Case Doctrines LIP
Case Doctrines LIP
TRADEMARKS
CASE DOCTRINES Acquisition of Ownership of Mark
a. Birkenstock vs. Phil. Shoe Marketing [2013]
I. INTELLECTUAL PROPERTY RIGHTS
Republic Act No. (RA) 166, the governing law for Registration No.
Declaration of State Policy
a. IPAP vs. Ochoa [2016] 56334, requires the filing of a DAU on specified periods, to wit:
Section 2. Declaration of State Policy. - The State recognizes that an Section 12. Duration. Each certificate of registration shall remain in
effective intellectual and industrial property system is vital to the force for twenty years: Provided, That registrations under the provisions
development of domestic and creative activity, facilitates transfer of of this Act shall be cancelled by the Director, unless within one year
technology, attracts foreign investments, and ensures market access for following the fifth, tenth and fifteenth anniversaries of the date of issue
our products. It shall protect and secure the exclusive rights of of the certificate of registration, the registrant shall file in the Patent
scientists, inventors, artists and other gifted citizens to their intellectual Office an affidavit showing that the mark or trade-name is still in use or
property and creations, particularly when beneficial to the people, for showing that its non-use is due to special circumstance which excuse
such periods as provided in this Act. such non-use and is not due to any intention to abandon the same, and
The use of intellectual property bears a social function. To this end, the pay the required fee.
State shall promote the diffusion of knowledge and information for the The aforementioned provision clearly reveals that failure to file the DAU
promotion of national development and progress and the common within the requisite period results in the automatic cancellation of
good. registration of a trademark. In turn, such failure is tantamount to the
It is also the policy of the State to streamline administrative procedures abandonment or withdrawal of any right or interest the registrant has
of registering patents, trademarks and copyright, to liberalize the over his trademark.
registration on the transfer of technology; and to enhance the
enforcement of intellectual property rights in the Philippines. It must be emphasized that registration of a trademark, by itself, is not
In view of the expression of state policy having been made by the a mode of acquiring ownership. If the applicant is not the owner of the
Congress itself (through above-quoted provision), the IPAP is plainly trademark, he has no right to apply for its registration. Registration
mistaken in asserting that "there was no Congressional act that merely creates a prima facie presumption of the validity of the
authorized the accession of the Philippines to the Madrid Protocol." registration, of the registrants ownership of the trademark, and of the
exclusive right to the use thereof. Such presumption, just like the
The IPAP misapprehends the procedure for examination under presumptive regularity in the performance of official functions, is
the Madrid Protocol, The difficulty, which the IPAP illustrates, is rebuttable and must give way to evidence to the contrary.
minimal, if not altogether inexistent. The IPOPHL actually requires the
designation of the resident agent when it refuses the registration of a b. Superior Commercial Enterprises vs. Kunnan Enterprises [2010]
mark. Local representation is further required in the submission of the Cancellation of registration of a trademark has the effect of depriving
Declaration of Actual Use, as well as in the submission of the license the registrant of protection from infringement from the moment
contract. The Madrid Protocol accords with the intent and spirit of the judgment or order of cancellation has become final. In a trademark
IP Code, particularly on the subject of the registration of trademarks. infringement, title to the trademark is indispensable to a valid cause of
The Madrid Protocol does not amend or modify the IP Code on the action and such title is shown by its certificate of registration.
acquisition of trademark rights considering that the applications under
the Madrid Protocol are still examined according to the relevant As a mere distributor, petitioner Superior undoubtedly had no right to
national law, In that regard, the IPOPHL will only grant protection to a register the questioned mark in its name. Well-entrenched in our
mark that meets the local registration requirements.
Page 1 of 14 LIP Case Doctrines RG Alfaro
jurisdiction is the rule that the right to register a trademark should be Tests to Determine Confusing Similarity Between Marks
based on ownership. When the applicant is not the owner of the 1. Dominance Test
trademark being applied for, he has no right to apply for the a. Asia Brewery vs. CA [1993]
registration of the same. Under the Trademark Law, only the owner of It has been consistently held that the question of infringement of a
the trademark, trade name or service mark used to distinguish his trademark is to be determined by the test of dominancy. Similarity in
goods, business or service from the goods, business or service of others size, form and color, while relevant, is not conclusive. If the competing
is entitled to register the same. An exclusive distributor does not trademark contains the main or essential or dominant features of
acquire any proprietary interest in the principals trademark and cannot another, and confusion and deception is likely to result, infringement
register it in his own name unless it is has been validly assigned to him. takes place. Duplication or imitation is not necessary; nor it is necessary
that the infringing label should suggest an effort to imitate. The
Acquisition of Ownership of Trade Name question at issue in cases of infringement of trademarks is whether the
a. Cordon Bleu of the Philippines vs. Renaus Cointreau & Cie [2013] use of the marks involved would be likely to cause confusion or
Under Section 2 of R.A. No. 166, in order to register a trademark, one mistakes in the mind of the public or deceive purchasers.
