DOCTRINE of CASES (TRADEMARK)

QUALITEX CO. v. JACOBSON PRODUCTS CO., INC. Functionality doctrine - a product feature is functional," and cannot serve as a trademark, "if it is essential to the use or purpose of the article or if it affects the cost or quality of the article," that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage. The registration of a trademark that consists, purely and simply, of a color. Color alone can meet the basic legal requirements for use as a trademark is demonstrated both by the language of the Act, which describes the universe of things that can qualify as a trademark in the broadest of terms and by the underlying principles of trademark law, including the requirements that the mark "identify and distinguish the seller's goods from those manufactured or sold by others and to indicate their source and that it not be "functional. VENANCIO SAMBAR doing business as CVS Garment Enterprises, petitioner, vs. LEVI STRAUSS The cancellation of petitioners copyright was justified because petitioners copyright cannot prevail over respondents registration in the Principal Register of Bureau of Patents, Trademarks, and Technology Transfer. According to Levis, the essence of copyright registration is originality and a copied design is inherently non-copyrightable. They insist that registration does not confer originality upon a copycat version of a prior design. Park N' Fly Inc. v. Dollar Park and Fly, Inc. The holder of a registered mark may rely on incontestability to enjoin infringement, and an infringement action may not be defended on the grounds that the mark is merely descriptive. The declaration that the registrant has an "exclusive right" to use the mark indicates that incontestable status may be used to enjoin infringement. It also refutes any conclusion that an incontestable mark may be challenged as merely descriptive.
COFFEE PARTNERS, INC vs. SAN FRANCISCO COFFEE & ROASTERY, INC.

A trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines.

Applying either the dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name. The descriptive words "SAN FRANCISCO COFFEE" are precisely the dominant features of respondents trade name. Petitioner and respondent are engaged in the same business of selling coffee, whether wholesale or retail. The likelihood of confusion is higher in cases where the business of one corporation is the same or substantially the same as that of another corporation. In this case, the consuming public will likely be confused as to the source of the coffee being sold at petitioners coffee shops. Petitioners argument that "San Francisco" is just a proper name referring to the famous city in California and that "coffee" is simply a generic term, is untenable. Respondent has acquired an exclusive right to the use of the trade name "SAN FRANCISCO COFFEE & ROASTERY, INC." since the registration of the business name with the DTI in 1995. Thus, respondents use of its trade name from then on must be free from any infringement by similarity. Of course, this does not mean that respondent has exclusive use of the geographic word "San Francisco" or the generic word "coffee." Geographic or generic words are not, per se, subject to exclusive appropriation. It is only the combination of the words "SAN FRANCISCO COFFEE," which is respondents trade name in its coffee business, that is protected against infringement on matters related to the coffee business to avoid confusing or deceiving the public. DOMINANCY TEST - focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion and deception, thus constituting infringement. If the competing trademark contains the main, essential, and dominant features of another, and confusion or deception is likely to result, infringement occurs. Exact duplication or imitation is not required. The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or to deceive consumers. HOLISTIC TEST - entails a consideration of 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 marks in order that the observer may draw his conclusion whether one is confusingly similar to the other. 1 | IP FINALS DOCTRINE

Zatarains, Inc., v. Oak Grove Smokehouse, Inc. and Visko's Fish Fry, Inc.

Potential trademark may be classified as: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. Generic - "the name of a particular genus or class of which an individual article or service is but a member. Basic nature of article or service Descriptive term - identifies a characteristic or quality of an article or service such as its color, odor, function, dimensions, or ingredients Ordinarily not protected but when it acquire secondary meaning in the mind of consuming public it become protected as trademark Suggestive term suggests, rather than describes, some particular characteristic of the goods or services to which it applies and requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the goods and services Ex. Coppertone Arbitrary or fanciful terms bear no relationship to the products or services to which they are applied. Like suggestive terms, arbitrary and fanciful marks are protectable without proof of secondary meaning. Ex. Kodak
CONCEPT OF SECONDARY MEANING recognizes that words with an ordinary and primary meaning of their own "may by long use with a particular product, come to be known by the public as specifically designating that product."

