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distinctive
Common-law trademarks, and the right to their
exclusive use, are, of course, to be classed among
property rights but only in the sense that a man's right
to the continued enjoyment of his trade reputation and
the good will that flows from it, free from unwarranted
interference by others, is a property right, for the
protection of which a trademark is an instrumentality...
The right grows out of use, not mere adoption.
it is plain that in denying the right of
property in a trademark it was
intended only to deny such property
right except as appurtenant to an
established business or trade in
connection with which the mark is
used.
Trademark rights are
not property rights in
gross
He has no property in that mark per se, any more
than in any other fanciful denomination he may
assume for his own private use, otherwise than with
reference to his trade. If he does not carry on a
trade in iron, but carries on a trade in linen, and
stamps a lion on his linen, another person may
stamp a lion on iron; but when he has appropriated
a mark to a particular species of goods, and caused
his goods to circulate with this mark upon them, the
court has said that no one shall be at liberty to
defraud that man by using that mark, and passing
off goods of his manufacture as being the goods of
the owner of that mark
The spark plugs, though used, are nevertheless
Champion plugs and not those of another make
Quality Costs
Modern Trademark Functions
SECTION 168. Unfair Competition, Rights, Regulation and Remedies. — 168.1. A person who has identified in the mind of the public the goods
he manufactures or deals in, his business or services from those of others, whether or not a registered mark is employed, has a property right in the
goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights.
168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him
or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to
produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of
unfair competition:
(a) Any person, who is selling his goods and gives 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 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 who shall commit any other act contrary to good faith of a nature
calculated to discredit the goods, business or services of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis.
SECTION 169. False Designations of Origin; False Description or Representation. — 169.1. Any person who, on or in connection with any goods or
services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of
origin, false or misleading description of fact, or false or misleading representation of fact, which:
(a) Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another
person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person; or
(b) In commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another
person's goods, services, or commercial activities, shall be liable to a civil action for damages and injunction provided in Sections 156 and 157 of this
Act by any person who believes that he or she is or is likely to be damaged by such act.
169.2. Any goods marked or labelled in contravention of the provisions of this Section shall not be imported into the Philippines or admitted entry
at any customhouse of the Philippines. The owner, importer, or consignee of goods refused entry at any customhouse under this section may have any
Trademark Unfair
Competition
committed
Unfair Competition
Should Trademark Law be associated with
Copyrights and Patents?
Pros 1. Copyrights and patents were used to develop TM doctrines.2. Similar subject matter – embodied the personality of the owner.Cons1. No creation of works2. Copyright and Patents are
concerned with the creation and its protection, whereas TM is concerned with forgery and fraud
Trademarks - any visible sign capable of distinguishing
the goods (trademark) or services (service mark) of an
enterprise and shall include a stamped or marked
container of goods. A Trade name means the name or
designation identifying or distinguishing an enterprise
Protects owners and public from Encourages and rewards Encourages and rewards
Purpose
unfair competition. creative expression. innovation.
How to
Registration. Creation Registration
Obtain Rights
Principal
Advantages Prima facie evidence of validity and Prima facie evidence of
Gives rise to Patent rights
of ownership; gives rise to TM rights ownership
Registration
Infringement
Registration required Registration not required Registration required.
Prerequisites
Unauthorized
Infringement Standard Likelihood of confusion Unauthorized copying
manufacture, use or sale
WEAK
STRONG
Trademark Copyright
Patents
Sources of Trademark Law
IP Code
Madrid Protocol
Trademark Regulations
Regulations
In an ascending order roughly reflecting their eligibility
to trademark status and the degree of protection
accorded, the categories of terms are:
Generic
(1) Generic
(2) Descriptive
(3) Suggestive
(4) Arbitrary or Fanciful
In the former case [generic] any claim to an
exclusive right must be denied since this in effect
would confer a monopoly not only of the mark but
of the product by rendering a competitor unable
effectively to name what it was endeavoring to
sell. In the latter case [descriptive] the law strikes
the balance, with respect to registration, between
the hardships to a competitor in hampering the use
of an appropriate word and those to the owner
who, having invested money and energy to endow
a word with the good will adhering to his
enterprise, would be deprived of the fruits of his
efforts.
i. Consumers’ testimony and surveys. ii.Usage as to
how long you have been using the name.iii.
Advertising and volume of sales.
Use can be
Shangri-La
outside Philippines
Use can be
outside Philippines Use can be outside
Harvard
for Well-Known Philippines
Marks
A certificate of registration of a mark shall be prima
facie evidence of the validity of the registration, the
registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the same in
connection with the goods or services and those that
are related thereto specified in the certificate (Section
138, IP Code)
A certificate of registration is valid for ten (10) years.
Declaration of Use and Renewal
Sec. 147. Rights Conferred147.1. The owner of a registered
mark shall have the exclusive right to prevent all third parties
not having the owner’s consent from using in the course of trade
identical or similar signs or containers for goods or services
which are identical or similar to those in respect of which the
trademark is registered where such use would result in a
likelihood of confusion. In case of the use, of an identical sign
for identical goods or services, a likelihood of confusion shall be
presumed.147.2. The exclusive right of the owner of a well-
known mark defined in Subsection 123.1(e) 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 use of that mark in relation to those goods or
services would indicate a connection between those goods or
services and the owner of the registered mark: Provided further,
That the interests of the owner of the registered mark are likely
to be damaged by such use.
