2.

CHAPTER I
INTRODUCTION AND DEFINITION OF TERMS

3.
4.
5.

Section 121. Definitions

TRADEMARK
Is a sign capable of distinguishing the goods or services produced or
provided by one enterprise from those of other enterprises.
Any distinctive words, letters, numerals, drawings, pictures,
shapes, colors, logotypes, labels or combinations used to
distinguish goods and services may be considered a trademark. (In
some countries, advertising slogans)

The roles of trademarks in the economic development of a state

Trademarks play a significant role in communication, commerce and

trade, and serve valuable and interrelated business functions, both
nationally and internationally.

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.

Why give protection to trademarks?

The protection of trademark is the laws recognition of the
psychological function of symbols. A trade-mark is a merchandising
shortcut which induces a purchaser to select what he wants, or what
he has been led to believe what he wants. The owner of a mark
exploits this human propensity by making every effort to impregnate
the atmosphere of the market with the drawing the power of a
congenial symbol.

The function of trademarks

Main Function: To enable consumers to identify a product of a particular
company so as to distinguish it from other identical or similar products
provided by competitors
Mirpuri v. CA:
1. To point out distinctly the origin or ownership of the goods to
which it is affixed

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
To assure the public that they are procuring the genuine article
To prevent fraud and imposition
To protect the manufacturer against substation and sale of an
inferior and different article as his product

Modern authorities:
1. They indicate origin or ownership of the articles to which they
are attached
2. They guarantee that those article come up to a certain standard
of quality
3. They advertise the articles they symbolize

Kinds of marks/trademark:
1. Trademark marks used to distinguish certain goods as those
produced by a specific enterprise (sale of insurance)
2. Service Marks marks used to distinguish certain services as those
provided by a specific enterprise (financial, banking, travel,
advertising or catering)
3. Well-known marks marks that are considered to be well-known in
the market and as a result benefit from stronger protection
Are marks that are considered to be well-known by the
competent authority of the country where protection for the
mark is sought
Main Purpose for stronger protection: to prevent companies
from free-riding on the reputation of a well-known mark
and/or causing damage to its reputation or goodwill
4. Collective marks marks used to distinguish goods or service
produced or provided by members of an association
5. Certification marks marks used to distinguish goods or services
that comply with a set of standards and have been certified by a
certifying authority
May be used by anybody who complies with the standards
defined by the owner of the certification mark
Philippines Intellectual Property Code does not consider
certification marks as a form of trademark

Device
In U.S. trademark law, the term device was included in the
definition of trademark.
In the Philippines, the words device is not used in defining a
trademark; but nevertheless used the word device in some sections
of the IPC.
Is not used as referring to a mechanical or structural device but an
artistic figure, a design used as a heraldic bearing or as an emblem,
badge, trade mark, or the like.
In intellectual property law, it is a catch-all term which usually refers
to the word or sign comprising the trademark

Word Mark; slogans

Slogan short words or phrases that capture a companys brand
essence, personality and positioning and distinguish the firm from
competitors
Slogans may be registered as trademarks provided it is capable of
distinguishing the goods or services
Examples of slogans registered with the IPO:
1. Finger Lickin Good
2. Just Do It
3. A Diamond is Forever
4. We Find Ways
5. Hari ng Padala
o

Slogan Infringement
Slogans are entitled to trademark protection
Slogans are common advertising tools but they are also used
in establishing corporate identity
Also called tag-lines
Protected as word marks
The infringing slogan need not be an exact or actual copying
of the prior slogan. The use of an identical slogan is not
required for infringement, it is sufficient if there be a
likelihood of confusion

Sounds and Scent (Smell) as trademarks

GR: Sound and smell are not considered as possible trademarks under
the Philippine law.
Reason: Section 121.1 of the IPC requires a mark to be any visible
sign. (These two has been referred to as nonconventional trademarks)
EXP: It must be capable of sight.
(For academic purposes: As sound marks cannot be perceived visually, the
graphical representation of a sound mark has to define clearly what
constitutes the mark as applied for, so that the precise subject of the protection
afforded by the registered mark can be determined)
Sound marks signs consisting of a sound which are capable of
distinguishing the goods or services of one undertaking from those of other
undertakings and are capable of being represented graphically are registrable
as trademarks

Three Dimensional (3D) representations as marks

Registrable under Section 121.1 of the IPC

Components of a trademark
The IPC simply describes a trademark as a visible sign without
expressly defining what comprises that visible sign
Nevertheless, under the U.S. Trademark Law and jurisprudence, a
trademark is composed of words, symbols and/or devices. Thus,
it is these words, symbols and/or devices that should be distinctive

Family of trademarks
A business entity may register different trademarks for its variety of
goods, products or services. This is often termed as family of
trademarks. (burgers in McDo)

Filewrapper
Is the record of documentation relating to the trademark application
for registration
Used only in Section 164 and usually used with patent application

Marked container of goods

See Sections 169-170

Trademarks under the Civil Code:

CHAPTER 3
TRADE-MARKS AND TRADE-NAMES
Art. 520. A trade-mark or trade-name duly registered in the proper
government bureau or office is owned by and pertains to the person,
corporation, or firm registering the same, subject to the provisions of special
laws. (n)
Art. 521. The goodwill of a business is property, and may be transferred
together with the right to use the name under which the business is
conducted. (n)
Art. 522. Trade-marks and trade-names are governed by special laws. (n)

CHAPTER II
ACQUISITION AND REGISTRATION OF MARKS

A. REGISTRABILITY
Section 123. Registrability

Can the trademark be registered?

Who determines registrability?
It is initially determined by the Trademark Examiner
Factors to be considered by the Examiner:
1. The degree of similarity between the proposed trademark and a
registered trademark in:
a. Appearance
b. Pronunciation of the words used
c. Verbal translation of the pictures or designs involved
d. Suggestion
2. The intent of the application in adopting the proposed trademark
3. The relation in use and manner of marketing between the goods
and services marketed by the applicant and those marketed by the
other
4. The degree of care likely to be exercised by purchasers

The requirement of distinctiveness

The IPC does not use the word distinctive or distinctiveness as a
requirement for trademark registration. Instead, it uses the phrase
capable of distinguishing
The element of distinctiveness is also implied in Section 123 that
marks cannot be registered if it is identical with, or confusingly
similar to another mark
Thus, distinctiveness is an essential element of a trademark.

Marks which can be registered; strong marks

Those that are not excluded in the IPC

Through jurisprudence, the following have been identified as strong

marks and therefore may be registered:
1. Coined or Fanciful words invented words without any intrinsic
or real meaning (considered as inherently distinctive)
2. Arbitrary marks words that have a meaning that has no relation to
the product they advertise
3. Suggestive marks marks that hint at one or some of the attributes
of the product (Example: Sunny)

Marks which can be registered; Doctrine of secondary meaning

Acquiring Secondary Meaning
Is when a mark is initially nondistinctive and thus not a protectable
mark may acquire distinctiveness and become a trademark through
use (Section 123.2)

Weak and Strong Marks pertains to its distinctiveness

Weak Mark or absolute grounds for rejecting trademark registration:
1. Generic marks
2. Indications that have become customary to trade
3. Descriptive terms
4. Deceptive or misleading trademarks the test as to whether it
is deceptive is how it would be regarded by the majority of
purchasers at the time that the question arises and the fact that
an ignorant person might be deceived.
5. Relating to particular persons
6. Marks considered to be contrary to public order or morality
7. Marks which falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols;
RIGHT OF PUBLICITY
8. Flags, armorial bearings, official hallmarks and emblems of
states and international organization

9. Shapes
Shapes which consist exclusively of the following may not be
registered:
a. The shape which results from the nature of the goods
themselves
b. The shape of goods which is necessary to obtain a
technical result
c. The shape which gives substantial value to the goods
10. Colors
GR: A color alone may not be registered as a mark
EXP: Defined by a given form
COLOR-DEPLETION RULE
The registrability of color alone is prohibited because
eventually all types of colors will be exhausted of
exclusive acquisition is permitted
11. Geographical marks
*A mere geographical name or term per se is not prohibited.
What are prohibited are the use of geographical names in:
a. Misdescriptive Manner (Section 123.1 (g)) the likelihood of
goods orginitaing in the areas in question seemed most
remote (example: Kem for playing cars because it was a
river in Russia; Antarctica for softdrinks)
b. Descriptive Manner (Section 123.1 (j))
GR: Geographically descriptive marks may not be
registered
EXP:
1. When the mark has acquired a secondary
meaning
2. When the geographical mark is not actually
used in descriptive sense meaning his goods
and services do not originate with or are not
connected with the geographical area and it
does not suggest that the goods come from the
place or region named by the mark

12. Identical with a registered mark (Section 123.1(d))

FIRST-TO-FILE RULE (Section 123.1(d))
A mark cannot be registered if it is identical with a registered
mark belonging to a different proprietor or a mark with an
earlier filing or priority date
GR: Where two marks, belonging to different proprietors, are identical
or nearly resemble each other such as to likely deceive or cause
confusion and the marks pertain to the same goods or services or are
closely related goods or services, the mark first filed for registration
would prima facie be the superior registration
EXP:
1. The prior registration was made in bad faith
2. Prior registration was preceded by a prior use in good
faith and in the concept of an owner by another
3. It would conflict with a claim to priority right
*Unlike Torrens Title registration, a trademark registration is not indefeasible
and merely establishes presumptive ownership.
13. Marks identical with a Well-known Mark (Section 123.1(e and f))
Rules:
1. If identical or similar goods regardless of whether the wellknown mark is registered or used in the Philippines, the
application mark will not be allowed registration
2. If not identical or similar goods the registration still not
allowed if:
a. There is a connection between the goods or services of
the junior and senior users of the well-known mark; and
b. The interest of the senior user are likely to be damaged;
and
c. The well-known mark is registered in the Philippines
Rule 102. Criteria for determining whether a mark is well-known. In
determining whether a mark is well-known, the following criteria or any
combination thereof may be taken into account:
(a) the duration, extent and geographical area of any use of the mark, in
particular, the duration, extent and geographical area of any
promotion of the mark, including advertising or publicity and the
presentation, at fairs or exhibitions, of the goods and/or services to
which the mark applies;
(b) the market share, in the Philippines and in other countries, of the
goods and/or services to which the mark applies;

(c)
(d)
(e)
(f)
(g)
(h)
(i)
(j)
(k)
(l)

the degree of the inherent or acquired distinction of the mark;

the quality-image or reputation acquired by the mark;
the extent to which the mark has been registered in the world;
the exclusivity of registration attained by the mark in the world;
the extent to which the mark has been used in the world;
the exclusivity of use attained by the mark in the world;
the commercial value attributed to the mark in the world;
the record of successful protection of the rights in the mark;
the outcome of litigations dealing with the issue of whether the mark
is a well-known mark; and,
the presence or absence of identical or similar marks validly
registered for or used on identical or similar goods or services and
owned by persons other than the person claiming that his mark is a
well-known mark.