Burden of proof: is with the plaintiff Proof of secondary meaning with respect to descriptive marks in order to be protected. Defense : fair use and in good faith DERMALINE, INC. vs. MYRA PHARMACEUTICALS, INC. When one applies for the registration of a trademark or label which is almost the same or that very closely resembles one already used and registered by another, the application should be rejected and dismissed outright, even without any opposition on the part of the owner and user of a previously registered label or trademark. This is intended not only to avoid confusion on the part of the public, but also to protect an already used and registered trademark and an established goodwill. MANUEL SAMSON VS. WILFRO LUMINLUN (Samson) Defendant had every right and prerogativetorevoke the authority granted toplaintiff on the use of the trademark for OTTO for jeans only when plaintiff failed to pay a single centavo of royalty and had likewise violated the grant of authority by illegally manufacturing and distributing aside from jeans, other products like jackets, skirts, shirts, blouses and shorts which are not covered by the grant of authority granted to him. COMPANIA GENERAL DETABACOS DE FILIPINAS andLA FLOR DE LA ISABELA, INC. vs. TABAQUERIA DE FILIPINAS E.Y. INDUSTRIAL SALES, INC. vs. SHEN DAR ELECTRICITY AND MACHINERY CO., LTD. The fact that no petition for cancellation was filed against the COR issued to Shen Dar does not preclude the cancellation of Shen Dars COR. It must be emphasized that, during the hearing for the cancellation of EYIS COR before the BLA, Shen Dar tried to establish that it, not EYIS, was the true owner of the mark VESPA and, thus, entitled to have it registered. Shen D ar had more than sufficient opportunity to present its evidence and argue its case, and it did. It was given its day in court and its right to due process was respected. The IPO Director Generals disregard of the procedure for the cancellation of a registered mark was a valid exercise of his discretion. FREDCO MANUFACTURING CORPORATION vs. PRESIDENT AND FELLOWS OF HARVARD COLLEGE HARVARD UNIVERSITY Fredcos registration was already cancelled on 30 July 1998 when it failed to file the required affidavit of use/non -use for the fifth anniversary of the marks registration. Hence, at the time of Fredcos filing of the Petition for Cancellation before the Bureau of Legal Affairs of the IPO, Fredco was no longer the registrant or presumptive owner of the mark Harvard. SHANGRI-LA INTERNATIONAL HOTEL MANAGEMENT, LTD.vs. DEVELOPERS GROUP OF COMPANIES, INC. Whether the use of said mark and logo be considered as infringement? 2 | IP FINALS DOCTRINE

