RFBT
RFBT
a. Mark
b. Collective Mark
c. Tradename
d. Copymark!
a. Mark
b. Collective Mark
c. Tradename
d. Copymark?
a. Mark
b. Collective Mark
c. Tradename
d. Copymark3
Note:
validly in accordance with the provisions of the Intellectual Property Law (sec.
122, IPL).
Note:
of the application. Otherwise, the application shall be refused or the mark shall
be removed from the Register by the Director (Sec. 124, IPL),
Note:
may be served notices or process in Proceedings affecting the mark (sec. 125, !PL-
Note:
' Suggested answer: A
é Sugpested answer: B
’ Supwested answer: C
876
a
| ademark Law
t the filing date of an application shall be the date on which the
o. The list of the goods or services for which the registration is sought.
Note:
No filing date shall be accorded until the required fee is paid (Sec. 127,
IPL).
Note:
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 (Sec. 138, IPL).
Note:
Note; | on
er or periods of ten
& .
I, Infringement of trademark is the unauthorized use ol
Re, wi
Trademark Law
II. Unfair competition is the passing off of one's goods as those of another.
Note:
1. Infringement of trademark is the unauthorized use of a trademark,
Note:
Functions of a Trademark
1. To indicate the origin of the goods to which they are attached;
Note:
1. The right to the mark is separate and distinct from the business using
such mark (sec. 149, IPL); and
2. The right of registration belongs to the owner of the mark (unno Commercial
Enterprises, Inc. vs. General Milling Corp., G.R. No. L-28554, February 28, 1983).
ao op
5 Suggested answer: C
6 Suggested answer: C
? Suggested answer: C
878
Law
' a
note ule: ;
ar
sition a aon 5 ; 5
-ompo ie: Pa Je Pilsen for beer) (Asia Brewery, Inc. vs. CA, G.R. No. 103543, July
5, 1994).
mple-
(Bx0
g. Arbitrary Mark . .
It is utilized as a device having a common meaning that has no
relation to the goods or services being sold. (Example: “Dutch Boy” for
paints and paint color solutions) (National Lead Corporation vs. Wolfe, 223 F. nd
195 (9%
b, Fanciful Mark
It is invented for the sole purpose of functioning as a trademark and
Coined Mark
Marks may be registered even if they are contractions of or coined
from generic and descriptive terms. (Example: “Starbrite” for metal polish,
Gaslam” for lamps, “Mirrorlike” for furniture and floor polish are coined
= for ‘star bright”, “gas lamp”, or “mirror like") (Life industries Corp. vs.
¢ Distributing, Inc., 31 F. 3d 42, August 18, 1994).
3]
fused as part of composite mark;
Composite Mark
rentury Nyj a mark will not acquire ownership thereto. (Example: “20%
Shi ylon Shirts Factory” must be required to disclaim “nylon” and
factory”
28, 1995) y ) (Ong Ai Gui vs. The Director of the Philippine Patent Office, G.R.
No, L-6235, March
4 Ip;
—
qireg
a :
Secondary meaning:
Ctr;
™m
Wi ih ve Secondary Meaning
No as . ” - . . .
of *Gistraby general rule, generic, indicative or descriptive marks are
Its long ae when such kind of mark has become distinctive, because
ntinuous and exclusive use for five (5) years, as used in
879
SCL
Trademark Law
II. 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.
Note:
® Suggested answer: C
° Suggested answer: C (Sec. 123, IPL)
880
ex —=te
gear Lae
ff
gollective Mark ne
It refers to any visible sign, designated as such in the application for
enterprises which use the sign under the control of the registered owner of the
a. Collective mark
b. Collective sign
c. Collective symbol
d. Collective logo?®
Note:
A mark cannot be registered if it:
. erlatian thereof;
- Consists of a name, portrait or signature identifying a particular living
Wi ; i
d. Is ow, ifany, except by written consent of the widow,
entical with a registered mark belonging to a different proprietor or
am . 5‘
ark with an earlier filing or priority date, in respect of:
LT ;
he same goods or services, or
Ui,
fe Hele related goods or services, or
Tf it nearly resembles such a mark as to be likely to deceive or
Cc ‘
ause confusion;
“stag
answer,
era (Sec. 121, IPC)
Trademark Law
g.
h.
k.
a. Trade name
b. Trade mark
c. Business permit
d. Goodwill!!