Most important test in determining a well-known mark according to Section

123.1 (e): 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
*Well-known mark must be well-known internationally and in the Philippines

may provide for a period within which the prohibition of use must be
requested.
(3) No time limit shall be fixed for requesting the cancellation or the
prohibition of the use of marks registered or used in bad faith.

14. Express Provision of Law

The name Red Cross and its emblem may not be appropriated by any
other entities (Section 16 of P.D. No. 1264)
15. Protection Treaties
The Nairobi Treaty on the Protection of the Olympic Symbol requires
the treaty members to refuse or to invalidate the registration as a
mark and to prohibit by appropriate measures the use, as a mark or
other sign, for commercial purposes, of any sign consisting of or
containing the Olympic symbol
*Sometimes, there are marks which are weak, because they are not
inherently distinctive, but because of use or popularization they have
acquired distinctiveness. This is called acquiring distinctiveness or
ACQUIRING SECONDARY MEANING

*Not all foreign marks are well-known marks

Dissociation from a registered mark is not acceptable

Without meaning to be harsh, that a self-respecting person does not
remain in the shelter of another but builds one of his own

A trademark registered under the Copyright Law is given no protection

Can ordinary objects be registered as a trademark design?

GR: The image of an ordinary object may not be exclusively appropriated
as a trademark design
EXP: If it has been used in a distinctive style

Protection of Well-known marks under the Paris Convention (Art.6bis)

Article 6bis
Marks: Well-Known Marks
(1) The countries of the Union undertake, ex officio if their legislation so
permits, or at the request of an interested party, to refuse or to cancel the
registration, and to prohibit the use, of a trademark which constitutes a
reproduction, an imitation, or a translation, liable to create confusion, of a
mark considered by the competent authority of the country of registration or
use to be well known in that country as being already the mark of a person
entitled to the benefits of this Convention and used for identical or similar
goods. These provisions shall also apply when the essential part of the mark
constitutes a reproduction of any such well-known mark or an imitation
liable to create confusion therewith.
(2) A period of at least five years from the date of registration shall be allowed
for requesting the cancellation of such a mark. The countries of the Union

4.

B. PROCEDURAL MATTERS ON REGISTRATION

5.
6.
7.

Section 122. How marks are acquired

How trademarks are acquired?

Trademarks are acquired through registration (Section 122) and
subsequent actual use (Section 124.2)

Declaration of Actual Use alone, without proof of actual use, would not be
sufficient to establish actual use.

Abandonment of Prior Actual Use in Commerce

Under the old Trademark Law, actual use was required before
registration
Under the present system, the absence of actual use does not
become a hindrance to registration, a trademark may be registered
on the basis of mere intent to use (INTENT-TO-USE or ITU
trademark application in the U.S. trademark practice)

The requirement of good faith in registration

Indications of bad faith:
1. When the facts showed that the prior registrant was already aware of
the use of the mark and logo by another (Example: where the prior
registrant had previously stayed in the hotel bearing the same mar
and logo)
2. Failure to explain choice of similar mark

8.

Dealing with foreign marks; International trademark registration

Rule 201. International Conventions and Reciprocity. (a) 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 the Intellectual Property Code.
(b) The registration of a mark of such person shall be independent of the
registration in the country of origin and the duration, validity or transfer in the
Philippines of such registration shall be governed by the IP Code and these
Regulations.
The Convention of Paris for the Protection of Industrial Property
The underlying principle is that foreign nationals should be given
the same treatment in each of the member countries as that
country makes available to its citizen

Registration is not compulsory, but is highly advisable as registration

provides the exclusive right to prevent unauthorized use of the
trademark

Importance of trademark registration: Gives the owner the exclusive right

to prevent other from marketing identical or similar products under the
same or a confusingly similar

Benefits of trademark registration:

1. Ensure that consumers can distinguish between products
2. Enable companies to differentiate their products
3. Are a marketing tool and the basis for building a brand image
and reputation

May be licensed to provide a direct source of revenue through

royalties
Are crucial component of franchising agreements
May be a valuable business asset
Encourage companies to invest in maintaining or improving
product quality
May be useful for obtaining financing

National Treatment; Territoriality Principle

foreign nationals and foreign marks cannot be discriminated
upon
EXP: well-known marks

Philippine membership in international trademark treaties:

1. The WIPO Convention
2. The Paris Convention
3. The Agreement on Trade-Related Aspects of Intellectual Property
Rights

On-line Registration
Trademark registration through the website of the IPO was
authorized under the Office No. 125 of 2004
1st: Applicants are required to file the following online:
1. Submit a duly accomplished electronic application form
2. Transmit an electronic reproduction of the mark following
the specifications
3. Pay the applicable filing fees
2nd: The applicant will receive an electronic confirmation from the bank:
The application shall be considered filed on the date indicated in the
confirmation receipt, provided all the requirements are complied with
and subject to the provisions on priority right if convention priority is
claimed
*If the applicant does not receive a confirmation receipt from the
bank, the application and payment shall be deemed not to have been
received by the IPO

There is no legal duty to conduct a search before commencing use or

applying for registration
TRADEMARK SEARCH is a systematic hunt for the existence of any
registered or unregistered trademark that is the same or similar to the
mark you want to register and that would likely result in customer
confusion

Same procedure for domestic and foreign applicants the IPO does not
provide for different procedures for domestic and foreign applicants. The
procedure is therefore the same for all nationalities applying before the
IPO.

MADRID PROTOCOL
What is it?
MADRID PROTOCOL or MADRID SYSTEM
Exemplifies and embodies a unified international trademark system
whereby a trademark owner (of one member country) can seek the
protection of its trademark in up to 81 member countries under the
Madrid Protocol.
What is the process?
1. Application of trademark by a member of the Madrid Protocol
2. The applicant will designate the countries to which the mark would
be effected
3. If the trademark office of a designated country does not refuse
protection within a specified period (18 months), the protection of the
mark is the same as if it had been registered by that Office.
4. When a refusal of protection may result from an opposition to the
granting of protection, such refusal may be notified to the
International Bureau after the expiry of the 18-month time limit
What are the benefits?

A trademark will be protected in several countries by simply filing

one application

An international mark so registered is equivalent to an application or

a registration of the same mark effected directly in each of the
countries designated by the applicant.

It simplifies greatly the subsequent management of the mark, since it

is possible to record subsequent changes or to renew the registration
through a single procedural step.
Who may file?
A member of the Madrid Protocol
Where to file?
In his own national or regional trademark office (IPO in the
Philippines)
Who administers the Madrid Protocol?
It is administered by the International Bureau of World Intellectual
Property Organization (WIPO) located in Geneva, Switzerland

Validity?
Registration of a mark at the International Bureau is effected for ten
(10) years. (Article 6 of Madrid Protocol)
Until when may it be revoked?
The protection resulting from the international registration, whether or not it
has been the subject of a transfer, may no longer be invoked if, before the
expiry of five (5) years from the date of the international registration,
the basic application or the registration resulting therefrom, or the basic
registration, as the case may be, has been withdrawn, has lapsed, has been
renounced or has been the subject of a final decision of rejection, revocation,
cancellation or invalidation, in respect of all or some of the goods and
services listed in the international registration.
The same applies if
(i)
an appeal against a decision refusing the effects of the basic
application,
(ii)
an action requesting the withdrawal of the basic application or
the revocation, cancellation or invalidation of the registration
resulting from the basic application or of the basic registration,
or
(iii)
an opposition to the basic application results, after the expiry of
the five-year period, in a final decision of rejection, revocation,
cancellation or invalidation, or ordering the withdrawal, of the
basic application, or the registration resulting therefrom, or the
basic registration, as the case may be, provided that such
appeal, action or opposition had begun before the expiry of the
said period.
The same also applies if the basic application is withdrawn, or the
registration resulting from the basic application or the basic registration is
renounced, after the expiry of the five-year period, provided that, at the time
of the withdrawal or renunciation, the said application or registration was
the subject of a proceeding referred to in item (i), (ii) or (iii) and that such
proceeding had begun before the expiry of the said period. (Article 6 of Madrid
Protocol)
Renewal (Article 7 of Madrid Protocol)

Any international registration may be renewed for a period of ten

(10) years from the expiry of the preceding period, by the mere
payment of the basic fee and of the supplementary and
complementary fees.

Renewal may not bring about any change in the international

registration in its latest form.
Six (6) months before the expiry of the term of protection, the
International Bureau shall, by sending an unofficial notice, remind
the holder of the international registration and his representative, if
any, of the exact date of expiry.
Subject to the payment of a surcharge fixed by the Regulations, a
period of grace of six months shall be allowed for renewal of the
international registration.

CHAPTER III
REGISTRATION DISPUTES
Section 134. Opposition
Section 135. Notice and Hearing

Inter Partes Proceedings

is a proceeding in which more than one party is involved. While one
of the parties must be an applicant or registrant, the remaining party
or parties need not necessarily be either.
4 Kinds:
1. Opposition Proceedings
2. Cancellation Proceedings
3. Interference Proceedings (now abolished)
4. Concurrent Use Proceedings (not applicable under the IP
Code)
Inter Partes Cases:
1. Oppositions to applications for the registration of
trademark or service mark;
2. Petitions to cancel the registrations of trademarks or
service marks;
3. Petitions to cancel invention patents, utility model
registrations, industrial design registrations, or any
claim of parts of a claim, and registrations of topography
or layout design of integrated circuits based on Rule
402, paragraphs (a) and (b) of the Layout Design
(Topography) of Integrated Circuits Regulations; and
4. Petitions for Compulsory Licensing
The concept of re judicata and its requisite elements apply to inter partes
proceedings in the IPO.
The Trademark Opposition
Who may file a Notice of Opposition: Any person who believes that he
would be damaged by the registration of a mark
When: Upon payment of the required fee and within thirty (30) days
after the publication
Such Notice of Opposition shall be:
a. In writing;
b. Verified by the oppositor or by any person on his behalf
who knows the facts;

c.
d.

e.

Specify the grounds on which it is based and include a

statement of the facts relied upon;
Copies of certificates of registration of marks registration
of marks registered in other countries or other
supporting documents mentioned in the opposition shall
be filed therewith, together with the translation in
English, if not in the English language;
Filed within 30 days after publication in the Official
Gazette,
but for good cause shown and upon payment of the
required surcharge, the time for filing an opposition
may be extended by the Director of Legal Affairs,
who shall notify the applicant of such extension. The
Regulations shall fix the maximum period of time
within which to file the opposition (maximum: 120
days)

RULE 7
OPPOSITION TO APPLICATION FOR REGISTRATION OF MARKS
Section 1. (a) Who may oppose -- Any person who believes that he would be
damaged by the registration of a mark may, upon payment of the required fee
and within one month after the publication of the application, file with the
Bureau a notice of opposition to the application.
(b) Notice of opposition -- The notice of opposition shall be in writing and
verified by the opposer or any person on his behalf who knows the facts, and
shall specify the grounds on which it is based and include a statement of the
facts relied upon.
Section 2. (a) Notice and Hearing -- Upon the filing of an opposition and
payment of the required fee, the Bureau shall serve notice of the filing on the
applicant, and of the date of the hearing thereof upon the applicant and the
oppositor and all other persons having any right, title or interest in the mark
covered by the application, as appear of record in the Office.
(b) Notice in case of unverified notice of opposition -- The Bureau may
notify the applicant of the fact of filing of an unverified opposition. The
applicant, after payment of the required fee, may request for a copy of the
unverified opposition.
(c) The notice to answer will be sent to the applicant/respondent upon the filing
of the verified opposition.

