Villafuerte Memorandum?
In the Villafuerte Memorandum, the Minister of Trade instructed the Director of Patents to reject all pending applications for Philippine registration of signature and other world-famous trademarks by applicants other than their original owners or users. The Minister enumerated several internationally-known
trademarks and ordered the Director of Patents to require Philippine registrants of such marks to surrender their certificates of registration.
What is the Ongpin Memorandum?
In the Ongpin Memorandum, the Minister of Trade and Industry did not enumerate well-known trademarks but laid down guidelines for the Director of Patents to observe in determining whether a
trademark is entitled to protection as a well-known mark in the Philippines under Article 6bis of the Paris Convention. This was to be established through Philippine Patent Office procedures in inter partes and ex parte cases pursuant
to the criteria enumerated therein. The Philippine Patent Office was ordered to refuse application for, or cancel the registration of, trademarks which constitute a reproduction, translation or imitation of a trademark owned by a person who is a citizen of a member of the Union. All pending applications for registration of
world-famous trademarks by persons other than their original owners were to be rejected forthwith. The Ongpin Memorandum was issued pursuant to Executive Order No. 913 dated October 7, 1983 of then President Marcos which
strengthened the rule-making and adjudicatory powers of the Minister of Trade and Industry for the effective protection of consumers and the application of swift solutions to problems in trade and industry.
How is a trademark related to the psychological function of symbols?
Trademarks deal with the
psychological function of symbols and the effect of these symbols on the public
at large. Trademarks play a significant role in communication, commerce and
trade, and serve valuable and interrelated business functions, both nationally and internationally. For this reason, all agreements concerning industrial property, like those on trademarks and tradenames, are intimately connected with economic development.
What are the significance of industrial property?
1) Industrial property encourages investments in new ideas and inventions and stimulates creative efforts for the satisfaction of human needs.
They speed up transfer of technology and industrialization, and thereby bring about social and economic progress. These advantages have been
acknowledged by the Philippine government itself.
2) The Intellectual Property Code of the Philippines declares that “an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, it attracts foreign investments, and ensures market access for our products.” The Intellectual Property Code took effect on January 1, 1998 and by its express provision, repealed the Trademark Law, the Patent
Law, Articles 188 and 189 of the Revised Penal Code, the Decree on Intellectual Property, and the Decree on Compulsory Reprinting of Foreign Textbooks. The Code was enacted to strengthen the intellectual and industrial property system
in the Philippines as mandated by the country’s accession to the Agreement Establishing the World Trade Organization (WTO).
What is the World Trade Organization?
The WTO is a common institutional framework for the conduct of trade relations among its members in matters related to the multilateral and plurilateral trade agreements annexed to the WTO Agreement. The WTO framework ensures a
“single undertaking approach” to the administration and operation of all agreements and arrangements attached to the WTO Agreement. Among those
annexed is the Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPS. Members to this Agreement “desire to reduce distortions and impediments to international trade, taking into account the need to promote
effective and adequate protection of intellectual property rights, and to ensure
that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.” To fulfill these objectives, the members have agreed to adhere to minimum standards of protection set by several Conventions. These Conventions are: the Berne Convention for the Protection of Literary and Artistic Works (1971), the Rome Convention or the International Convention for the Protection of Performers, Procedures of
Phonograms and Broadcasting Organizations, the Treaty on Intellectual Property in Respect of Integrated Circuits, and the Paris Convention (1967), as
revised in Stockholm on July 14, 1967.
