Negre Notes IP Lecture November 24, 2017

TRADEMARK
Any visible sign capable of distinguishing the goods or services produced or provided
by one enterprise from those of other enterprises
o Visible sign (NOT sound or smell)
o Distinctive

Distinctiveness of a mark
Generic > no one is supposed to use it (ie. Aspirin)
Descriptive > describes the product directly, immediately
Suggestive (inherently distinctive) > blu ray , makes you think what the product is ie.
Jaguar
Arbitrary or fanciful (inherently distinctive) > apple
o Arbitrary: common word used arbitrarily (Apple)

Ownership of a mark
Sec. 122
o 159.1
TM rights are acquired through valid registration
o BUT see Berris v Abyadang and EY Industrial v Shen Dar > ownership acquired
through prior use (Negre disagrees with the decision because the law is clear,
this is the old law)

Prior use NOT a requirement before application but there must be ACTUAL use after
application within 3 years from filing of application
o Declaration of Actual use
Protection
o 10 years from registration
renewable every ten years

rights of TM owner
right to exclusive use of the mark in connection with ones own goods or services
resulting in likelihood of confusion
right to prevent others from use of an identical mark for the same, similar or related
goods or services

will TM registration abroad be valid and binding here?

NO, GR is territoriality
BUT exceptions
o Internationally well-known mark (lacoste, In n out)
o Bad faith registration (Birkenstock in Marikina)
BF in TM is NOT BF in tort but mere knowledge of existence of a prior
user, no need for bad intent
o Dilution of mark
TM Infringement
Elements
o Ownership of TM through registration
o TM is reproduces, counterfeited, copied, or clourably imitated by another
Colorable imitation (Rule 18, Sec. 4, AM 10-3-10 SC)
Kamukha
Ounterfeiting: Class A
o Unauthorized use with sale, offering for sale or advertising of any such goods,
business or services or those related
Use of identical or similar mark for non-identical, dissimilar or non-
related goods = No infringement
o Likelihood of confusion
Gravamen of infringement
NO actual confusion necessary, only likelihood
Types
As to the goods themselves
Source of origin of such goods (Mcdo Case) > 434 SCRA 473
(2004)

Mory Cario C2018

 Imam buy this sana but I bought the wrong one pala
Tests of confusion
Diaz v People
Dominancy Test
Prevalent features of the product
What the consumer remembers
GR word mark is the one remembered
Holistic Test
Marks in their entirety

Other factors
Idem Sonans rule
Aural effects of the words and lettered cotaned in the
marks are also considered in determining the issue of
confusin similarity
o Pycogenol v pco-genol

TM fair Use
Sec. 148
Using bona fide their names for purposes of mere identification and cannot mislead the
public as to the source of the goods or services

Tradename infringement
Same protection as for TOM
o Sec. 165. 3 in relation to Sec. 153 to 156 IPC
Only but big difference: registration is NOT a requirement for ownership of a
Tradename
o Sec. 163.2 (a) IPC
o Registration with the IPO
o GR 169504 March 2010 Coffee partnrs inc v san Francisco coffee

All that is required is that the Trade name is previously used in trade or commerce in the
Philippines

Sec. 165. 2(b) IPC

Tradename infringement
Elements
o Same BUT registration with IPO not required

Unfair competition
Protecting ones good will
Passing off or attempting to pass off (GR 169974, 2010)
Hoarding of softdrink or beer bottles (not unfair under IPC but yes under CC)
Elements
o General appearance
o Intent to deceive
True test of unfair competition
o Whether there is an intent to deceive

Mory Cario C2018