(d) Dismissal of opposition -- The opposition will be dismissed motu propio upon
failure of the opposer to verify, in person or by any person on his behalf who
knows the facts, the notice of opposition within two months from date of filing
of the unverified opposition.

A covering letter does not determine the filing date of the pleading.
A covering letter is not part of the pleading. What is important is the
fact that the pleading reached the official designated by law to receive
it within the prescribed time, regardless of the mistake in the
indorsement or covering letter which is not a necessary element of
filing.
A misfiled pleading is not the same as a pleading not filed. (The Clorox
Company v. Director of Patents)

Each case must be scrutinized according to its peculiar circumstances,

such that jurisprudential precedents should only be made to apply if
they are specifically in point.

The opposition to a registration and the petition for cancellation are

alternative proceedings which a party may avail of according to his
purposes, needs, and predicaments, and the petitioner has the right to
choose which remedy it deems best for the protection of its rights.

In all inter partes proceedings in the Office, the equitable principles of

laches, estoppel, and acquiescence where applicable, may be considered
and applied. (Section 230)

The representative or lawyer filing a motion for extension to files a notice

of opposition need not have a special authorization or a special power of
attorney.

The evidence presented before the BLA need not be formally offered.
As long as the petition is verified and the pieces of evidence
consisting of the affidavits of the witnesses and the original of other
documentary evidence are attached to the petition and properly
marked, these shall be considered as the evidence of the petitioner.
(E.Y. Industrial Sales, Inc. v. Shen Dar Electricity and Machinery Co.)

Section 3. Contents of the Notice of Opposition. -- Copies of certificates of

registration of marks registered in other countries or other supporting
documents mentioned in the opposition shall be filed with the opposition
together with the translation in English, if not in the English language.
Section 4. Extension of Period for Filing the Verified Opposition. -- For
good cause shown and upon payment of the required surcharge, the time 24
for filing the verified opposition may be extended for an additional one month
by the Director upon the written request of the opposer. Whenever an extension
is granted, the Director shall cause the applicant to be notified thereof. The
petition for extension shall be filed in triplicate. However, in no case shall the
period within which to file the verified opposition exceed four months from the
date of release of the IPO Gazette publishing the mark being opposed. If the
last day for filing of the notice of opposition or the verified opposition falls on a
Saturday, Sunday, holiday, non-working holiday as may be declared by the
President of the Philippines or on a day when the Office or the Bureau is closed
for business as may be declared by the Director General, the same shall be
moved to the immediately following working day.
Section 5.Filing of an Opposition in a Form Other than the Original -The party filing the opposition may submit an opposition in a form other than
the original such as a facsimile copy or photocopy provided: (1) that such fax,
photocopy or other form complies with the requirements of these Regulations
and is filed within the period to file the notice of opposition or the verified
opposition, or any extension thereof,
(2) that the original copy of the verified opposition is filed within one month
from submission of the fax, photocopy or other form and,
(3) that the original copy of the verified opposition is filed within the maximum
period of four months counted from the date of release of the IPO Gazette
publishing the mark being opposed. In all cases, the notice to answer shall be
sent to the applicant only upon the filing of the original copy of the verified
opposition.

Dismissal of opposition does not follow that application should be

granted (Lim Koh v. Kaynee Co.).

CHAPTER IV
THE CERTIFICATE OF REGISTRATION
Section 136. Issuance and Publication of Certificate
Section 137. Registration of Mark and Issuance of a Certificate to the
Owner or his Assignee

Process of Issuance of Certificate of Registration

(Rule 703, The Trademark Regulation)

When is a Certificate of Registration issued?

1. When no opposition is filed within thirty (30) days after the
publication for opposition
The Director of Bureau of Legal Affairs shall certify
to that effect within:
If no extension: two (2) months from the
date of release of the IPO Gazette where
the application was published, or
If an extension was granted and the
application is not deficient in any formal
manner: within fifteen (15) days from
the deadline of submission of the
opposition
The mark shall be deemed registered the date after
the expiration of the 30-day period for filing of
opposition, or if the applicant is deficient in any
formal matter, on the date the applicant has fully
complied with the formal deficiencies. (The applicant
shall complete such deficiency within 2 months from
mailing date of the notice, otherwise the application
shall be declared abandoned)
2.

When an opposition if filed a mark shall be considered registered:

The opposition was dismissed: within 30
days after receipt by opposer of a copy of the
decision or final order of the Director of the
BLA dismissing the opposition
If there is a motion for reconsideration but
which was denied: the date of registration
shall be the date after the expiration of the

balance of the period (30 days) counted from

the said partys receipt of a copy of the order
denying the motion
If
the
opposition
is
sustained
but
subsequently reconsidered: the mark shall
be deemed registered 30 days after receipt
by the opposer of the order granting the
motion for reconsideration.
If decision of BLA is appealed to the Director
General: the mark shall be deemed
registered 15 days after receipt by the both
parties of the decision or final order, unless
ordered otherwise by the Court of Appeals

* The issuance of the certificate of registration shall be published in the IPO

Gazette and shall be entered on the records of the Office.

The Single Registry System

The Intellectual Property Code no longer provides for a Supplemental

Register

The IPO adopts a single registry system

Marks registered in the Supplemental Register will remain in force

but are no longer subject to renewal
Certificate of Registration (Section 138)
Prima facie evidence of the validity of the registration
It is not indefeasible like a Torrens Title over a real property
Trademark registration is no guarantee for protection
It would appear that a Certificate of Registration could
become indefeasible only upon a court affirmation after a
challenge has been made

The Related Goods Doctrine

means goods, although not specified in the certificate registration,
but are related to the goods specified in the certificate of
registration would be covered by the trademark protection extended
for that certificate of registration

No Exclusivity for Unrelated Goods

The right to a trademark is a limited one, in the sense that others
may use the same mark on unrelated goods.
GR: The mere fact that one person has adopted and used a trademark by
others on article of a different description.
Rationale: In unrelated goods, there is no likelihood of
confusion
EXP: Well-known marks
When are goods related to each other?
Factors to be considered in determining whether goods are related:
1. The business (and its location) to which the goods belong
2. The class of product to which the goods belong
3. The products quality, quantity, or size, including the nature of
the package, wrapper or container
4. The nature and cost of the articles
5. The descriptive properties, physical attributes or essential
characteristics with reference to their form, composition, texture
or quality
6. The purpose of the goods
7. Whether the article is bought for immediate consumption, that
is, day-to-day household items
8. The fields of manufacture
9. The conditions under which the article is usually purchased and
10. The channels of trade through which the goods flow, how they
are distributed, marketed, displayed and sold
Test: the similarity of the products involved and not the arbitrary
classification or general description of their properties or characteristics
The Trademark Regulation Provisions:
Rule 800. Rights conferred. (a) The owner of a registered mark shall have
the exclusive right to prevent all third parties not having the owners consent
from using in the course of trade identical or similar signs or containers for
goods or services which are identical or similar to those in respect of which the
mark is registered where such use would result in a likelihood of confusion.
In case of the use of an identical sign for identical goods or services, a
likelihood of confusion shall be presumed.

(b) The exclusive right of the owner of a well-known mark which is registered
in the Philippines, shall extend to goods and services which are not similar to
those in respect of which the mark is registered: 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.
Rule 806. Certificate of registration; records and copies in registered
cases. A certificate of registration of a mark shall be prima facie evidence of
the validity of the registration, the registrants ownership of the mark, and of
the registrants exclusive right to use the same in connection with the goods or
services and those that are related thereto specified in the certificate.
After a mark or trade name or name or other mark of ownership has been
registered, the statement, the drawings, and all documents relating to the case
are subject to general inspection, and copies will be furnished upon payment of
the required fees.
Section 139. Publication of Registered Marks; Inspection of Register
Section 140. Cancellation upon Application by Registrant; Amendment
or Disclaimer of Registration

Period of trademark protection

10 years from the date of issuance of the certificate, renewable for a
period of 10 years at a time.
The requirement of CONTINUED USE
The continued protection for the mark would depend on its
continued use.
Consequence of not continuously using the mark: the registration
may be cancelled

CHAPTER V
RENEWAL OF REGISTRATION
Section 146. Renewal
CHAPTER 3. RENEWAL OF REGISTRATION
Rule 917. Request for renewal.
A certificate of registration may be
renewed for periods of ten (10) years at its expiration upon payment of the
prescribed fee and upon filing of a request. The request shall contain the
following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant or his successor-ininterest, hereafter referred to as the right holder;
(c) The registration number of the registration concerned;
(d) The filing date of the application which resulted in the registration
concerned to be renewed;
(e) Where the right holder has a representative, the name and
address of that representative;
(f) The names of the recorded goods or services for which the renewal
is requested or the names of the recorded goods or services for
which the renewal is not requested, grouped according to the
classes of the Nice Classification to which that group of goods or
services belongs and presented in the order of the classes of the
said Classifications; and
(g) A signature by the right holder or his representative.
(h) In case there has been material variation in the manner of display,
five (5) sets of the new labels must be submitted with the
application.
Rule 918.
When to file request for renewal. Such request shall be in
Filipino or English and may be made at any time within six (6) months before
the expiration of the period for which the registration was issued or renewed,
or it may be made within six (6) months after such expiration on payment of
the additional fee herein prescribed.
Rule 919. Jurisdiction of the Examiner. The Examiner shall have original
jurisdiction over applications for renewal registration, and his decisions, when
final, are subject to appeal to the Director under the conditions specified in
these Regulations for appeals to the Director from the final decisions of the
Examiners in respect of applications for registration. If the Office refuses to

renew the registration, it shall notify the registrant of his refusal and the
reasons therefor.
Rule 920. Need for appointing a resident agent. If the registrant,
assignee or other owner of the mark which is the subject of a petition for
renewal registration is not domiciled in the Philippines, and if the petition for
renewal is being filed by a person who is not his representative or residentagent of record, the power of attorney appointing the person filing the petition
as the representative of the registrant must be filed and, upon payment of the
required fee, must be recorded before the Office can act upon the petition for
renewal.
Rule 921. Renewal of prior Act registration; use and proof thereof,
required. Marks registered under Republic Act No. 166 shall remain in force
and effect but shall be deemed to have been granted under the IP Code and
shall be renewed within the time and manner provided for renewal of
registration by these Regulations; provided, that marks whose registration
have a remaining duration as of January 1, 1998 of more than six and onehalf (6 ) years shall be required to submit the declaration and evidence of
actual use prescribed in these Regulations within one (1) year following the
tenth and fifteenth anniversaries of the registration or renewal registration
under Republic Act No. 166; provided, further, that marks whose registrations
have a remaining duration of six and one-half (6 ) years or less may no
longer be subject to the requirement of declaration and evidence of use but
shall be renewed within the time and in the manner provided for renewal of
registration by these Regulations and, upon renewal, shall be reclassified in
accordance with the Nice Classification. The renewal shall be for a duration of
ten (10) years. Trade names and marks registered in the Supplemental
Register under Republic Act No. 166 whose registration, including any
renewal thereof, was subsisting as of January 1, 1998 shall remain in force
but shall no longer be subject to renewal.
Rule 922. Prior Act certificate of registration to be surrendered. With
the application for the renewal of a registration made under Republic Act No.
166 the certificate of registration to be renewed must be surrendered to the
Office, if the official copy of such certificate of registration is not in the files of
the Office.
After he has surrendered the certificate of registration granted under Republic
Act No. 166, the applicant for renewal may, if he so desires, obtain a certified
copy thereof, upon payment of the usual fees.

