Week 9 Case 23 G.R. No. 180677 Flashcards
Applied Test: Holistic Test (Totality Test)
RA 8293 The Intellectual Property Code of the Philippines
What does Section 155 of RA 8293 state about infringement of trademark?
Section 155 of R.A. No. 8293 defines the acts that constitute infringement of trademark, viz:
Remedies; Infringement. — Any person who shall, without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.
What are the elements of trademark infringement under the Intellectual Property Code?
The elements of the offense of trademark infringement under the Intellectual Property Code are, therefore, the following:
- The trademark being infringed is registered in the Intellectual Property Office;
- The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;
- The infringing mark is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services;
- The use or application of the infringing mark is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and
- The use or application of the infringing mark is without the consent of the trademark owner or the assignee thereof.
What is the gravamen of offense in trademark infringement?
The likelihood of confusion is the gravamen of the offense of trademark infringement.
What are the two (2) tests in determining the likelihood of confusion?
There are two tests to determine likelihood of confusion, namely: the dominancy test, and the holistic test.
How are the dominancy test and holistic test differentiated from each other, as discussed in the jurisprudential ruling in Societes Des Produits Nestle, S.A. v. Dy, Jr.?
The 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.
The 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.
What was the Court’s ruling in the test that is more applicable in trademark infringement case, as discussed in the jurisprudential ruling in McDonald’s Corporation v. Macjoy Fastfood Corporation?
In trademark cases, particularly in ascertaining whether one trademark is confusingly similar to another, no set rules can be deduced because each case must be decided on its merits. In such cases, even more than in any other litigation, precedent must be studied in the light of the facts of the particular case. That is the reason why in trademark cases, jurisprudential precedents should be applied only to a case if they are specifically in point.
In a similarly related case (Emerald Garment Manufacturing Corporation v. Court of Appeals), the Supreme Court used the holistic test in determining an alleged trademark infringement.
What similarities did that case have in this instant case as to warrant the application of the holistic test?
The holistic test is applicable here considering that the herein criminal cases also involved trademark infringement in relation to jeans products. Accordingly, the jeans trademarks of Levi’s Philippines and Diaz must be considered as a whole in determining the likelihood of confusion between them. The maong pants or jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were very popular in the Philippines. The consuming public knew that the original LEVI’S 501 jeans were under a foreign brand and quite expensive. Such jeans could be purchased only in malls or boutiques as ready-to-wear items, and were not available in tailoring shops like those of Diaz’s as well as not acquired on a “made-to-order” basis. Under the circumstances, the consuming public could easily discern if the jeans were original or fake LEVI’S 501, or were manufactured by other brands of jeans.
Why were confusion and deception remotely present in this case?
1) The products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary household items like catsup, soy sauce or soap which are of minimal cost. Maong pants or jeans are not inexpensive. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. In Del Monte Corporation v. Court of Appeals, we noted that:
…. Among these, what essentially determines the attitudes of the purchaser, specifically his inclination to be cautious, is the cost of the goods. To be sure, a person who buys a box of candies will not exercise as much care as one who buys an expensive watch. As a general rule, an ordinary buyer does not exercise as much prudence in buying an article for which he pays a few centavos as he does in purchasing a more valuable thing. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care….
2) Like his beer, the average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted.
3) Finally, in line with the foregoing discussions, more credit should be given to the “ordinary purchaser.” Cast in this particular controversy, the ordinary purchaser is not the “completely unwary consumer” but is the “ordinarily intelligent buyer” considering the type of product involved.
There were other remarkable differences between the two trademarks that the consuming public would easily perceive. Diaz aptly noted such differences, as follows:
The prosecution also alleged that the accused copied the “two horse design” of the petitioner-private complainant but the evidence will show that there was no such design in the seized jeans. Instead, what is shown is “buffalo design.” Again, a horse and a buffalo are two different animals which an ordinary customer can easily distinguish. x x x.
The prosecution further alleged that the red tab was copied by the accused. However, evidence will show that the red tab used by the private complainant indicates the word “LEVI’S” while that of the accused indicates the letters “LSJT” which means LS JEANS TAILORING. Again, even an ordinary customer can distinguish the word LEVI’S from the letters LSJT.
4) In terms of classes of customers and channels of trade, the jeans products of the private complainant and the accused cater to different classes of customers and flow through the different channels of trade. The customers of the private complainant are mall goers belonging to class A and B market group – while that of the accused are those who belong to class D and E market who can only afford Php 300 for a pair of made-to order pants.
5) Moreover, based on the certificate issued by the Intellectual Property Office, “LS JEANS TAILORING” was a registered trademark of Diaz. He had registered his trademark prior to the filing of the present cases. The Intellectual Property Office would certainly not have allowed the registration had Diaz’s trademark been confusingly similar with the registered trademark for LEVI’S 501 jeans.
What is the jurisprudential definition of an “ordinary purchaser,” as discussed in Dy Buncio v. Tan Tiao Bok?
The “ordinary purchaser” was defined as one “accustomed to buy, and therefore to some extent familiar with, the goods in question.” The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or the possibility of deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent between that and the other. The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase.
