Remedies For Trademark Violation
Remedies For Trademark Violation
COLLEGE OF LAW
TRADEMARK INFRINGEMENT & REMEDIES
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a. exclusive right to prevent all third parties not having the owners 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.
-Provided that the interests of the owner of the registered mark are likely to
be damaged by such use.
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(3) the use of the mark or its colorable imitation by the alleged infringer
results in likelihood of confusion. Of these, it is the element of likelihood
of confusion that is the gravamen of trademark infringement.
I. ADMINISTRATIVE REMEDIES
Elements:
Admin procedure:
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1) Must be verified by complainant
2) Must be filed within four (4) years from the date of the commission
of the violation ,or if date of violation is unknown must be filed within
four (4) years from the date of discovery of the violation
3) Total damages claimed are not less than PHP 200,000.
4) Respondent will receive Summons and Answer the Complaint within
ten (10) days from receipt thereof.
5) Motion to dismiss not allowed.
6.) Case decided by Bureau within thirty (30) days from submission of
the final pleading such as memorandum.
(a) Issuance of a cease and desist order which shall specify the acts
that the respondent shall cease and desist from and shall require him
to submit a compliance report within a reasonable time which shall be
fixed in the Order;
(b) The acceptance of a voluntary assurance of compliance or
discontinuance as may be imposed. Such voluntary assurance
may include one or more of the following:
(i) An assurance to comply with the provisions of the
Intellectual Property Law violated;
(ii) An assurance to refrain from engaging in unlawful and unfair
acts and practices subject of the formal investigations;
(iii) An assurance to recall, replace, repair or refund the money
value of defective goods distributed in commerce;
(iv) An assurance to reimburse the complainant the expenses
and costs incurred in prosecuting the case in the Bureau;
The Director may also require the respondent to submit
periodic compliance reports and file a bond to guarantee compliance of
his undertaking.
(c) The condemnation or seizure of products which are subject
of the offense. The goods seized hereunder shall be disposed of in
such manner as may be deemed appropriate by the Director, such as
by sale, donation to distressed local government units or to charitable
or relief institutions, exportation recycling into other goods, or any
combination thereof, under such guidelines as he may provide;
(d) The forfeiture of paraphernalia and all real and personal
properties which have been used in the commission of the offense;
(e) The imposition of administrative fines in such amount as
deemed reasonable by the Director, which shall in no case be less
than Five Thousand Pesos (P5,000.00) nor more than One
Hundred Fifty Thousand Pesos (P150,000.00). In addition, an
additional fine of not more than One Thousand Pesos
(P1,000.00) shall be imposed for each day of continuing
violation;
(f) The cancellation of any permit, license, authority, or
registration which may have been granted by the Office, or the
suspension of the validity thereof for such period of time as the
Director may deem reasonable which shall not exceed one (1) year;
(g) The withholding of any permit, license, authority or
registration which is being secured by the respondent from the
Office;
(h) The assessment and award of damages;
(i) Censure;
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(j) Other analogous penalties or sanctions such as those provided
under Section 216 of Republic Act No. 8293.
"Section 1. What are the Inter Partes Cases.- The following are the Inter
Partes cases:
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reasonable profit which the complaining party would have made, had
the defendant not infringed his rights, or the profit which the defendant
actually made out of the infringement, or in the event such measure of
damages cannot be readily ascertained with reasonable certainty, then
the court may award as damages a reasonable percentage based upon
the amount of gross sales of the defendant or the value of the services
in connection with which the mark or trade name was used in the
infringement of the rights of the complaining party.
b.IMPOUNDING SALES INVOICES AND DOCUMENTS - 156.2. On
application of the complainant, the court may impound during the
pendency of the action, sales invoices and other documents evidencing
sales.
c.DOUBLE DAMAGES Section 156.3 In cases where actual intent to
mislead the public or to defraud the complainant is shown, in the
discretion of the court, the damages may be doubled.
d.INJUNCTION Section 156.4. The complainant, upon proper showing,
may also be granted injunction.
e.DESTRUCTION OF INFRINGING MATERIALS Section 157.1 In any
action arising under this Act, in which a violation of any right of the
owner of the registered mark is established, the court may order that
goods found to be infringing be, without compensation of any sort,
disposed of outside the channels of commerce in such a manner as to
avoid any harm caused to the right holder, or destroyed; and all labels,
signs, prints, packages, wrappers, receptacles and advertisements in
the possession of the defendant, bearing the registered mark or trade
name or any reproduction, counterfeit, copy or colorable imitation
thereof, all plates, molds, matrices and other means of making the
same, shall be delivered up and destroyed.
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4. Reply;
5. Petition for relief from judgment;
6. Motion for extension of time to file pleadings or other written
submissions, except for the answer for meritorious reasons;
7. Motion for postponement intended for delay;
8. Third-party complaint;
9. Intervention;
10. Motion to hear affirmative defenses; and
11. Any pleading or motion which is similar to or of like effect as
any of the foregoing.
f. Usually just requires the filing of Position Papers within ten (10) days
from the termination of clarificatory hearing or hearings (trial only when
the court deems in necessary)
g. Court render judgment forty-five (45) days after pre-trial after the
receipt of the last position paper, affidavits, documentary and real
evidence, or the expiration of the period for filing the same.
h. Judgment immediately executory pending appeal (Sec. 5, Rule 8)
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either into that belief or into the belief that there is some
connection between the plaintiff and defendant which, in fact, does
not exist."1
2. Unfair competition
-keywords here is deception; passing off one's goods for that of another
(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.
"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.
Read the case of :Coca Cola Bottlers, Inc. vs Gomez, G.R. No. 154491,
November 14, 2008.
1 SOCIETE DES PRODUITS VS MARTIN T. DY, JR. , G.R. No. 172276, August 8, 2010
2 McDonalds Corp vs. L.C. Big Mak, G.R. No. 143993, August 18, 2004
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ISSUE: Is the hoarding of a competitors product containers punishable as
unfair competition under the Intellectual Property Code (IP Code, Republic
Act No. 8293) that would entitle the aggrieved party to a search warrant
against the hoarder?
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e. Preliminary Investigation - conducted within ten (10) days after the
filing of the private complaint.
f. Inquest, not PI if accused is lawfully arrested without warrant. But
accused may still ask for preliminary investigation within five (5) days
from the filing of the information or knowledge of the filing of
information.
g. Judgment promulgated within sixty (60) days from the time the case
is submitted for decision. A copy of the Judgment shall be furnished
with the IPO (Sec. 4, Rule 14 of the 2011 Rules of Procedure on
Intellectual Property Litigation.
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Sec. 159 of RA 8293: - Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed under this Act shall be
limited as follows:
Sec. 160 of R.A. 8293. - 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.
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