Rule 923. Refusal of renewal registration; appeal to the Director. The

application for renewal may be refused by the Examiner for any valid reason.
The application for renewal may then be completed or amended in response to
the refusal, or the case may be appealed to the Director if the refusal has
become final.
Rule 924. Certificate of renewal of registration. The Office may issue a
certificate of renewal of registration in all cases where the request for renewal
is approved and the registrant requests in writing and pays the required fee for
the issuance of said certificate. The certificate of renewal of registration shall
contain the number of the certificate of registration and the mark being
renewed, the date of original issuance thereof, the duration of the renewal
registration, all the data required to be contained in a certificate of registration
provided in these Regulations including any limitation contained in the order of
the Director approving the renewal of the registration.

CHAPTER VI
ASSIGNMENT, TRANSFER & LICENSING

succession may be evidenced by the deed of merger or by any document

supporting such transfer.

Section 149. Assignment and Transfer of Application and Registration

Section 150. License Contracts

Rule 908.
Recordal of assignment or transfer. Assignments and
transfers shall have no effect against third parties until they are recorded at
the Office. Assignments and transfers of registration of marks shall be
recorded at the Office on payment of the prescribed fee; assignment and
transfers of applications for registration shall, on payment of the same fee, be
provisionally recorded, and the mark, when registered, shall be in the name of
the assignee or transferee.

The trademark as a transferable property

The trademark can be a valuable asset that can be sold, transferred
or assigned just like any other asset
The Intellectual Property License
License
Is a permission to do something that, without the license, would
be an infringement of IP.
Licensing Agreement
Is a partnership between an intellectual property right owner
(licensor) and another who is authorized to use such rights
(licensee) in exchange for an agreed payment (fee or royalty).
Category:
a. Technology License Agreement
b. Trademark Licensing and Franchising Agreement
c. Copyright License Agreement
Trademark Regulation Provisions:
CHAPTER 2. RECORDING OF ASSIGNMENTS OF REGISTRATION OR
ANY OTHER INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED
MARK, INCLUDING LICENSES; DIVISION OF REGISTRATION.
Rule 906. Assignment and transfer of application and registration.
An application for registration of a mark, or its registration, may be assigned or
transferred with or without the transf*er of the business using the mark.
Such assignment or transfer shall, however, be null and void if it is liable to
mislead the public particularly as regards the nature, source, manufacturing
process, characteristics, or suitability for their purpose, of the goods or services
to which the mark is applied.
Rule 907. Form of assignment or transfer. (a) The assignment of the
application for registration of a mark, or of its registration, shall be notarized
and require the signature of the applicant, registrant or the assignee of record
in case of subsequent assignment. Transfers by mergers or other forms of

Rule 909. Assignment, other instruments affecting the registration, or

license, and translation, to be submitted in duplicate. The original
document of assignment, other instrument or license and its translation,
together with a signed duplicate thereof, shall be submitted. After recordal, the
Office shall retain the signed duplicate, and return the original to the party
filing the instrument with a notation of the fact of recording.
Rule 910. Date of receipt of instrument to be recorded considered its
date of recording. The date of recording of an assignment, other document
or license is the date of its receipt at the Office in proper form and accompanied
by the full recording fee.
Rule 911. A new certificate of registration must be issued to assignee.
Upon written request of an assignee of record, and upon payment of the
required fee, a new certificate of registration for the unexpired period of the
registration must be issued to the assignee.
Rule 912. Action may be taken by assignee of record in any proceeding
in Office. Any action in any proceeding in the Office which may or must be
taken by a registrant or applicant may be taken by the assignee to the
exclusion of the original owner, registrant, applicant or earlier assignee,
provided the assignment has been recorded. Unless such assignment has
been recorded, no assignee will be recognized to take action.
Rule 913.
Clearance of Trademark License Agreement prior to
recordal.
Any trademark license agreement shall be applied for clearance with the
Documentation Information and Technology Transfer Bureau (DITTB) of the
Office and shall be recorded only upon certification by the Director of the DITTB
that the agreement does not violate Sections 87 and 88 of the IP Code.

3.
Assignment of Trademarks
Assignment
Is a transfer of the ownership of the mark
It should be distinguished from a license which is the contract
giving another, the licensee, the right to use the mark while the
ownership of the mark is retained by the licensor.
Deed of Assignment
Sufficient proof of ownership of the trademark

Authorization to use a trademark may be limited to a particular

product
Example: Otto authorize another (licensee) to use the
trademark for jeans only.
Effect of use of trademark Otto other than jeans
like jackets, shirts, etc.:

The licensee violated the grant of authority

by illegally manufacturing and distributing
aside from jeans.

The unauthorized use of trademark would

discredit the products of the trademark
owner

The trademark owner may then validly

revoke the authority of the licensee to use
the trademark Otto.

Trademark Royalties
Royalty
Is a payment for the use of intellectual property
The use or the right or privilege to use in the Philippines any
copyright, patent, design or model, plan, secret formula or
process, goodwill, trademark, trade brand, or other like property
or right (NIRC)
Basis of royalty computation:
1. Contingent based on percentage of the sales, revenues or profit
2. Fixed Amount may be a fixed amount payable up-front or
immediately in a lump sum amount or it can be on a staggered
basis payable on a pre-identified period of time

Other schemes
a. Minimum payable amount
b. Milestone payments
c. Other payments based upon agreement of the parties

Tax implications on lease or use of intellectual property

A VAT is imposed upon the sale, lease or use of intellectual
properties (10% of the gross receipts)
Trademark valuation
Trademark valuation methodologies:
1. Income approach to valuing trademarks
2. Market approach to valuing trademarks
3. Cost approach to valuing trademarks
*Other approaches to valuing trademarks are considered where appropriate
although the income approach generally drives trademark valuations with
the market and cost approaches acting as sense checks and support.

Rules under voluntary licensing

CHAPTER VIII
CANCELLATION AND NON-USE
Section 151. Cancellation

Loss of Protectibility of Trademarks

A trademark may lose its protectibility when:
1. The trademark becomes generic;
2. The trademark is abandoned;
3. Its registration was obtained fraudulently or contrary to
the Code;
4. The trademark is being used to misrepresent the source
of the goods or services;
5. Non-use
The trademark becomes generic
Section 151.1 (b). A registered mark shall not be deemed to be the
generic name of goods or services solely because such mark is also
used as a name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for determining
whether the registered mark has become the generic name of goods or
services on or in connection with which it has been used.
This process of a distinctive mark becoming generic is the
opposite of a nondistinctive mark acquiring distinctiveness under the
doctrine of secondary meaning.
The trademark is abandoned
2 Kinds of Abandonment:
1. Involuntary Abandonment
a. Failure to satisfy the filing requirements (e.g. failure
to file a DAU)
b. Failure to respond to an official action (e.g. citation
of confusingly marks, the order declaring the
application as abandoned which has become final)
c. Failure to pay fees
How a trademark is considered abandoned: (Rule 703,
Allowance of application and issuance of certificate of
registration)

The application is deficient in

any formal matter relating to
form, documents, or other
papers necessary for the
preparation and issuance of
the certificate of registration or
for the publication of such
registration, or the payment
for the issuance of certificate
of registration has not been
paid

The Examiner
shall send a
notice thereof
to the
applicant

If not completed
within two (2)
months from
mailing date of
the notice, the
application shall
be considered
abandoned

Revival of Abandoned Trademark (Section 133.4)

How: Upon good case shown and the payment of the
required fee
When: Within three (3) months from the date of
abandonment
2. Voluntary Abandonment
a. Express Abandonment of Application - An
application may be expressly abandoned by filing
with the Bureau a written declaration of
abandonment signed by the applicant himself or by
the assignee of record (Rule 619)
b. Voluntary Abandonment of Trademark If the
registered owner of the mark without legitimate
reason fails to use the mark within the Philippines,
or to cause it to be used in the Philippines by virtue
of a license during an uninterrupted period of three
(3) years or longer.
* To work an abandonment, the disuse must be
permanent and not ephemeral; it must be intentional
and voluntary, and not involuntary or even compulsory.
Example: Non-use of a trademark on an article of
merchandize due to legal restrictions or circumstances
beyond ones control is not to be considered as an
abandonment.

Its registration was obtained fraudulently or contrary to the Code

When to file: At any time
* The question whether or not the registration of the
trademark had been obtained with the fraud and the false
representation becomes necessary and important only when there is
a finding of similarity between the contesting trademarks, and in
order that prof of fraud might produce cancellation it is necessary
that it be coupled with a showing that the label trademarks of the
parties are similar and that the maintenance of one trademark would
work to the damage of the other. (American Cyanamid Company v.
Director of Patents)

Trademark Regulation provisions:

Rule 802. Non-use of a mark when excused. (a) Non-use of a
mark may be excused if caused by circumstances arising
independently of the will of the trademark owner. Lack of funds shall
not excuse non-use of a mark.
(b) The special circumstances to excuse non-use in affidavits of nonuse shall not be accepted unless they are clearly beyond the control of
the registrant such as the prohibition of sale imposed by government
regulation.
Rule 803. Use of a mark in a different form. The use of the mark
in a form different from the form in which it is registered, which does
not alter its distinctive character, shall not be ground for cancellation
or removal of the mark and shall not diminish the protection granted to
the mark.