Note:
A tradename or business identifier means the name or designation
identifyi
Corp. vs. Universal Rubber Products, Inc., G.R. No. L-27906, Janua
882
Eee arte
park Law
¢
yal ;
ename need not be registered with the IPO before an
f ile . "
" jor commerce
(rule
j trad
he goods or services
| er
i {Jt designates rv
| rson or enterprise.
| offered by 4 Pe
| _
Cee
a,
Note:
A tr ; ; ; .
Property off ademark is acquired through registration with the Intellectual
ic fee Oe
a ifringement PO). Registration is necessary before one can file an action
Note:
xp © that
co
Trademark Law
the Philippines for 5 years before the date on which the claim of
distinctiveness is made.
a. Only lis true
b. Only IT is true
c. Both are true
d. Both are false!3
Note:
Note:
Doctrine of Secondary meaning
The following are non-registrable as a general rule:
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.
14. I. Any person who believes that he would be damaged by the registration
of a mark may file with the IPO an opposition to the application.
I]. When the period for filing the opposition has expired, the IPO shall issue
the certificate of registration.
b. Only Il is true
c. Both are true
|
| . 4 certificat
{5 ‘ applicant.
certificate
certificate.
g. Only lis true
b. Only Il is true
c Both are true
d. Both are false?®
Note:
Certificate of Registration
It shall be prima facie evidence of:
In cas
e . . . 5 : .
likelj Of the use of an identical sign for identical goods or services, a
Note.
(Sec. 135
e< 1378138, IPC)
ge | 45&146, IPC)
885
Trademark Law
Doctrine of Dilution
II. Registration of the mark shall not confer on the registered owner the
right to preclude third parties from using bona fide their names,
addresses, pseudonyms, a geographical name, or exact indications
concerning the kind, quality, quantity, destination, value, place of origin,
or time of production or of supply, of their goods or services.
b. Only Il is true
c. Bothare true
Registration of the mark shall not confer on the registered owner the
right to preclude third parties from using bona fide their names, addresses,
pseudonyms, a geographical name, or exact indications concerning the kind,
quality, quantity, destination, value, place of origin, or time of production or of
supply, of their goods or services: Provided, that such use is confined to the
Only I is true
Only II is true
Both are true
Both are false19
ao 7 p
'9 Suggested answer: C (Sec. 1478148, IPC)
‘9 Suggested answer: C (Sec. 149, IPC)
886
-
; rk Law ei
rae
notes tand Transfer of Applicati
nmen Pptication a
Ast An application for registration of a
assigned or transferred with or witho gistration, may be
the mark. of the business using
Such assignment or transfer shall, ho
5, Assignments and transfers shall have no effect against third parties until
they are recorded at the Intellectual Property Office (IPO) (sec. 149, IPL).
nd Registration
ut the transfer
ll. Assignments and transfers shall have no effect against third parties
until they are recorded at the IPO.
a. Only /is true
b. Only Il is true
Note:
License Contracts ;
1. Any license contract concerning th
icati i ective !
een ee shall provi’ for ne licensee in connection with
ali ods or
ainst thir
A license contract shall have ne? effect a9
recording is effected.
e registration of a mark, or an
Resta,
“answer: ¢ (Sec. 149, 1PC)
4 ea7
|
Trademark Law
21. 1. A petition to cancel a registration of a mark may be filed by any person
who believes that he is or will be damaged by the registration of a mark.
II. Non-use of a mark may be excused if caused by circumstances arisin
independently of the will of the trademark owner. Lack of funds shall
Note:
A petition to cancel a registration of a mark may be filed with the
b, At any time, if the registered mark becomes the generic name for the
goods or services, or a portion thereof, for which it is registered, or has
been abandoned, or its registration was obtained fraudulently or
contrary to the provisions of the Intellectual Property Code of the
Philippines, or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the
goods or services on or in connection with which the mark is used. If the
registered mark becomes the generic name for less than all of the goods
or services for which it is registered, a petition to cancel the registration
for only those goods or services may be filed. A registered mark shall not
be deemed to be the generic name of goods or services solely because
such mark is also used as a name of or to identify a unique product or
service. The primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic name
of goods or services on or in connection with which it has been used.
ground for cancellation or removal of the mark and shall not diminish
the protection granted to the mark.
; ; th . More of
pelonging o ee In respect of Which the a the goods OF Services
revent its ation or removal in respect sp, “istered shall
services of the same class, pect of all other goods
IS or
)
| 4, The use ofa mark by a company related with the reg,
| shall inure to the latter’s benefit, and stieh a registrant or applicant
; j ; Se sh :
of such mark or of its registration: Provided ae ue the validity
, mark is not used
23, Any person who shall, without the consent of the owner of the registered
mark, use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark or the same container or a dominant
feature thereof in connection with the sale, offering for sale, distribution,
advertising of any goods or services including other preparatory steps
necessary to carry out the sale of any goods or services on or In
connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive.
a. Infringement of trademark
b Copyrighting of trademark
& Patenting of trademark
d. Unfair competition of trademark”?
