Copyright
Form of protection to the
authors of original works of
authorship
This includes dramatic, literary,
musical, artistic and certain
other intellectual works, both
published and unpublished
Rights of owner of copyright:
Exclusive right to
reproduce the
copyrighted work
Prepare derivative
works
Distribute copies or
phonorecords of the
copyrighted work
Perform copyrighted
work publicly
Display the copyrighted
work publicly
PURPOSE:
Protect works of authorship as
fixed in a tangible form of
expression
Copyright covers works of art,
photos, pictures, graphic
designs, drawings, images,
songs, music, sound recordings,
books, manuscripts,
publications and other written
works, plays, movies, shows and
other performance arts
TEXT and GRAPHICS
Trademark Patent
Andy distinctive Word, name, Grant of a property right to the
symbol or device used in trade inventor
with goods to indicate the ANY TECHNICSAL SOLUTION
source of the goods and to ANY FIELD OF HUMAN ACTIVITY
distinguish them from the
goods of the others NEW
INVENTIVE
SIGNIFICANCE: INDUSTRIAL
To prevent others from using
confusingly similar mark
Does not prevent others from Patent grant is the right to
making the same goods or from exclude others from making,
selling the same goods or using, offering for sale, or
services under a clearly selling the invention or
different mark importation
PURPOSE: The right granted
Protect words, phrases, and
logos used in regulated
commerce to identify the
SOURCE of goods and or
services
Slogan
GSK v. Atty Padilla IPC No. 14-
2012-00172
The essence of trademark
registration is
to give protection to the owners
It is also 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 to the public that they
are procuring the genuine
article
To prevent fraud and imposition

To protect the manufacturer

against substitution and sale of
an inferior and different article
as his product

IP CODE Sec 123.1 provides that

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, in
respect of the same goods or
services or closely related goods
or services if it nearly resembles
such a mark as to be likely to
deceive or cause confusion

Trademarks are designed not

just for the consumption of the
eyes, but also to appeal to the
other senses,, such as the
faculty of hearing

Confusion cannot be avoided by

merely adding, removing or
changing some letters of a
registered mark

Confusing similarity exists when

there is such a close or
ingenuous imitation as to be
calculated to deceive ordinary
persons, or such resemblance to
the original as to deceive
ordinary purchaser as to cause
him to purchase the one
supposing it to be the other

COLORABLE IMITATION
Refers to such similarity in form,
context, words, sound, meaning
special arrangements or general
appearance of the trademark or
tradename with that of the
 other mark or trade name in
their over-all presentation or in
their essential, substantive and
distinctive parts as would likely
to mislead or confuse persons in
the ordinary course of
purchasing the genuine article

MAIN ISSUE:
Whether the use of such mark
will likely cause confusion or
mistake on the part of the
buying public

It would be sufficient, for

purposes of the law, that the
similarity between the two
labels is such that there is a
possibility or likelihood of the
purchaser of the older brand
mistaking the newer brand for it

The likelihood of confusion

would subsist not only on the
purchasers perception of goods
but on the origins thereof

TRADEMARK INFRINGEMENT

HOW TO DETERMINE SIMILARITY AND LIKELIHOOD OF CONFUSION

Dominancy Test

Focuses on the similarity of the prevalent or dominant features of the competing trademarks
that might cause confusion, mistake and deception in the mind of the purchasing public
Duplication or imitation is not necessary
It is not required that the mark sought to be registered suggests an effort to imitate
Emphasizes the aural and visual impressions created by the marks on the buyers of goods, giving
little weight to factors like prices, quality, sales outlets and market segments
Holistic or Totality Test

Considers the entirety of the marks as applied to the products, including the labels and
packaging, in determining confusing similarity
The discerning eye of the observer must focus not only on the predominant words, but also on
the other features appearing on both labels so that the observer may draw conclusion on
whether one is confusingly similar to the other

2 Types of Confusion:

1. Confusion of goods (product confusion)

a. Where the ordinary prudent purchaser would be induced to purchase one product in
the belief that he was purchasing the other
2. Confusion of business (source or origin confusion)
a. 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 either into that belief or into the belief that there is some connection between
the two parties, though inexistent

Criteria for determining whether a mark is well-known (Registration not necessary under the Paris
Convention)