Non-use of a mark
Section 152. Non-use of a Mark when Excused.
152.1. Non-use of a mark may be excused if caused by
circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-use of a
mark.
152.2. The use of the mark in a form different from the form in
which it is registered, which does not alter its distinctive
character, shall not be ground for cancellation or removal of
the mark and shall not diminish the protection granted to the
mark.
152.3. The use of a mark in connection with one or more of the
goods or services belonging to the class in respect of which the
mark is registered shall prevent its cancellation or removal in
respect of all other goods or services of the same class.
152.4. The use of a mark by a company related with the
registrant or applicant shall inure to the latters benefit, and
such use shall not affect the validity of such mark or of its
registration: Provided, That such mark is not used in such
manner as to deceive the public. If use of a mark by a person
is controlled by the registrant or applicant with respect to the
nature and quality of the goods or services, such use shall
inure to the benefit of the registrant or applicant.
AFFIDAVIT OF NON-USE
is an instrument whose purpose is put forth excusable
reasons or justifiable circumstances for the non-uses of the
mark

Rule 804. Use of a mark for goods belonging to the class

registered. The use of a mark in connection with one or more of the
goods or services belonging to the class in respect of which the mark is
registered shall prevent its cancellation or removal in respect of all
other goods or services of the same class.
Rule 805. Use of a mark by related company. The use of a mark
by a company related with the registrant or applicant shall inure to the
latters benefit, and such use shall not affect the validity of such mark
or of its registration: Provided, That such mark is not used in such
manner as to deceive the public. If use of a mark by a person is
controlled by the registrant or applicant with respect to the nature and
quality of the goods or services, such use shall inure to the benefit of
the registrant or applicant.
* The Declaration of Non-Use (DNU) may be filed only under Section
145 but subject to the requirements of Section 152 that the non-use
be excused.

Prejudicial Question (Section 151.2)

After the filing of an inter partes case for cancellation of a mark by
one party, the adverse party may file a subsequent action for
infringement with the regular courts in connection with the same
registered mark.

An administrative cancellation of a registered trademark cannot per

se have the effect of restraining or preventing the courts from the
exercise of their lawfully conferred jurisdiction. A contrary rule would
unduly expand the doctrine of primary jurisdiction which, simply
expressed, would merely behove regular courts, in controversies
involving specialized disputes, to defer to the findings or resolutions of
administrative tribunals on certain technical matters. (Levi Strauss v.
Vogue Traders Clothing)

Cancellation Proceedings Section 153. Requirements of Petition;

Notice and Hearing
CANCELLATION PROCEEDINGS
is an inter partes proceedings brought to eliminate the
registration of a mark.
How commenced: By filing of a Petition for Cancellation and
paying the fee therefor
Grounds:
1. The trademark becomes generic;
2. The trademark is abandoned;
3. Its registration was obtained fraudulently or contrary to
the Code;
4. The trademark is being used to misrepresent the source
of the goods or services;
5. Non-use
Form of Proceedings: In the same form as in opposition
proceedings (Section 153)

The trademark registration of a petitioner in a Petition for Cancellation

may be cancelled notwithstanding the absence of a petition to cancel his
registration.
The fact that no petition for cancellation was filed against the COR
issued to the petitioner does not preclude the cancellation of
petitioners COR. The IPO Director Generals disregard of the
procedure for the cancellation of a registered mark was a valid
exercise of his discretion. (E.Y. Industrial Sales v. Shen Dar Electricity
and Machinery Co.)

Effect of Cancellation
The cancellation of registration of a trademark has the effect
of depriving the registrant of protection from infringement from the
moment judgment or order of cancellation has become final. Hence,
the registrant would have no cause of action against an opponent.

Regulations on Inter Partes Proceedings:

RULE 8
CANCELLATION OF REGISTRATION OF MARKS

Section 1. Who may File a Petition for Cancellation. Any person who
believes that he is or will be damaged by the registration of a mark may file
with the Bureau a petition to cancel such registration.
Section 2. When may a Petition be Filed. The petition for cancellation of the
registration of a mark may be filed:
(a) Within five years from the date of registration of the mark under the IP
Code;
(b) at any time, if the registered mark becomes the generic name for the goods
or services, or a portion thereof, for which it is registered, or has been
abandoned, or its registration was obtained fraudulently or contrary to the
provisions of the IP Code, or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the goods or
services on or in connection with which the mark is used. If the registered
mark becomes the generic name for less than all of the goods or services for
which it is registered, a petition to cancel the registration for only those goods
or services may be filed. A registered mark shall not be deemed to be the
generic name of goods or services solely because such mark is also used as a
name of or to identify a unique product or service. The primary significance of
the registered mark to the relevant public rather than purchaser motivation
shall be the test for determining whether the registered mark has become the
generic name of goods or services on or in connection with which it has been
used. Evidence on purchaser motivation shall not be admitted;
(c) At any time, if the registered owner of the mark without legitimate reason
fails to use the mark within the Philippines, or to cause it to be used in the
Philippines by virtue of a license during an uninterrupted period of at least
three years.
Section 3. Contents of Petition for Cancellation. The petition for
cancellation shall give the name and address of the petitioner as well as those

of the necessary party or parties respondent; and shall state the registration
number and date of the registration sought to be cancelled; the name of the
registrant; the statutory ground or grounds upon which cancellation is sought;
the ultimate facts constituting the petitioners cause or causes of action and the
relief sought.
Section 4. Verification of Petition. A petition for cancellation filed in
triplicate shall be verified by the petitioner or by any person in his behalf who
knows the facts.
Section 5. Service of Petition and Notice of Hearing. Upon the filing of a
petition for cancellation in proper form and payment of the required fee, the
Director shall cause a copy of such petition to be served on the party or parties
respondent, requiring such party or parties to answer the petition. After the
issues have been joined, the Director will cause a date to be set for the hearing
of the case, which will be communicated to both parties.
Section 6. Power of the Bureau to Cancel the Mark in the Exercise of
Its Power to Hear and Adjudicate any Action to Enforce the Rights to a
Registered Mark. Notwithstanding the foregoing provisions, the court or the
Bureau shall, in the exercise of its power to hear and adjudicate any action to
enforce the rights to a registered mark, likewise determine whether the
registration of said mark may be cancelled in accordance with the IP Code.
Section 7. Effect of Filing of a Suit before the Bureau or with the
Proper Court. The filing of a suit to enforce the registered mark with the
proper court or Bureau shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel the same mark. On the
other hand, the earlier filing of petition to cancel the mark with the Bureau
shall not constitute a prejudicial question that must be resolved before an
action to enforce the rights to same registered mark may be decided.
Section 8. Cancellation of Registration. If the Bureau finds that a case for
cancellation has been made out, it shall order the cancellation of the
registration. When the order or judgment becomes final, any right conferred by
such registration upon the registrant or any person in interest of record shall
terminate. Notice of cancellation shall be published in the IPO Gazette

CHAPTER IX
INFRINGEMENT

It is LIKELIHOOD of confusion and not actual confusion

The most essential element of infringement if the likelihood of
creating confusion, mistake or deception
The absence of proof of actual confusion is inconsequential

The COST OF THE GOODS and its influence on the likelihood of

confusion
The cost of the article is a factor which should be considered
Reason: It has been forwarded that where the goods are not
inexpensive, the casual buyer us more cautious and discerning and
would prefer to mull over his purchase, making confusion and
deception less likely

Complete imitation is not required for infringement

It is not necessary to constitute an infringement that every word
of a trademark should be appropriated. It is sufficient that
enough be taken to deceive the public in the purchase of a
protected article
The question is not whether the two articles are distinguishable
by their label when set side by side but whether the general
confusion made by the article upon the eye of the casual
purchaser who is unsuspicious and off his guard, is such as to
likely result in his confounding it with the original.
The court, in a case of unfair competition, had opined that even
if not all the details are identical, as long as the general
appearance of the two products are such that any ordinary
purchase would be deceived, the imitator should be liable.
(Converse Rubber Corp v. Jacinto Rubber & Plastic Co.)

Similarity of logo but not of brand name (word mark): can still be
opposed. The Director of Patents as much as possible discourage all
attempts at imitation of labels already used and registered.

Similarity of the brand name but not of the appearance of the

entirety
Giving importance to the dissimilarities (read the case of Mead
Johnson & Co. v. NVJ Van Dorp)
The brand names were the same but involving unrelated goods,
the Court found that there was a difference in design. Thus, no
confusion was found (Hickok Manufacturing v. CA)

Section 155. Remedies; Infringement

Elements of Infringement (Prosource International, Inc. v. Horphag

Research Management SA):
1. The trademark being infringed is registered in the IPO; however,
in infringement of trade name, the same need not be registered;
2. The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated by the infringer;
3. The infringing mark or trade name is used in connection with the
sale, offering for sale, or advertising of any goods, business or
services; or infringing mark or trade name is applied to labels,
signs, prints, packages, wrappers, receptacles or advertisements
intended to be used upon or in connection with such goods,
business or services;
4. The use or application of the infringing mark or trade name is
likely to cause confusion or mistake or to deceive purchasers or
others as to the goods or services themselves or as to the source
or origin of such goods or services or the identity of such
business (the gravamen of trademark infringement); and
5. It is without the consent of the trademark or trade name owner
or the assignee thereof.
Elements of Infringement (McDonalds Corp v. L.C. Big Mak Burger):
1. The validity of plaintiffs mark;
2. The plaintiffs ownership of the mark; and
3. The use of the mark or its colourable imitation by the alleged
infringer results in likelihood of confusion

Who can file a case for infringement?

Only a registrant of a mark
Upon the finality of an order of cancellation of a mark, the right
of a registrant to file a case for infringement terminates
Title to the trademark is indispensable to a valid cause of action
and such title is shown by its certificate of registration
Intent to deceive is not required in trademark infringement

No infringement of an unregistrable word mark

There can be no infringement of a word mark which cannot be
registered or appropriated exclusively

THE STRIKING DIFFERENCE RULE; the similarities versus the

dissimilarities
When one finds himself at the receiving end of an opposition
proceeding or a trademark or unfair competition case, the
respondent or the defending party must endeavour to establish
the difference between the two marks. And the difference must
not only be significant but also striking.

Motives for infringement

One particular motive for an infringer is to partake of another
business goodwill.

Infringement is a question of fact.

In determining whether or not a trademark infringement exists,
there is no set of rules can be deduced and that each case
must be decided on its own merits and that the likelihood of
confusion is a relative concept
Determining likelihood of confusion; the Dominancy Test and the
Holistic or Totality Test
DOMINANCY TEST (Section 155.1 of R.A. No. 8293)
-

Focuses on the similarity of the prevalent features of the

competing trademarks that might cause confusion or deception.
When applied: when the trademark sought to be registered
contains the main, essential and dominant features of the earlier
registered trademark, and confusion or deception is likely to
result.
Duplication or imitation is not required; neither is it necessary
that the label of the applied mark for registration should suggest
an effort to imitate.
The important issue: whether the use of the marks involved
would likely cause confusion or mistake in the mind of or deceive
the ordinary purchaser, or one who is accustomed to buy, and
therefore to some extent familiar with, the goods in question
Giving greater consideration into the aural and visual
impressions created by the marks in the public mind

HOLISTIC or TOTALITY TEST

Entails into consideration of the entirety of the marks as applied
to the products, including labels and packaging, in determining
confusing similarity.
In comparing the resemblance or colourable imitation of marks,
various factors have been considered, such as the dominant
color, style, size, form, meaning of letters, words, designs and
emblems used, the likelihood of deception of the mark or names
tendency to confuse and the commercial impression likely to be
conveyed by the trademarks if used in conjunction with the
respective goods of the parties.
The mark must be considered as a whole and not as dissected
DOMINANCY TEST
Relies not only on the visual but also
on the aural and connotative
comparisons and overall impressions
between the two trademarks

HOLISTIC TEST
Relies
on
visual
comparisons
between two trademarks

2 Types of Confusion:
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
is evident where the litigants are actually in competition
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 wither
into that belief or into the belief that there is some connection
between the two parties, though inexistent
May arise between non-competing interest as well
Classification of Non-competing goods:
1. Not in actual competition but are so related to
each other confusion may arise
2. Entirely unrelated confusion may not arise
*There is no trademark infringement if the public does
not expect the plaintiff to make or sell the same class
of goods as those made or sold by the defendant.

