Trademark, Tradename & Unfair Competition
Trademark, Tradename & Unfair Competition
UNFAIR COMPETITION
Trademarks
Visible Sign
“visible”
Words Colors
Letters Logos
Numerals Three dimensional objects
Figures/Pictures Combinations
Shapes
Colors or shapes
Colors or shapes
Three dimensional objects
Three dimensional objects
Not “visible”
Sounds
Smell
Touch…
Visible Sign
Distinctive
Distinctiveness of a mark: A spectrum
Types of Marks
Service marks
Types of Trademarks
Collective marks
"Collective mark" means any visible sign
designated as such in the application for
registration and capable of distinguishing the
origin or any other common characteristic,
including the quality of goods or services of
different enterprises which use the sign under the
control of the registered owner of the collective
mark
Types of Trademarks
Non-registrable marks:
- Flags/coat of arms of nations
- Names, portraits or signature of living persons
- Exception: with consent
- Names, portraits or signature of a deceased President of the
Philippines
- Exception: with written consent of his/her living widow
Ownership of a mark
Non-registrable marks:
- Identical or confusingly similar with existing registered or
earlier filed application trademarks (first-to-file rule) including
well-known marks
Ownership of a mark
Non-registrable marks:
- Generic terms
- Descriptive terms
- Color by itself;
- Shapes dictated by technical factors
- Identical or confusingly similar with existing registered or earlier filed
application trademarks (first-to-file rule) including well-known marks
Secondary Meaning
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and
(l), nothing shall prevent the registration of any such sign or device
which has become distinctive in relation to the goods for which
registration is requested as a result of the use that have been made of it
in commerce in the Philippines. The Office may accept as prima facie
evidence that the mark has become distinctive, as used in connection
with the applicant's goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the applicant
in commerce in the Philippines for five (5) years before the date on
which the claim of distinctiveness is made.
Ownership of a mark
Registration
- Prior use is not a requirement but there must be actual use after application
- Declaration of Actual Use – within three (3) years from filing of the application
Protection:
- Ten (10) years from registration
- renewable for periods of ten (10) years each – indefinite – provided a declaration of
use is filed within 1 year from filing and from the 5th year of registration
Rights of a Trademark Owner
Right to exclusive use of the mark in connection with one’s own goods
or services resulting in likelihood of confusion
Right to prevent others from use of an identical mark for the same,
similar or related goods or services. (Sec. 147)
Rights of a Trademark Owner
Will trademark registration abroad be valid and binding
here in the Philippines?
- No.
- Principle of Territoriality
- Exception: Well-known marks
- Exception: Bad Faith
Trademark Infringement
Unauthorized use of a registered trademark, or of a
colorable imitation of the same, for similar or related
goods in which such use is likely to cause confusion or
mistake, or to deceive.
Elements 5:
4. Likelihood of confusion
4. Is actual confusion necessary?
Trademark Infringement
Element 5:
4. Likelihood of confusion
Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion of business”)
Trademark Infringement
Element 5:
4. Likelihood of confusion
Types of confusion:
• As to the goods themselves (“Confusion of goods”)
◼ Same or competing goods
• As to the source or origin of such goods (“Confusion of business”)
Trademark Infringement
Element 5:
4. Likelihood of confusion
Types of confusion:
• As to the goods themselves (“Confusion of goods”)
• As to the source or origin of such goods (“Confusion of business”)
◼ Wherein the goods of the parties are different but the defendant’s
product can reasonably be assumed to originate from the plaintiff
thereby deceiving the public into believing that there is some
connection between the plaintiff and defendant, which in fact, does
not exist (Mighty Corporation vs. EJ Gallo, 434 SCRA 473, [2004]])
Trademark Infringement
Element 5:
Likelihood of confusion
Whose perspective?
Tests of confusion:
• Dominancy Test
• Holistic Test
Trademark Infringement
Element 5:
Likelihood of confusion
Tests of confusion:
• Dominancy Test
◼ Prevalent features of a product
Trademark Infringement
Element 5:
Likelihood of confusion
Tests of confusion:
• Dominancy Test
◼ Prevalent features of a product
Trademark Infringement
Element 5:
Likelihood of confusion
Tests of confusion:
• Dominancy Test
◼ Prevalent features of a product
Registration a Yes No No
requirement?