Jose Lorenzo T.

Roman November 30,

2020
2011-40743 Reflection 8

The Supreme Court decision of Zuneca states that the ownership of a

trademark is indeed acquired by registration, thus reversing numerous cases
which provide that ownership is acquired through use. It should be noted that
the case stressed that it is prior registration in GOOD FAITH that would grant
ownership of a trademark. Although the rationale of the decision is sound,
converting to a “first-to-file” from a “first-to-use” regime will present challenges.
In my opinion, the biggest challenge from here on out would be issues of fair
play, specifically with respect to the prior user in good faith.

As to the dangers of a first-to-file regime, China’s experience may shed

some light as “filers seek to extract money for the transfer of marks (trademark
squatting) or piggyback off the reputation of established brands. 1” This is
mainly possible because of China’s black-and-white stance on registration.
This practice is also prevalent in other countries, like in India 2, wherein
someone registered the trademark “PS5” before Sony did. Fortunately, both of
these problems were resolved, with China adopting stricter legislation and Sony
filing cancellation proceedings with Indian authorities. I cannot speak for other
countries but I believe that such attempts to “piggyback” on the goodwill
developed by others will not stand in the Philippines since section 123.1 is
exhaustive with respect to marks which cannot be registered. I likewise doubt
that such “fake” marks shall pass the dominancy test as mandated by our IPC.
Despite now being “officially” a first-to-file regime, I believe the strength of our
system lies in its amphibious nature.

A dilemma which may happen may consist of a situation wherein two

identical trademarks arise one year apart in two different localities. Let’s say a
businessman in Sulu thought of the tradename “Rainbow Hamburgers” one
year before a businessman in Batanes thought of the same. The two
businesses became widely popular in their respective provinces, but the
Batanes business was the first one to register the mark. Eventually, the
Batanes business decided to branch out into different provinces, including
Sulu. Since the Sulu business is a prior user in good faith, it may still continue
to use its mark. However, the damage to both businesses, as well as to third
parties, is far from speculation as such situation would surely cause confusion
amongst the Sulu public. Admittedly, the prior user in good faith is still
protected as he can’t be liable for infringement, and may still challenge the
good faith of the registrant if the former can provide evidence overturning the
presumption of good faith (i.e.Shangri-la case). But what if it was just
coincidence and both parties are truly in good faith? (In some ways, I think
that this is similar to the PS5 case above, albeit on a micro-scale).
1
Soto, Illiana. How China Is Dealing With Bad Faith Trademarks. TrademarkNow, https://www.trademarknow.com/blog/how-china-is-
dealing-with-bad-faith-trademarks. Accessed November 30, 2020.
2
Walfisz, Jonathan. Sony faces PS5 trademark fight in India but legal experts reject reports that it will derail console's launch.
https://www.worldtrademarkreview.com/brand-management/trademark-squatter-nabs-ps5-in-india-prompting-questions-over-release-
delay. Accessed November 30, 2020.
Jose Lorenzo T. Roman November 30,
2020
2011-40743 Reflection 8

As the Philippines traverses to the regime it originally, and textually,

intended, I believe that authorities, especially the IPO, should ultimately be
guided by principles of justice and fair play to achieve the best results for the
most people.