What is a Dominant Feature?

There are no set rules that can be deduced as what constitutes a
dominant feature with respect to trademarks applied for
registration.
However, 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

Use of identical mark, by itself, does not establish trademark

infringement

COLORABLE IMITATION
Denotes such a close or ingenious imitation as to be calculated
to deceive an ordinary persons, or such a resemblance 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

The class of buyers; the ordinary intelligent buyer

The likelihood of confusion should be determined through the
eyes and mind of the ordinary intelligent buyer and not the
completely unwary consumer

IDEM SONANS RULE; Aural effects of words so as to cause likelihood

of confusion; when trademarks sound the same
Confusingly similar sounds
IDEM SONANS means two names having the same or similar
pronunciation or sound

Survey evidence to establish confusion

When there is no direct evidence survey evidence is important
When there is direct evidence survey evidence is often
invaluable
Survey represent the most scientific means of measuring
relevant consumers
Subjective mental associations by attempting to create the
potential purchasing environment in which a purported
trademark or trade dress is found within a given market.
The true value of survey evidence rests upon its ability to gauge
the mental associations and reactions of prospective purchasers

TRADEMARK DILUTION
Is the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or
absence of:
a. Competition between the owner of the famous mark and
other parties; or
b. Likelihood of confusion, mistake or deception
This is intended to protect famous marks from subsequent uses
that blur distinctiveness of the mark or tarnish or disparage it
The Intellectual Property Code, however, does not expressly
provide protection against trademark dilution. Nonetheless, the
concept of trademark dilution is very much present in the
protection of internationally well-known marks
The court ruled against the invocation of trademark dilution in
order to obtain a preliminary injunction where the elements of
dilution were not present.
To be eligible for protection from dilution, there has to be a
finding that:
1. The trademark sought to be protected is famous and
distinctive;
2. The use by respondent of the mark began after the
petitioners mark became famous; and
3. Such subsequent use defames petitioners mark

The Types of Confusion Doctrines

1. POST- SALE CONFUSION
Is really non-purchaser presale confusion
The initial purchase by consumer A took place, with or
without any confusion, but the second-potential
purchase by consumer B may be clouded with confusion
Example:
When consumer A purchases sneakers bearing a
trademark confusingly similar to a popular brand name
sneaker. If the sneakers portray some poor quality or
workmanship, consumer B might wrongly attribute these
defects to the more popular sneaker.
2.

POINT OF SALE CONFUSION

3.

PRE-SALE or INITIAL INTEREST CONFUSION

Involves infringement based on confusion that creates
initial consumer interest, even though no transaction
takes place
Gives the junior user credibility during the early stages
of a transaction and can possibly bar the senor user
from consideration by the consumer once the confusion
is dissipated
Not yet found adoption in Philippine jurisprudence

*Presenting a sole witness is always open to accusations of bias and

non-credibility.

CRIMINAL LIABILITY
Criminal Sanctions for Infringement:
Section 170:
a. Criminal penalty of imprisonment from 2 to 5 years; and
b. A fine ranging from P50,000.00 to P200,000.00
These criminal penalties should be an Indeterminate Penalty and
fine (Batistis v. People)
Criminal liability of corporate officers and directors
The corporate identity will be pierced when a corporation is used
to violate intellectual property rights. Hence, liability will be
attached personally and directly to its directors and officers.
Reason: When the notion of legal entity is used to defeat public
convenience, justify wrong, protect fraud, or defend crime, the
law will regard the corporation as an association of persons, or in
the case of two corporations merge them into one.

WHOISE
Is the domain name registration information
It can identify the owner of a website or a domain name

Search warrants for trademark infringement

The discussions on search warrants under the Section on unfair
competition would also be applicable to search warrants for
trademark infringements

A.M. No. 02-1-06-SC (p. 673)

It governs only searches and seizures in civil actions for
infringement of intellectual property rights

Domain names and trademarks; cybersquatting

DOMAIN NAME
Identifies an Internet site by using a unique name, often a
persons or companys name or trademark
2 Parts of Domain Name:
1. Top-level domain (TLD) located at the end of the
domain name, which indicates the kind of use or the
country designation (.com, .net);
2. Second level domain (SLD) which identifies the specific
Web site owner with a string of words that precedes the
TLD
CYBERSQUATTING
Using his registered trademark as a domain name for the
reason that such trademark was earlier registered by another
as a domain name
When a person registers a trademark owners mark as a
domain name without a bona fide claim to use the trademark
This is prohibited
CYBERSQUATTER
Individuals who attempt to profit from the Internet by
reserving and later reselling or licensing domain names back to
the companies that spent millions of dollars developing the
goodwill of the trademark
*Thus, a trademark owner must apply and register his
trademark as a domain name.

Notices to the public

A common practice in the Philippines is the placement of paid
advertisements in newspapers notifying and warning the general
public that a particular trademark is registered to and is owned
by a particular entity and there exists a proliferation in the
market of infringing or fake products
Usually taken out by a law firm as counsel for the trademark
owner
Purpose: This serves as an advisory to the general public to avoid the
infringing or fake products and a warning to the infringers that legal
action will be taken against them

Trademark infringement is a violation of a property right

Administrative cases for trademark infringement

competition
Which has jurisdiction: Intellectual Property Office

and

----------------------------------------------------------------------------------------------Section 156. Actions, and Damages and Injunction for Infringement

unfair

Governed by: Rules and Regulations on Administrative Complaints for

Violation of Law Involving Intellectual Property Rights (March 28, 2001)
When a complaint should be filed: Within four (4) years from the date
of commission of the violation, or if the date be unknown, from the
date of discovery of the violation (Section 1 of the Rules on
Administrative Complaints)

Injunctive Relief (Section 156.4)

The injunction writ is indispensable to prevent further acts of
infringement by a respondent
Rule 58, Section 3, of all its elements, paramount is clear and
unmistakable right
There must be a proof that the damage is irreparable and
incapable of pecuniary estimation before a writ of preliminary
injunction can be issued. In other words, the suffering claimed
must not be compensable in terms of monetary consideration
(Tanduay Distillers, Inc. v. Ginebra San Miguel, Inc.)
GR: A preliminary injunctive order does not prejudge a case (Levi
Strauss (Phils.), Inc. v. Vogue Traders Clothing Co.)
EXP: The resolution of a motion for preliminary injunction
which already discussed and passed upon the main
issues of the case (stating, there is definitely no
similarity in the general appearance of the competing
products) already constituted a prejudgment (Compania
General de Tabacos de Filipinas v. Sevandal et al)

What should be filed: A verified pleading which contains a verification

based on information and belief or upon knowledge, information,
and belief
Effect of lack of proper verification: It shall be treated as an
unsigned pleading (Section 1 of the Rules on Administrative
Complaints)
To whom should be filed: The Bureau shall have the original
jurisdiction in administrative actions for violations of laws involving
intellectual property rights where the total damages claimed are not
less than two hundred thousand pesos (P200,000.00); Provided
however, that availment of the provisional remedies may be granted
in accordance with these Regulations and the provisions of the Rules
of Court; the Director shall coordinate with local enforcement
agencies for the strict and effective implementation and enforcement
of these Regulations (Section 2 of the Rules on Administrative
Complaints)
*The commencement of the action under these Rules and Regulations is
independent and without prejudice to the filing of any action with the regular
courts

Insignificant change is violation of injunction

Example: Isabelas to Isabela (the defendant was punished for
contempt)

Actual Damages (Section 156.1)

In determining the amount of damages, the measure is either:
a. What the infringer gained or
b. What the owner lost

Other damages under the Civil Code

Exemplary damages by way of correction for the public good

in view of the finding of unfair competition where intent to
deceive the public is essential

Award of attorneys fees and expenses of litigation

Temperate damages

Double damages (Section 156.3)

In cases of infringement of trade-marks the law primarily takes no
account of the actual intent on the part of the infringer to mislead
the public and defraud the owner of the trade-mark; nevertheless
this factor, if present, may be taken, in the discretion of the court, as
a ground for the assessment of double damages
In cases of unfair competition proper, actual intent to deceive the
public and defraud the person injured is declared to be essential to
the maintenance of the action; but it is immediately added that
such intent may be inferred from similarity of the appearance of the
goods as packed or offered for sale to those of the complaining party
The cease and desist letter
Advantages of cease and desist (C & D) letters:
a. Relatively low-cost way to resolve many, if not most, trademark
infringement matters
b. The infringers often recognize that it is their best interest to stop
the offending activity and cooperate with the trademark owner to
resolve the matter amicably
c. It may be the first step toward negotiating bilateral concessions
that keep the dispute out of court
d. It establishes actual notice of the claimed rights and may give
rise to a claim of intentional infringement if the activity
continues after receipt of the letter
e. It is an evidence of an attempt to resolve the matter before
asking for judicial intervention
Is it necessary to describe the infringing trademark by verbal
allegations in the complaint?
No. Where a visual representation of the allegedly offending marks
have been submitted as exhibits, a written description on the
infringing trademark is not necessary (La Insular Cigar and Cigarette
Factory Inc. v. B.E. Jao Oge)

---------------------------------------------------------------------------------Section 157. Power of Court to Order Infringing Material Destroyed

Section 158. Damages; Requirement of Notice

Notice of registration
Pursuant to IPO Office Order No. 2, s. 2004, registrants shall give
notice that their marks are registered by
a. displaying with the mark the words Registered Mark or
b. the letter R within a circle or
c. Reg.IPOPHIL

Significance of the letter R within a circle

Supplies the presumption of knowledge that such imitation
is likely to cause confusion, or to cause mistake, or to
deceive
This presumed knowledge establishes the basis for recovery
of damages
Without such notice, the registrant must prove that the
infringer had knowledge of the registration in order to
recover damages

The TM or SM sign
The TM sign to indicate Trade Mark of the SM sign to
indicate Service Mark have NO legal significance in the
Philippines and therefore confers no legal rights

---------------------------------------------------------------------------------Section 159. Limitations to Actions for Infringement

Defenses against infringement suits:

a. Prior use by the defendant
b. No likelihood of confusion or mistake or deception of purchasers
c. Plaintiffs claimed mark is not protected
d. Plaintiffs mark has become generic
e. Plaintiffs fraudulent registration
f. Plaintiffs mark was abandoned
g. Plaintiff has not come to court with clean hands
h. Laches or estoppel
i. Non-competing products or services
j. Defendants good faith

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.

