Trademark Hand-outs 1. Rights conferred to an owner of a registered mark Sec. 147 a.

. exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar sign or containers for goods or services which are identical or similar in respect of which the trademark is registered where such use would result in likelihood of confusion. b. 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 the interests of the owner of the registered mark are likely to be damaged by such use. II. REMEDIES TO VIOLATION OF TRADEMARK RIGHTS: 1. Administrative a. Opposition to registration b. Cancellation of Certificate of Registration- Bureau of Legal Affairs c. Administrative complaints for trademark infringement -take note of the prescriptive period of four (4) years under Sec. 1 Rule 2 of the Rules and Regulations on Administrative complaints involving Intellectual Property Violations (IPV) Section 1. Complaint, When and to Whom Filed all administrative complaints for violation of IP Code of IP Laws shall be commenced by filing a verified complaint with the Bureau within four (4) years from the date of commission of violation or if the date be unknown, from the date of discovery of the violation. A complaint is verified by an affidavit that the affiant has read the pleading and that the allegations therein are true and correct of his knowledge and belief. 2. Civil -civil action for infringement of trademark with recovery of damages; Injunction; TRO 3. Criminal (Sec. 170) - trademark infringement; unfair competition; false designation of origin - imprisonment: 2-5 years -fine: Php 50,000 to Php 200,000 A. OPPOSITION TO REGISTRATION Sec. 134 Elements: 1. filed by oppositor any person who believes he would be damaged by the registration of a mark. 2. opposition must be in writing and verified 3. filed after first publication of a trademark sought to be registered in accordance with Sec. 133 4. must be filed within 30 days of first publication B. CANCELLATION OF TRADEMARK CERTIFICATE Sec 151 Note: A certificate of registration is valid for 10 years Elements: a. filed by any person who believes he is or will be damaged by the registration of the mark b. filed via written petition within five (5) years from the date of registration of the mark c. filed with the Bureau of Legal Affairs

GROUNDS FOR SEEKING CANCELLATION Se. 151 (b) c.1 mark becomes the generic name for the goods or services c.2 abandonment c.3 registration was obtained fraudulently c.4 misrepresentation c.5 non use of trademark -failure to use the mark within the Philippines without legitimate reasons -failure to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer (Sec. 151c) - failure to file a Declaration of Actual Use (DAU) within one (1) years from fifth anniversary of the date of registration of mark Sec. 145 C. Infringement of Trademark Sec. 155 Any person who without consent of the owner of the registered mark: 1. Uses in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusions, or to cause mistake, or to deceive or 2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feauture thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive. Mcdonalds Corp vs. L.C. Big Mak: To establish trademark infringement, the following elements must be shown: (1) The validity of plaintiffs mark (2) The plaintiffs ownership of the mark; and (3) The use of the mark or its colorable imitation by the alleged infringer results in likelihood of confusion. Of these, it is the element of likelihood of confusion that is the gravamen of trademark infringement. Remedies against trademark infringement (Sec. 156, 157) a. b. c. d. e. Recovery of damages Double damages where actual intent to mislead the public or defraud the complaint is shown Injunctions Impound sales invoices and other documents Destruction of infringing materials (Sec. 157)

D. Unfair Competition (Sec. 168) - may be availed of even if trademark is not registered - keywords here is deception; passing off ones goods for that of another Sec. 168 (1) Person complained of shall have given to his goods the general appearance of the goods of the complaining party, either in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance which would likely influence purchasers to believe that the goods offered are those of the complaining party;

(2) Person complained of shall have clothed the goods with such appearance for the purpose of deceiving the public and defrauding the complaining party of his legitimate trade. Mcdonalds Corp vs. L.C. Big Mak: The essential elements of an action for unfair competition are: (1) Confusing similarity in the general appearance of the goods; and (2) Intent to deceive the public and defraud a competitor 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 for sale to the public. Actual fraudulent intent need not be shown. E. False Designation of Origin; False Description or Representation (Sec 169)