ARTICLE OF COMMERCE; AS TRADEMARK,
PATENT & COPYRIGHT (2010)
Can an article of commerce serve as a
trademark and at the same time enjoy patent
and copyright protection? Explain and give an
example. (2%)
SUGGESTED ANSWER:
A stamped or marked container of goods can
be registered as trademark(subsections 113.1
of the Intellectual Property Code). An original
ornamental design or model for articles of
manufacturer can be copyrighted (Subsection
172.1 of the Intellectual Property Code). An
ornamental design cannot be patented,
because aesthetic creations cannot be
patented (Section 22of the Intellectual
Property Code).However, it can be registered
as an industrial design (Subsections 113.1
and172.1 of the Intellectual Code). Thus, a
container of goods which has an original
ornamental design can be registered as
trademark, can be copyrighted, and can be
registered as an industrial design.
TRADEMARK; UNFAIR COMPETITION (2010)
For years, Y has been engaged in the parallel
importation of famous brands, including
shoes carrying the foreign brand MAGIC.
Exclusive distributor X demands that Y cease
importation because of his appointment as
exclusive distributor of MAGIC shoes in the
Philippines. Y counters that the trademark
MAGIC is not registered with the Intellectual
Property Office as a trademark and therefore
no one has the right to prevent its parallel
importation.
a. Who is correct? Why? (2%)
SUGGESTED ANSWER:
X is correct. His rights under his exclusive
distributorship agreement are property rights
entitled to protection. The importation and
sale by Y of MAGIC shoes constitute unfair
competition (Yuv. Court of Appeals, 217 SCRA
328(1993)). Registration of the trademark is
not necessary in case of an action for unfair
competition (Del Monte Corporation v. Court
of Appeals, 181SCRA 410 (1990)).
b. Suppose the shoes are covered by a
Philippine patent issued to the owner, what
would your answer be? Explain. (2%)
SUGGESTED ANSWER:
A patent for a product confers upon its owner
the exclusive right of importing the product
(Subsection 71.1 of the Intellectual Property
Code). The importation of a patented product
without the authorization of the owner of the
patent constitutes infringement of the patent
(Subsection 76.1 of the Intellectual Property
Code). X can prevent the parallel importation
of such shoes by Y without its authorization.
TRADEMARKS (2014)
Jinggy went to Kluwer University (KU) in
Germany for his doctorate degree (Ph.D.). He
completed his degree with the highest honors
in the shortest time. When he came back, he
decided to set-up his own graduate school in
his hometown in Zamboanga. After seeking
free legal advice from his high-flying lawyer-
friends, he learned that the Philippines
follows the territoriality principle in trademark
law, i.e., trademark rights are acquired
through valid registration in accordance with
the law. Forth with, Jinggy named his school
the Kluwer Graduate School of Business of
Mindanao and immediately secured
registration with the Bureau of Trademarks.
KU did not like the unauthorized use of its
name by its top alumnus no less. KU sought
your help. What advice can you give KU? (4%)
SUGGESTED ANSWER:
I can advise KU to file a petition to cancel the
registration of the name “Kluwer” Graduate
School of Business of Mindanao “KGSBM”
with the Bureau of Trademarks.
The petition could be anchored on the
following facts: Kluwer University is the owner
of the name “Kluwer.” Jinggy registered the
trademark in bad faith. He came to know of
the trademark because he went to Kluwer
University in Germany for his doctorate
degree. KU is the owner of the name “Kluwer”
and has the sole right to register the same.
Foreign marks that are not registered are still
accorded protection against infringement
and/or unfair competition under the Paris
Convention for the Protection of Industrial
Property. Both the Philippines and Germany
are signatories to the Paris Convention. Under
the said Convention, the trademark of a
national or signatory to the Paris Convention
is entitled to its protection in other countries
that are also signatories to the Convention
without need of registering the trademark.
The petition could also be based on the fact, if
it were proven by KU, that “Kluwer: is a well-
known mark and entitled to protection as KU
and KGSBM belong to the same class of
services i.e. Class 41 (education and
entertainment). KU must also prove that a
competent authority of the Philippines has
designated “Kluwer” to be well-known
internationally and in the Philippines.
Finally, the petition could also be based on
the fact, if it were proven by KU, that
“Kluwer” is a trade name that KU has adopted
and used before its use and registration by
Jinggy (Ecole de Cuisine Manille [Cordon Bleu
of the Philippines], Inc. v. Renaud Cointreau &
Cie and Le Cordon Bleu Int’l., B.V., G.R. No.
185830, June 5, 2013).
TRADEMARKS; HOLISTIC OR DOMINANCY
TEST (2014)
Skechers Corporation sued Inter-Oacific for
trademark infringement, claiming that Inter-
Pacific used Skechers’ registered “S” logo
mark on Inter-Pacific’s shoe products without
its consent. Skechers has registered the
trademark “SKECHERS” and the trademark “S”
(with an oval design) with the IPO.
In its complaint, Skechers points out the
following similarities: the color scheme of the
blue, white, and gray utilized by Skechers.
Even the design and “wave-like” pattern of
the mid-sole and outer sole of Inter Pacific’s
shoes are very similar to Skechers’ shoes, if
not exact patterns thereof. On the side of
Inter-Pacific’s shoes, near the upper part,
appears the stylized “S” placed in the exact
location as that of the stylized “S” the
Skechers shoes. On top of the “tongue” of
both shoes, appears the stylized “S” in
practically the same location and size.
In its defense, Inter-Pacific claims that under
the Holistic Test, the following dissimilarities
are present: the mark “S” found in Strong
shoes is not enclosed in an “oval design;” the
word “Strong” for Inter-Pacific and “Skechers
USA” for Skechers; and, Strong shoes are
modestly priced compared to the costs of
Skechers shoes.
Under the foregoing circumstances, which is
the proper test to be applied- Holistic or
Dominancy Test? Decide.
SUGGESTED ANSWER:
Considering the facts given and the arguments
of the parties, the dominancy test is the
proper test to apply. Thus, the appropriation
and use of the letter “S” by Inter Pacific on its
rubber shoes constituted an infringement of
the trademark of Skechers.
 dominant feature of the trademark of
Skechers, already constitutes infringement
The essential element of infringement under under the Dominancy Test (Skechers USA Inc
the IPC is that the infringing mark is likely to v. Inter Pacific Industrial Trading Corp., et al.,
cause confusion. In determining similarity and
G.R. No. 164321, Nov. 30, 2006).
likelihood of confusion, jurisprudence has
developed tests- the Dominancy and the
Holistic Tests. The Dominancy Test focuses on
the similarity of the competing trademakrs
that might cause confusion, mistake, and
deception in the mind of the purchasing
public. Duplication or imitation is not
necessary; neither is it required that the mark
sought to be registered suggest an effort to
imitate. Given more consideration are 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.

In contrast, the Holistic or Totality Test

necessitates 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 labels so
that the observer may draw conclusion on
whether one is confusingly similar to the
other.

Applying the Dominancy Test to the problem,

we find that the use of the stylized “S” by
Inter-Pacific in its Strong rubber shoes
infringes on the mark already registered by
Skechers with the IPO. While it is undisputed
that stylized “S” of Skechers is within an oval
design, the dominant feature of the
trademark is the stylized “S”, as it is precisely
the stylized “S” which catches the eye of the
purchaser. Thus, even if Inter-Pacific did not
use the oval-design, the mere fact that it used
the same stylized “S”, the same being the