Summary of remedies against trademark infringement:

a. Civil action for damages (Section 156.1)
b. Impounding of infringing goods by the court (Section 156.2)
c. Doubling of damages (Section 156.3)
d. Injunctive relief (Section 156.4)
e. Dispose if infringing goods outside the channels of commerce (Section
157.1)
f. Destruction of infringing goods (Section 157.1)
g. Criminal action (Section 170)
h. Administrative action before the IPO
i. Prohibit importation of infringing goods (Section 166)

---------------------------------------------------------------------------------Section 160. Right of Foreign Corporation to Sue in Trademark or

Service Mark Enforcement Action

Right to sue; Rights of foreign corporations with respect to their

foreign trademarks
In pursing judicial and administrative remedies in the Philippines,
foreign corporations, not doing business and not licensed to do
business in the Philippines, seeking to protect their trademarks must
first hurdle the requirements of Sections 3 and 160.

Note that Section 160 and 3 pertain only to the right to sue or the
legal capacity to sue and not to the infringement to trademark
protection

The next hurdle is to determine entitlement to trademark protection.

It must first be determined whether or not the foreign trademark is a
well-known trademark or not.
o If it is a well-known trademark, the foreign corporation
should determine its rights under Section 123.1 (e) and (f),
which would not require registration or use in the
Philippines
o If it is not a well-known trademark, the applicable law would
be Section 123.1 (d), which would require registration and
local use.
*If the foreign trademark is not well-known and is not registered in
the Philippines, then it cannot be claimed that it has any goodwill in
the Philippines that can be damaged.

The deliberate insertion of the phrase whether or not it is licensed

to do business in the law
The essential point in the said provision, is that the foreign
corporation is allowed there under to sue whether or not it has been
licensed to do business in the Philippines pursuant to the
Corporation Law

International Conventions and reciprocity under Section 3 need not

be affirmatively pleaded or alleged to assert the right under Section
160
Even assuming the truth of the private respondents allegation that
the petitioner failed to allege material facts in its petition relative to
capacity to sue, the petitioner may still maintain the present suit (La
Chemiste Lacoste v. Fernandez et al)
HOWEVER, it was held in Leviton Industries v. Salvador, that foreign
corporation may have the right to sue before Philippine courts, but
our rules on pleadings require that the qualifying circumstances
necessary for the assertion of such right should first be affirmatively
pleaded

---------------------------------------------------------------------------------Section 162. Action for False or Fraudulent Declaration

Section 163. Jurisdiction of Court

Concurrent jurisdiction of the civil courts and the IPO

It would be incorrect to conclude that all actions involving
trademarks, including charges of unfair competition, are under the
exclusive jurisdiction of civil courts

Special Intellectual Property Courts

See A.M. No. 03-03-03-SC 2003-6-17, Re: Consolidation
Intellectual Property Courts with Commercial Courts.

Concurrent jurisdiction of the civil courts and the IPO

Pursuant to Section 160, the civil courts and the IPO have
concurrent jurisdiction over actions for infringement and unfair
competition filed by a foreign corporation

---------------------------------------------------------------------------------Section 161. Authority to Determine Right to Registration

The infringement court may validly pass upon the right of

registration
With the decision of the upholding the validity of registration of the
service mark, the cancellation case filed with the Bureau becomes
moot.
Reason: To allow the Bureau to proceed with the cancellation case would
lead to a possible result contradictory to that which the RTC has
rendered, albeit the same is still on appeal. Such situation is certainly
not in accord with the orderly administration of justice.
In any event, the Court of Appeals has the competence and
jurisdiction to resolve the merits of the said RTC decision

of

Validity of special intellectual property courts or special commercial

courts
The Supreme Court upheld the validity of the transfer of jurisdiction
to the RTC from the MTCC of cases involving unfair competition
The following shall be tried exclusively by the RTC (A.O. No. 104-96(B)):
1. Violations of Art. 188 of the RPC (substituting and altering
trademarks, trade names, or service marks)
2. Art 189 of the RPC (unfair competition, fraudulent registration of
trademarks, trade names, or service marks, fraudulent
designation of origin, and false description)
3. P.D. No. 49 (protection of intellectual property rights)
4. P.D. No. 87 (an act creating the videogram regulatory board)
5. R.A. No. 165 as amended (trademark law)

---------------------------------------------------------------------------------Section 164. Notice of Filing Suit Given to the Director

---------------------------------------------------------------------------------Section 165. Trade Names or Business Names

TRADE NAME
Means the name or designation identifying or distinguishing an
enterprise
Include individual names and surnames, firm names and trade
names used by manufacturers, industrialists, merchants,
agriculturalists, and others to identify their business, vocations, or
occupations; the names or titles lawfully adopted and used by
persons, firms, associations, corporations, companies, unions, and
any manufacturing, industrial, commercial, agricultural, or other
organizations engaged in trade or commerce and capable of suing
and being sued in a court of law
Trade name distinguished from trademark
Trade name
Trademark
It is the full name of a business It is the sign that distinguishes the
and it identifies the company
product(s) of the company
It
is
descriptive
of
the In a technical sense, it is
manufacturer or dealer himself applicable to vendible commodities
and applies to a business and its
good will
Acquired by adoption and use
Acquired by registration
Belong to the one who first uses Belong to the registrant
them and gives them value

Acquisition of trade name

Trade names are acquired by adoption and use, and belong to the
one who first uses them and gives them value

The Trademark Regulation provisions

Rule 103.
Trade Names or Business Names. (a) A name or
designation may not be used as a trade name if by its nature or the use to
which such name or designation may be put, it is contrary to public order
or morals and if, in particular, it is liable to deceive trade circles or the
public as to the nature of the enterprise identified by that name.
(b) Notwithstanding any laws or regulations providing for any obligation to
register trade names, such names shall be protected, even prior to or
without registration, against any unlawful act committed by third parties.
In particular, any subsequent use of the trade name by a third party,
whether as a trade name or a mark or collective mark, or any such use of

a similar trade name or mark, likely to mislead the public, shall be deemed
unlawful.
(c) The remedies provided for cancellation and infringent of marks in
Sections 153 to 156 and Sections 166 and 167 of the IP Code shall apply
to tradenames mutatis mutandis.
(d) Any change in the ownership of a trade name shall be made with the
transfer of the enterprise or part thereof identified by that name. However,
such transfer or assignment shall be null and void if it is liable to mislead
the public, particularly as regards the nature, source, manufacturing
process, characteristics, or suitability for their purpose, of the goods or
services to which the mark is applied.

Infringement of unregistered trade names

The Intellectual property Code protects trade names from
infringement even if they are not registered with the IPO
All that is required is that the trade name is previously used in trade
or commerce in the Philippines
All trade names are protected from infringement
The following constitutes infringement of an unregistered trade name:
1. The trademark being infringed is registered in the Intellectual
Property Office; however, in infringement of trade name, the
same need not be registered
2. The trademark or trade name is reproduced, counterfeited,
copied, or colorably imitated by the infringer
3. The infringing mark or trade name is used in connection with the
sale, offering for sale, or advertising of any goods, business or
services; or the infringing mark or trade name is applied to
labels, signs, prints, packages, wrappers, receptacles, or
advertisement intended to be used upon or in connection with
such goods, business, or services
4. The use or application of the infringing mark or trade name is
likely to cause confusion or mistake or to deceive purchasers or
others as to the goods or services themselves or as to the source
or origin of such goods or services or the identity of such
business
5. It is without the consent of the trademark or trade name owner
or the assignee thereof

Reason for protecting trade names: To protect the manufacturer or

dealer as well as the public

Generic or descriptive words in trade names

The use of a generic term in a trade-name is always conditional, i.e.,
subject to the limitation that the registrant does not acquire the
exclusive right to the descriptive or generic term or word

Can a foreign corporation not engaged in business in the Philippines

and not licensed to do business in the Philippines sue to protect its
trade name?
Yes. With respect to a foreign corporations capacity to sue, the same
rules under Section 160 apply. Thus, a foreign corporation not
engaged in the Philippines may nonetheless sue to protect its trade
name, provided that there is compliance with Section 3 of the
Intellectual Property Code.

The similar trade names must refer to the same line of business to
constitute infringement of trade name or unfair competition

---------------------------------------------------------------------------------Section 166. Goods Bearing Infringing Marks or Trade Names

CHAPTER XI
OFFENSES RELATING TO TRADEMARK

Section 168. Unfair Competition, Rights, Regulation and Remedies

Section 169. False Designations of Origin; False Description or
Representation
Section 170. Penalties

Elements of unfair competition

1. Confusing similarity in the general appearance of the goods
2. Intent to deceive the public and defraud a competitor
-

Infringement of trademark distinguished from unfair competition

Trademark infringement is a form of unfair competition
Trademark Infringement
Unfair Competition
It is the unauthorized use of a It is the passing off of ones
trademark
goods as those of another
Fraudulent intent is unnecessary Fraudulent intent is essential
The prior registration of the
trademark is a pre-requisite to Registration is not necessary
the action
Trademark registration is not required in an action for unfair
competition
Note that this chapter speaks of offenses relating to trademarks;
unfair competition is therefore not a trademark offense but merely an
offense relating to trademarks (an offense directly against a
trademark would be a trademark infringement)
The protection of goodwill
Section 168.1 speaks of goodwill
GOODWILL of a business is property, and may be transferred
together with the right to use the name under which the business is
conducted (Art. 521 of the NCC)
Unfair competitor with a registered trademark
Can the owner of a validly registered trademark be held liable for
unfair competition?
Yes. There was unfair competition where the use of a validly
registered trademark was coupled with the use of certain elements
which gave it similarity with the goods of another whose trademark
is also validly registered.
The Supreme Court did not prohibit the use of the unfair
competitors trademark, but merely prohibited the unfair competition
from using the resembling or confusingly similar features

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 from sale to the public
Actual fraudulent intent need not be shown

TRUE TEST of unfair competition: Whether the acts of the defendant have
the intent of deceiving or are calculated to deceive the ordinary buyer
making his purchases under the ordinary conditions of the particular
trade to which the controversy relates
-

One of the essential requisites in an action to restrain unfair

competition is proof of fraud; the intent to deceive, actual or probable
must be shown before the right to recover can exist

Standard of deception; the quality of the fake product; the ordinary

buyer
The deception must be to such a degree so as to deceive the
ordinary buyer
Types of buyer or Extremes of the spectrum of buyers:
1. Expert buyer a very high degree of deception would be
required, such that the fake product would be of a very high
quality almost approximating the quality of the original
2. Ignorant buyer the quality of deception need not be high,
meaning the quality of the fake product need not be close to the
quality of the original
3. ORDINARY BUYER in between the two extremes
The ordinarily intelligent buyer
The casual purchasers who knows goods only by
name
*Consequently, it is not necessary that the articles be exactly similar in
order that unfair competition may arise