must be the owner thereof and must have actually used the mark in
commerce in the Philippines for two (2) months prior to the application Factual milieu: The fact that the words pale pilsen are part of ABIs
for registration. Section 2-A of the same law sets out to define how one trademark does not constitute an infringement of SMCs trademark;
goes about acquiring ownership thereof. Under Section 2-A, it is clear pale pilsen are generic words descriptive of the color (pale), of a
that actual use in commerce is also the test of ownership but the type of beer (pilsen), which is a light bohemian beer with a strong
provision went further by saying that the mark must not have been so hops flavor that originated in the City of Pilsen in Czechoslovakia and
appropriated by another. Additionally, it is significant to note that became famous in the Middle Ages. Pilsen is a primarily
Section 2-A does not require that the actual use of a trademark must geographically descriptive word, hence, non-registerable and not
be within the Philippines. Thus, under R.A. No. 166, one may be an appropriable by any beer manufacturer.
owner of a mark due to its actual use but may not yet have the right to Considering further that SAN MIGUEL PALE PILSEN has virtually
register such ownership here due to the owners failure to use the same monopolized the domestic beer market for the past hundred years,
in the Philippines for two (2) months prior to registration. those who have been drinking no other beer but SAN MIGUEL PALE
Nevertheless, foreign marks which are not registered are still accorded PILSEN these many years certainly know their beer too well to be
protection against infringement and/or unfair competition. At this deceived by a newcomer in the market. If they gravitate to ABI's
point, it is worthy to emphasize that the Philippines and France, cheaper beer, it will not be because they are confused or deceived, but
Cointreaus country of origin, are both signatories to the Paris because they find the competing product to their taste.
Convention for the Protection of Industrial Property (Paris Convention).
b. McDonalds Corporation vs. LC Big Mak Burgers [2004]
In any case, the present law on trademarks, Republic Act No. 8293, In determining likelihood of confusion, jurisprudence has developed
otherwise known as the Intellectual Property Code of the Philippines, as two tests, the dominancy test and the holistic test. The dominancy test
amended, has already dispensed with the requirement of prior actual focuses on the similarity of the prevalent features of the competing
use at the time of registration. trademarks that might cause confusion. In contrast, the holistic test
requires the court to consider the entirety of the marks as applied to
the products, including the labels and packaging, in determining
confusing similarity.
e. Sketchers USA vs. Inter Pacific Industrial Trading [2011] 2. Holistic Test
The essential element of infringement under R.A. No. 8293 is that the a. Emerald Garment Manufacturing Corp. vs. CA [1995]
infringing mark is likely to cause confusion. Holistic test mandates that the entirety of the marks in question must
be considered in determining confusing similarity. In determining
Factual milieu: Applying the Dominancy Test to the case at bar, this whether the trademarks are confusingly similar, a comparison of the
Court finds that the use of the stylized "S" by respondent in its Strong words is not the only determinant factor. The trademarks in their
rubber shoes infringes on the mark already registered by petitioner entirety as they appear in their respective labels or hang tags must also
with the IPO. While it is undisputed that petitioners stylized "S" is be considered in relation to the goods to which they are attached.
within an oval design, to this Courts mind, the dominant feature of the
trademark is the stylized "S," as it is precisely the stylized "S" which Factual milieu: Applying the foregoing tenets to the present
catches the eye of the purchaser. Thus, even if respondent did not use controversy and taking into account the factual circumstances of this
an oval design, the mere fact that it used the same stylized "S", the case, we considered the trademarks involved as a whole and rule that
same being the dominant feature of petitioners trademark, already petitioner's "STYLISTIC MR. LEE" is not confusingly similar to private
constitutes infringement under the Dominancy Test. Thus, even if not all respondent's "LEE" trademark. Petitioner's trademark is the whole
the details are identical, as long as the general appearance of the two "STYLISTIC MR. LEE." Although on its label the word "LEE" is prominent,
products are such that any ordinary purchaser would be deceived, the the trademark should be considered as a whole and not piecemeal. The
imitator should be liable. dissimilarities between the two marks become conspicuous, noticeable
and substantial enough.
f. Societes Des Produits Nestle vs. Dy [2010] First, the products involved in the case at bar are, in the main, various
In cases involving trademark infringement, no set of rules can be kinds of jeans. Maong pants or jeans are not inexpensive. Accordingly,
deduced. Each case must be decided on its own merits. Jurisprudential the casual buyer is predisposed to be more cautious and discriminating
precedents must be studied in the light of the facts of each particular in and would prefer to mull over his purchase. Confusion and
case. deception, then, is less likely. Expensive and valuable items are normally
bought only after deliberate, comparative and analytical investigation.