1. 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
2. The market share, in the Philippines and in other countries, of the goods and/or services to
which the mark applies
3. The degree of the inherent or acquired distinction of the mark
4. The quality image or reputation acquired by the mark
5. The extent to which the mark has been registered in the world
6. The exclusivity of registration attained by the mark in the world
7. The commercial value attributed to the mark in the world
8. The record of succession protection of the rights in the mark
9. The outcome of litigations dealing with the issue of whether the mark is well-known
10. 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

Doctrine of Secondary Meaning (Sec.4 (f), Chapter II-A of the Trademark Law:
Nothing herein shall prevent the registration of a mark or trade-name used by the applicant which has
become distinctive of the applicants goods, business or services. The Director may accept as prima facie
evidence that the mark or trade-name has become distinctive

The doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with
reference to an article on the market, because geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean
that the article was his product.

KINDS OF TRADEMARKS:

FANCIFUL MARK

One that is created for the sole purpose of functioning as a trademark

Famous and successful fanciful trademarks include Xerox for reprographic supplies and Kodad for
photographic supplies

Strongest because they are invented and few competitors may claim that they accidentally adopted the
same trademark

ARBITRARY MARKS

Words that have some meaning to the public, but when used in connection with the relevant products,
do not immediately suggest or describe any quality of the products

Example: Baby Ruth

These are the names or elements with significance in certain concepts

UNFAIR COMPETITION

Any conduct may be said to constitute unfair competition if the effect is to pass off on the public the
goods of one man as the goods of another.

The choice of B[ig] M[ak] as tradename by defendant corporation is not merely for sentimental reasons
but was clearly made to take advantage of the reputation, popularity and the established goodwill of
plaintiff McDonalds.

For, as stated in Section 29, a person is guilty of unfair competition who in selling his goods shall give
them the general appearance, of goods of another manufacturer or dealer, either as to the goods
themselves or 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 a manufacturer or dealer other than the actual manufacturer or
dealer.

Thus, plaintiffs have established their valid cause of action against the defendants for trademark
infringement and unfair competition and for damages
Unfair competition is defined as the employment of deception or any other means contrary to good
faith by which a person shall pass off the goods manufactured by him or in which he deals, or his
business, or service, for those of another who has already established good will for his similar good,
business or services, or any acts calculated to produce the same result

To constitute unfair competition therefore it must necessarily follow that there was malice and that the
entity concerned was in bad faith.

In particular, and without in any way limiting the scope of unfair

competition, the following shall be deemed guilty of unfair competition:
(a) Any person, who in selling his goods shall give them the general
appearance of goods of another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the packages in which they are
contained, or the devices or words thereon, or in any feature of their
appearance, which would be likely to influence purchasers to believe that the
goods offered are those of a manufacturer or dealer, other
than the actual manufacturer or dealer, or who otherwise clothes the goods with
such appearance as shall deceive the public and defraud another of his legitimate
trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;

(b) Any person who by any artifice, or device, or who employs any other means
calculated to induce the false belief that such person is offering the services of
another who has identified such services in the mind of the public; or

(c) Any person who shall make any false statement in the course of trade or
whoshall commit any other act contrary to good faith of a nature calculated to
discredit the goods, business or services of another.

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.
Big Mak case:
Unfair competition is broader than trademark infringement and includes passing
off goods with or without trademark infringement. Trademark infringement is a
form of unfair competition.[77] Trademark infringement constitutes unfair
competition when there is not merely likelihood of confusion, but also actual or
probable deception on the public because of the general appearance of the
goods.
There can be trademark infringement without unfair competition as when the
infringer discloses on the labels containing the mark that he manufactures the
goods, thus preventing the public from being deceived that the goods originate
from the trademark owner
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
TRADEMARK INFRINGEMENT

Any person who

[1] shall use, without the consent of the registrant, any reproduction, counterfeit, copy or colorable
imitation of any registered mark or trade-name in connection with the sale, offering for sale, or
advertising of any goods, business or services on or in connection with which such use is likely to cause
confusion or mistake or to deceive purchasers or others as to the source or origin of such goods or
services, or identity of such business

[2] reproduce, counterfeit, copy, or colorably imitate any such mark or trade-name and apply such
reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used upon or in connection with such goods, business or
services,

shall be liable to a civil action by the registrant for any or all of the remedies herein provided.

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