Similarity in the general appearance of the goods

Minor differences will not be sufficient to offset the similarity in the
general appearance of the goods

There could be unfair competition even if the words are not similar
or not the same
In unfair competition, it is not required that the brand names of the
competing products be similar or the same
They may be entirely different
An unfair competition is not confined to the adoption of the same or
similar names

The elements of intent

Actual intent to imitate the product may be inferred from similarity
in the appearance of the goods as packed or offered for sale to those
of the complaining party
Even if the resemblance is accidental and not intentional, the
plaintiff is entitled to protection against its injurious results to his
trade

PASSING OFF (or palming off)

Takes place where the defendant, by imitative devices on the general
appearance of the goods, misleads prospective purchasers into
buying his merchandise under the impression that they are buying
that of his competitors.
Thus, the defendant gives his goods the general appearance of the
goods of his competitor with the intention of deceiving the public that
the goods are those of his competitor
Evidence required in actions for unfair competition; when actual
products need not be presented
While an examination of the products would be essential to establish
unfair competition, peculiar circumstances may render this
requirement unnecessary
Example: when the SC ruled that the seized goods had little or no
evidentiary value in view of the peculiar facts of the case

SEARCH WARRANTS
Search warrants; determination of probable cause
the issuance of search warrant is governed by the Rule 126 of the
Rules of Court
Section 4 thereof provides that a search warrant shall not issue
except upon probable cause
PROBABLE CAUSE
Means such reasons, supported by facts and circumstances
as will warrant a cautious man in the belief that his action
and the means taken in prosecuting it are legally just and
proper
Shown by the affidavits of the affiants who had personal
knowledge of facts indicating that an offense involving
violation of intellectual property rights was being committed

Search warrants; participation of private complainant in search

warrant proceedings
A private complainant may participate in search warrant proceedings
Reason: to maintain, inter alia, the validity of the search warrant
issued by the court and the admissibility of the properties seized
in anticipation of a criminal case to be filed
The party may file an opposition to a motion to quash the search
warrant issued by the court, or a motion for the reconsideration of
the court order granting such motion to quash

Search warrants; when seized goods may be returned

Seized goods may be returned when:
a. The criminal complaints were dismissed with finality; or
b. The court found that presenting these seized goods as
evidence would already be superfluous

Search warrants; quashal by the issuing court

The trial court which issued the search warrant may subsequently
quash the said warrant after a subsequent evaluation reveals no
infringement exists
After the judge has issued a warrant, he is not precluded to
subsequently quash the same, if he finds upon re-evaluation of the
evidence that no probable cause exists
Remedy of the petitioner: A trial courts unwarranted quashal of a search
warrant may be assailed through a special civil action for certiorari on
the ground of grave abuse of discretion

Search warrant; particularity of the items to be seized

It is not required that the things to be seized must be described in
precise and minute detail

Presentation in evidence of seized items

The trial court will not allow the presentation of superfluous evidence
Given the availability of actual samples, there was no need for the
court to take custody of the countless articles seized

Negative result of a search warrant raid

A judicially ordered search that fails to yield the described illicit
article does not of itself render the courts order unlawful

Concurrent jurisdiction of the civil courts and the IPO

Pursuant to Section 170, the civil courts and the IPO have
concurrent jurisdiction over actions for infringement and unfair
competition

The IPO may award damages for unfair competition

Upon a finding of guilt, the IPO may award damages pursuant to
Section 168.4 in correlation with Section 156

Unfair competition under the RPC

Unfair competition was criminally punishable under Article 189 of
the RPC and civilly sanctions under R.A. No. 166.
HOWEVER, Section 239 of the IPC has already expressly repealed
Article 189 of the RPC
Unfair competition is now civilly, administratively and
criminally sanctioned under the Intellectual Property Code

The use of anothers containers; when there is unfair competition

Under Act No. 3070 (1923), the use of anothers registered container
for any commercial purpose was prohibited
Purpose: to afford a person a means of identifying the containers he
uses in the manufacture, preservation, packing or sale of his
products so that he may secure their registration with the Bureau of
Commerce and Industry and thus prevent other persons from using
them
It is the use of the containers themselves not merely the use of the
trademark engraved thereon that is prohibited by law.

Example: the Del Monte bottles for catsup were bought by the
respondent from junk shops for recycling to contain also catsup
produced by respondent

Hoarding of containers is not unfair competition

Reason: the act of hoarding had no relation to intellectual property
which is the coverage of the Intellectual Property Code
*Deception, passing off and fraud upon the public are still the key
elements that must be present for unfair competition to exist

The act of selling is not an element of unfair competition

Reason: To hold that the act of selling is an indispensable element
of the crime of unfair competition is illogical because if the law
punishes the seller of imitation goods, then with more reason
should the law penalize the manufacturer.
*The test of unfair competition is whether certain goods have been
intentionally clothed with an appearance which is likely to deceive the
ordinary purchasers exercising ordinary care

Standardized packaging, form and style for particular products

It may be that certain products are packaged similarly by all
merchants located in a particular place. This may be brought about
by customs, traditions or practicality. In such cases, the
standardized form and style of packaging cannot be made exclusive.

Who is liable for unfair competition?

Either:
a. Seller, either a wholesaler or a retailer; or
b. Manufacturer of imitation goods

Can a complainant in a criminal action for unfair competition be

sued for malicious prosecution after the complaint and charge are
dismissed?
Following jurisprudence on malicious prosecutions, a complainant
cannot be adjudged liable for damages for an alleged unfounded suit
where the complainants for malicious prosecution are unable to
prove:
a. Absence of probable cause; and
b. Legal malice

Civil and criminal aspects in the case for unfair competition

A separate civil action cannot anymore be pursued as it is already
barred by res judicata, the judgment in the criminal case involving
both the criminal and civil aspects of the case for unfair competition.
Civil liability arising from the crime is deemed instituted and
determined in the criminal proceedings where the offended party did
not waive nor reserve his right to institute it separately

concealment, false representation of fraudulent manipulation, induces a

consumer to enter into a sales or lease transaction of any consumer
product or service.
Without limiting the scope of the above paragraph, the act or practice of a
seller or supplier is deceptive when it represents that:
a)

Prejudicial questions between the criminal and civil aspects of

unfair competition
There is no prejudicial question if the civil and the criminal action,
can, according to law, proceed independently of each other
The common element in the acts constituting unfair competition
under Section 168 of R.A. No. 8293 is fraud. Pursuant to Article 33
of the Civil Code, in cases of defamation, fraud, and physical
injuries, a civil action for damages, entirely separate and distinct
from the criminal action, may be brought by the injured party.
Hence, the civil action will not operate as a prejudicial question that
will justify the suspension of the criminal cases.

b)
c)

d)
e)
f)

Criminal aspect of unfair competition stated under Section 170

g)

Determination of probable cause during preliminary investigation,

judicial recourse
During the preliminary investigation, the prosecutor is vested with
authority and discretion to determine if there is sufficient evidence to
justify the filing of information. If he finds probable cause to indict
the respondent for a criminal offense, it is his duty to file the
corresponding information in court. However, it is equally his duty
not to prosecute when after an investigation, the evidence adduced is
not sufficient to establish a prima facie case

Related provision under the Consumer Protection Act (R.A. No.

7394, otherwise known as The Consumer Act of 1992)
Article 50. Prohibition Against Deceptive Sales Acts or Practices.
A deceptive act or practice by a seller or supplier in connection with a
consumer transaction violates this Act whether it occurs before, during or
after the transaction. An act or practice shall be deemed deceptive
whenever the producer, manufacturer, supplier or seller, through

h)
i)

j)

a consumer product or service has the sponsorship, approval,

performance, characteristics, ingredients, accessories, uses, or
benefits it does not have;
a consumer product or service is of a particular standard, quality,
grade, style, or model when in fact it is not;
a consumer product is new, original or unused, when in fact, it is
in a deteriorated, altered, reconditioned, reclaimed or second-hand
state;
a consumer product or service is available to the consumer for a
reason that is different from the fact;
a consumer product or service has been supplied in accordance
with the previous representation when in fact it is not;
a consumer product or service can be supplied in a quantity
greater than the supplier intends;
a service, or repair of a consumer product is needed when in fact it
is not;
a specific price advantage of a consumer product exists when in
fact it does not;
the sales act or practice involves or does not involve a warranty, a
disclaimer of warranties, particular warranty terms or other rights,
remedies or obligations if the indication is false; and
the seller or supplier has a sponsorship, approval, or affiliation he
does not have.

Compulsory indication of trademarks in the products label (R.A. No.

7394, otherwise known as The Consumer Act of 1992)
Article 74. Declaration of Policy. The State shall enforce compulsory
labeling, and fair packaging to enable the consumer to obtain accurate
information as to the nature, quality and quantity of the contents of
consumer products and to facilitate his comparison of the value of such
products.

Article 77. Minimum Labeling Requirements for Consumer

Products. All consumer products domestically sold whether
manufactured locally or imported shall indicate the following in their
respective labels of packaging:
k) its correct and registered trade name or brand name;
l) its duly registered trademark;
m) its duly registered business name;
n) the address of the manufacturer, importer, repacker of the
consumer product in the Philippines;
o) its general make or active ingredients;
p) the net quality of contents, in terms of weight, measure or
numerical count rounded of to at least the nearest tenths in the
metric system;
q) country of manufacture, if imported; and
r) if a consumer product is manufactured, refilled or repacked under
license from a principal, the label shall so state the fact.

For whose protection is the law against unfair competition?

Both and in equal footing for the protection of the party against
whom such competition is directed (to preserve the goodwill and
reputation of the business established on the goods bearing the
mark through use over a period of time) and of the public (to
safeguard the public as consumers against confusion of these goods)

TRADE DRESS
Is the design and appearance of a product together with the elements
making up the overall image that serves to identify the product
presented to the consumer
Has been described by some writers as a three-dimensional
trademark and thus capable of trademark registration.
It has been described as product configuration

World Anti-Counterfeiting Day

Celebrated in a day of June every year
Established by the Global Anti-Counterfeiting Group

Special law for counterfeit drugs

Republic Act No. 8203, otherwise known as the Special Law on
Counterfeit Drugs (September 4, 1996)
Deals with several activities relating to counterfeit drugs

Unfair competition and protection of undisclosed information or

trade secrets; propriety information
Although not forming part of the topic on trademarks, it shall be
pointed out that Section 4 of the IPC enumerates as part of the term
intellectual property rights the protection of undisclosed
information or in common parlance trade secrets
Perhaps by oversight, it was never explained in the entire IPC
Resort will be made to the intellectual property portion of the General
Agreement on Tariffs and Trade (GATT), also known as the TRIPS
Agreement, to which the Philippines adhered in 1995.
Under the TRIPS Agreements, protection of undisclosed information
(or trade secrets) forms part of the rules against unfair competition.