Factual milieu: In the light of the facts of the present case, the Court Second, like his beer, the average Filipino consumer generally buys his
holds that the dominancy test is applicable. In recent cases with similar jeans by brand. He does not ask the sales clerk for generic jeans but for,
factual milieus, the Court has consistently applied the dominancy test. say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more
This is not the first time the Court takes into account the aural effects of or less knowledgeable and familiar with his preference and will not
the words and letters contained in the marks in determining the issue easily be distracted.
b. Bristol Myers Co. vs. Dir. of Patents & United American Pharma Factual milieu: The holistic test is applicable here considering that the
[1966] herein criminal cases also involved trademark infringement in relation
In determining whether two trademarks are confusingly similar, the test to jeans products. Accordingly, the jeans trademarks of Levis
is not simply to take their words and compare the spelling and Philippines and Diaz must be considered as a whole in determining the
pronunciation of said words. Rather, it is to consider the two marks in likelihood of confusion between them.
their entirety as they appear in the respective labels, in relation to the There were other remarkable differences between the two trademarks
goods to which they are attached. that the consuming public would easily perceive. Diaz aptly noted such
differences, as follows:
Factual milieu: The words BIOFERIN and BUFFERIN have the same The prosecution also alleged that the accused copied the "two horse
suffix and similar sounding prefixes, they appear in their respective design" of the petitioner-private complainant but the evidence will
labels with strikingly different backgrounds and surroundings, as to show that there was no such design in the seized jeans. Instead, what is
color, size, and design. shown is "buffalo design." Again, a horse and a buffalo are two different
Taken as they will appear to a prospective customer, the trademarks in animals which an ordinary customer can easily distinguish. x x x.
question are not apt to confuse. The product of the applicant is Moreover, based on the certificate issued by the Intellectual Property
expressly stated as dispensable only upon doctors prescription, while Office, "LS JEANS TAILORING" was a registered trademark of Diaz. He
that of the oppositor does not require the same. The chances of being had registered his trademark prior to the filing of the present cases. The
confused into purchasing one for the other are all the more rendered Intellectual Property Office would certainly not have allowed the
negligible. registration had Diazs trademark been confusingly similar with the
registered trademark for LEVIS 501 jeans.
c. Victorio Diaz vs. People and Levi Strauss [2013]
The elements of the offense of trademark infringement under the
Intellectual Property Code are the following:
c. Levi Strauss vs. Tony Lim [2008] e. Coca-Cola Bottlers vs. Quintin Gomez [2008]
We cannot sustain Secretary Bellos opinion that to establish probable "Unfair competition," previously defined in Philippine jurisprudence in
cause, "it is enough that the respondent gave to his product the relation with R.A. No. 166 and Articles 188 and 189 of the Revised Penal
general appearance of the product" of petitioner. It bears stressing that Code, is now covered by Section 168 of the IP Code as this Code has
that is only one element of unfair competition. All others must be expressly repealed R.A. No. 165 and R.A. No. 166, and Articles 188 and
shown to exist. More importantly, the likelihood of confusion exists not 189 of the Revised Penal Code.
only if there is confusing similarity. It should also be likely to cause Articles 168.1 and 168.2 provide the concept and general rule on the
confusion or mistake or deceive purchasers. The mere fact that some definition of unfair competition. The law does not thereby cover every
resemblance can be pointed out between the marks used does not in unfair act committed in the course of business; it covers only acts
itself prove unfair competition. To reiterate, the resemblance must be characterized by "deception or any other means contrary to good faith"
such as is likely to deceive the ordinary purchaser exercising ordinary in the passing off of goods and services as those of another who has
care. established goodwill in relation with these goods or services, or any
other act calculated to produce the same result.
Penalties
a. Century Chinese vs. People [2013]
Respondent contends that the rule (SC Adm. Memo 1-06, No. 02-1-06,
Rule on Search and Seizure in Civil Actions for Infringement of
Intellectual Property Rights) does not apply to the search warrants in
the case at bar, for the reason that the search warrants themselves