In any suit for infringement, the owner of the registered
mark shall not be entitled to recover profits or
damages unless the acts have been committed with
knowledge that such imitation is likely to cause
confusion, or to cause mistake, or to deceive. Such
knowledge is presumed if the registrant gives notice
that his mark is registered by displaying with the mark
the words "Registered Mark" or the letter R within a
circle or if the defendant had otherwise actual notice of
the registration. (Sec. 158)
The registrant of a trademark ... shall give notice that
the same is registered by displaying with the mark
the words “Registered Mark” or the letter R within a
circle or “Reg.IPOPHL”... (IPO Office Order 187
Series of 2010)
Sec. 165. Trade Names or Business Names165.1. A name or
designation may not be used as a trade name if by its nature or the use
to which such name or designation may be put, it is contrary to public
order or morals and if, in particular, it is liable to deceive trade circles or
the public as to the nature of the enterprise identified by that
name.165.2. (a) Notwithstanding any laws or regulations providing for
any obligation to register trade names, such names shall be protected,
even prior to or without registration, against any unlawful act committed
by third parties.(b) In particular, any subsequent use of the trade name
by a third party, whether as a trade name or a mark or collective mark,
or any such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.165.3. The remedies provided for in
Sections 153 to 156 and Sections 166 and 167 shall apply mutatis
mutandis.165.4. Any change in the ownership of a trade name shall be
made with the transfer of the enterprise or part thereof identified by that
name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis
mutandis.
• IPV and cancellation
• Competent Authority
• Evidence of well-known
Factors in Determining Well-Known Status
deceptive
Rationales for Prohibiting
Scandalous and Immoral
Marks
• Not an attempt to legislate morality
but to avoid using government
time, services and money for such
marks (Free Speech issue?)
• Not to give government stamp of
approval
• Protect consumer sensibilities
Shocking to the sense of truth,
decency or propriety; disgraceful;
offensive; disreputable; giving
offense to the conscience and
moral feelings; calling out for
condemnation; calling out for
condemnation; vulgar
Test
• What is the meaning of the mark?
(In the context of the marketplace
as applied to the goods; not just
per se)
• Is the meaning scandalous to the
substantial composite of the
general public? (In the context of
contemporary attitudes; not just
target consumers)
(a) Who is the targeted group? It’s
usually the group of people
complaining about the mark.
(b) What does the mark mean?
(c) Could the mark disparage a
substantial composite of the
targeted group?
(a) Consists of immoral,
deceptive or scandalous matter,
or matter which may disparage ...
R.A. 8392 (e) Consists
R.A.of166
a mark or
trade-name which, when
(g) Is likely to mislead the applied to or used in
public, particularly as to the
nature, quality, characteristics
connection with the goods,
or geographical origin of the business or services of the
goods or services;
(j) Consists exclusively of
applicant is merely
signs or of indications that descriptive or deceptively
may serve in trade to misdescriptive of them, or
designate the kind, quality, when applied to or used in
quantity, intended purpose, connection with the goods,
value, geographical origin, business or services of the
time or production of the
goods or rendering of the
applicant is primarily
services, or other geographically descriptive or
characteristics of the goods deceptively misdescriptive of
signs or devices (f) Except as expressly
mentioned in excluded in paragraphs
paragraphs (j), (k), (a), (b), (c) and (d) of
and (l), nothing shall this section, nothing
prevent the herein shall prevent the
registration of any registration of a mark or
such sign or device trade-name used by the
which has become applicant which has
distinctive in relation to become distinctive of
the goods for which the applicant's goods,
registration is business or services.
requested as a result
of the use that have
• Deceptive
• Merely Descriptive
• Deceptively Misdescriptive
• Primarily Geographical Descriptive
• Primarily Geographically
Deceptively Misdescriptive
Conclusion:
Deceptively Misdescriptive
Do we require secondary meaning?
1) Is the term misdescriptive of the character,
quality, function, composition or use of the goods?
Yes.
2) If so, are prospective purchasers likely to believe
the misdescription?
Yes.
3) If so, is the misdescription likely to affect the
decision to buy?
Yes.
Result: Mark is Deceptive
Yes to 1 and 2 mark is deceptively misdescriptive
Yes to only 1 mark is arbitrary
Geographical Marks
(g) Is likely to mislead the public, particularly as
to the nature, quality, characteristics or
geographical origin of the goods or services;
1) with Deceptive or
De facto vs De jure
functionalityfunctionality
De facto - has some utilitarian
purpose. Every part serves a
functional purpose
•ACTUAL (NON-USE)
•CONSTRUCTIVE
NON-USE
124.2. The applicant or the registrant shall file a
declaration of actual use of the mark with
evidence to that effect, as prescribed by the
Regulations within three (3) years from the filing
date of the application. Otherwise, the
application shall be refused or the mark shall be
removed from the Register by the Director.
Sec. 145. DurationA certificate of registration
shall remain in force for ten (10) years:
Provided, That the registrant shall file a
declaration of actual use and evidence to that
effect, or shall show valid reasons based on
the existence of obstacles to such use, as
prescribed by the Regulations, within one (1)
year from the fifth anniversary of the date of
the registration of the mark. Otherwise, the
mark shall be removed from the Register by
the Office.
Sec. 146. Renewal146.1. A certificate of
registration may be renewed for periods of ten
(10) years at its expiration upon payment of the
prescribed fee and upon filing of a request.
Opinion and/or
Examination amendment
Issuance of Opposition
Certificate
REGISTRATION OF
TRADEMARKS
Bureau of Trademarks (Section 9)
OPPOSITION
Bureau of Legal Affairs (Section 10.1)
CANCELLATION and
INFRINGEMENT
Bureau of Legal Affairs (Section 10.1)
Holistic or Totality
entirety of the marks in question must be
considered as they appear in their
respective labels or hang tags
Scope of Protection
Non-competing goods may be those which,
though they are not in actual competition,
are so related to each other that it can
reasonably be assumed that they originate
from the manufacturer, in which case,
confusion of business can arise out of the
use of similar marks.
Skechers v. Trendworks