Note: Complete
+ fri t, Com
a a of] j ark infringement.
Intent to deceive is not required in tradem if 79235, January 25,
» of trademark infring
. “ n
the “gravame 04).
* Corp. vs. L.C. Big Mak Burger, Inc, GR. No. 143?
1 ess
Bea
estey angen C (Sec. 152, IPC)
i "A (Sec. 155, IPL)
i 889
frogs
aa
Trademark Law
24, Any person who shall, without the consent of the owner of the registereq
mark reproduce, counterfeit, copy Or colorably imitate a registered mark
or a dominant feature thereof and apply such reproduction, counterfeit,
copy or colorable imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in commerce upon or
in connection with the sale, offering for sale, distribution, or advertisin
of goods or services on or in connection with which such use is likely to
c. Patenting of trademark
d. Unfair competition of trademark”*
Note:
Infringement
Any person who shall, without the consent of the owner of the
registered mark:
Note:
Who can File a Case for Infringement?
Only a registrant of a mark can file a case for infringement. Upon the
finality of an order of cancellation of a mark, the right of a registrant to file a
case for infringement terminates (Superior Commercial Ent, Inc. vs. Kunnan Ent.
Ltd, GR No
169974, April 20, 2010).
b. Only II is true
c. Bothare true
who infringes his rights, and the measure of the damages suffered shall
be either the reasonable profit which the complaining pa I
made, had the defendant not infringed his rights, or the profit which the
Note:
8]
‘| | .
ll
an .
Ihany “nels of commerce or destroyed. ‘evistered mark shall not
be git for in fri t, the owner of the regis
© enti eee less the acts have been
ttled to recover profits or damages unless
Se
~
Sy,
i Mswe, Cg
“Meee, 1
6, 1PC)
uN 891
x ae
Trademark Law
b. Only Il is true
c. Bothare true
Note:
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
Note:
deceive purchasers as to the origin or the source of the commodity (Fruit of the
Loom, Inc., vs. CA, G.R. No. L-32747, November 29, 1984).
4, Necessary expansion of the Business (Ang vs. Teodoro, G.R. No. 48226, December
14,
1992).
Note:
Colorable Imitation
persons in the ordinary course of purchasing the genuine article (Emerald Garment
Manufacturing Corp. vs. CA, G.R. No, 100098, December 29, 1995).
892
prademark Law
ho, in good
date, was using the mark for
a. Onlylis true
1. A registered mark shall have no effect against any person who, in good
faith, before the filing date or the priority date, was using the mark for
the purposes of his business or enterprise: Provided, that his right may
only be transferred or assigned together with his enterprise or business
or with that part of his enterprise or business in which the mark is used.
communications.
infri t of trademarks or tradenames of
4 There shall be no infringemen A Sede CS ee
5 i t
imported or sold off-paten he registered marks and have not been
Note:
Elements of infringement
1. Registration of trademar
2. Trademark is reproduced, co
" IPO);
rk i tellectual Property Office ( 0);
ie vied, coun terfeited or colorably imitated;
—
Trademark Law
services, or business; Ee
4, There is, in the use or application, a likelihood of confusion; and
5, Lack of consent on the part of the registered owner or their assignee
(Societe Des Produits Nestle, S.A. vs. Dy, Jr, GR. No. 172276, August 9, 2010).
Note:
Trade Names or Business Names
(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.
3. 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 (Sec. 165,
IPL).
28. I. 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.
II. 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
b. Only Il is true
c. Both are true
d. Both are false28
2, Any person who shall employ deception or any other Tha ci ntr
good faith by which he shall pass off ‘the goods manufactured hin "
in which he deals, or his business, or Services for those of ithe ¢ = oe a
established such goodwill, or who shal] commit any acts selected 0
produce said result, shall be guilty of unfair competition, and shail he
subject to an action therefor, ‘ °
competition:
grade
(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 likely 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
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 likely
influence purchasers to believe that the goods offered are those
of a manufacturer or dealer, other than the actual manufacturer
or dealer,
895
MEME Oe er aa
Trademark Law
a nature calculated to discredit the goods, business or services of
another.
d. All of the above??
. a
pement Q, f Trademark | EGE
Note:
Note:
False Designations of Origin; False Description or Representation