No, with the double infirmity of lack of two-month prior use, as well as bad faith in the respondent's registration of the mark, it is evident that the petitioners cannot be guilty of infringement. It would be a great injustice to adjudge the petitioners guilty of infringing a mark when they are actually the originator and creator thereof. NOTES: RA 166 prove first actual use in the country for 2 months Q. Was there fraud on the part of respondent? Yes, knowledge of S logo on his visit to the hotel. Trademark is jurisdictional. Mark held invalid. Paris Convention cannot register mark own by somebody else around the world. (See dispositive portion of SHANGRILA CASE) PROSOURCE INTERNATIONAL, INC. vs. HORPHAG RESEARCH MANAGEMENT Petitioner is liable for trademark infringement. Applying the Dominancy Test in determining whether there was a confusing similarity between the marks PYCNOGENOL and PCO-GENOL. Applying the test, the trial court found, and the CA affirmed, that: Both the words PYCNOGENOL and PCO-GENOLS have the same suffix "GENOL" which on evidence, appears to be merely descriptive and furnish no indication of the origin of the article and hence, open for trademark registration by the plaintiff thru combination with another word or phrase such as PYCNOGENOL, Exhibits "A" to "A-3". Furthermore, although the letters "Y" between P and C, "N" between O and C and "S" after L are missing in the [petitioner's] mark PCO-GENOLS, nevertheless, when the two words are pronounced, the sound effects are confusingly similar not to mention that they are both described by their manufacturers as a food supplement and thus, identified as such by their public consumers. And although there were dissimilarities in the trademark due to the type of letters used as well as the size, color and design employed on their individual packages/bottles, still the close relationship of the competing products' name in sounds as they were pronounced, clearly indicates thatpurchaserscouldbe misled into believing that they are the sameand/or originates from a common source and manufacturer. SUPERIOR COMMERCIAL ENTERPRISES, INC. vs. KUNNAN ENTERPRISES LTD. AND SPORTS CONCEPT & DISTRIBUTOR, INC. Well-entrenched in our jurisdiction is the rule that the right to register a trademark should be based on ownership. When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. Under the Trademark Law, only the owner of the trademark, trade name or service mark used to distinguish his goods, business or service from the goods, business or service of others is entitled to register the same. An exclusive distributor does not acquire any proprietary interest in the principals trademark and cannot register it in his own name unless it is has been validly assigned to him. To establish trademark infringement, the following elements must be proven: (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. (MEMORIZE) Based on these elements, we find it immediately obvious that the second element the plaintiffs ownership of the mark was what the Registration Cancellation Case decided with finality. On this element depended the validity of the registrations that, on their own, only gave rise to the presumption of, but was not conclusive on, the issue of ownership. MANOLO P. SAMSON, petitioners, vs.CATERPILLAR, INC. Where the similarity in the appearance of the goods as packed and offered for sale is so striking, this fact shows intent on the part of defendant to deceive the public and defraud plaintiff out of his trade. The intent to deceive may be inferred from the similarity of the goods as packed and offered for sale, and an action will lie to restrain such unfair competition and for damages. SKECHERS, U.S.A., INC. vs. INTER PACIFIC INDUSTRIAL TRADING CORP., TRENDWORKS INTERNATIONAL CORPORATION Defendants in cases of infringement do not normally copy but only make colorable changes. LEVI STRAUSS (PHILS.), INC. vs. TONY LIM We are of the view that the probability of deception must be tested at the point of sale since it is at this point that the ordinary purchaser mulls upon the product and is likely to buy the same under the belief that he is buying another. The test of fraudulent simulation is to be found in the likelihood of deception, or the possibility of deception of some persons in some 3 | IP FINALS DOCTRINE

measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The elements of unfair competition under Article 189(1) of the Revised Penal Code are: That the offender gives his goods the general appearance of the goods of another manufacturer or dealer; That the general appearance is shown in the (1) goods themselves, or in the (2) wrapping of their packages, or in the (3) device or words therein, or in (4) any other feature of their appearance; That the offender offers to sell or sells those goods or gives other persons a chance or opportunity to do the same with a like purpose; and That there is actual intent to deceive the public or defraud a competitor.

IN-N-OUT BURGER, INC., vs. SEHWANI, INCORPORATED AND/OR BENITAS FRITES, INC. Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. Any foreign national or juridical person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines under existing laws. Sehwani use of IN-N-OUT BURGER in businesses signages reveals fraudulent intent to deceive purchasers. We also note that In-N-Out Burger is likewise, petitioners corporate name. It has used the "IN-N-OUT" Burger name in its restaurant business in Baldwin Park, California in the United States of America since 1948. Thus it has the exclusive right to use the tradenames "In-N-Out" Burger in the Philippines and the respondents are unlawfully using and appropriating the same.

MCDONALDS CORPORATION and MCGEORGE FOOD INDUSTRIES, INC vs. L.C. BIG MAK BURGER, INC. 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. The essential elements of an action for unfair competition are confusing similarity in the general appearance of the goods 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. 5 dominant features: 1. the words are big 2. sounds exactly the same 3. first two letter of 2nd word the same 4. last letter of second made K sound the same to C 5. PATENT CASE DIAMOND, COMMISSIONER OF PATENTS AND TRADEMARKS v. CHAKRABARTY Title 35 U.S.C. 101 provides for the issuance of a patent to a person who invents or discovers "any" new and useful "manufacture" or "composition of matter." A live, human-made micro-organism is patentable subject matter under 101. Respondent's micro-organism constitutes a "manufacture" or "composition of matter" within that statute. In choosing such expansive terms as "manufacture" and "composition of matter," modified by the comprehensive "any," Congress contemplated that the patent laws should be given wide scope, and the relevant legislative history also supports a broad construction. While laws of nature, physical phenomena, and abstract ideas are not patentable, respondent's claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter - a product of human ingenuity "having a distinctive name, character [and] use." 4 | IP FINALS DOCTRINE

SUGGEST READING full cases about MCDO, SHANGRILA and SUPERIOR.

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