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the system of rules which a particular country or community recognizes as regulating the actions of its members and which it may enforce by the imposition of penalties. "they were taken to court for breaking the law"
Business Administration (BSBA)
Tarlac State University
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- Trademark ( Secs. 121-170, IPC)
a. Definition of marks, collective marks, trade name (sec 121)
Mark means 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.
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.
Trade name means the name or designation identifying or distinguishing an enterprise. (IPC, Sec. 121, 121, 121)
Add: Functions of mark
(a) Mirpuri v. Court of Appeals, G. no 114508, November 19,
Facts: On June 15, 1970, one Lolita Escobar, the predecessor-in-interest of petitioner Pribhdas J. Mirpuri, filed an application with the Bureau of Patents for the registration of the trademark "Barbizon" for use in brassieres and ladies undergarments. Barbizon Corporation, the private respondent of the case at bar opposed the application on the ground that the mark Barbizon of the applicant is confusingly similar to the trademark Barbizon of which the opposer has not abandoned. Furthermore, it was alleged by the opposer that it shall suffer damage by the registration of the mark Barbizon and its business reputation and goodwill will suffer great and irreparable injury, and that the use by the applicant by the said mark which resembles the trademark used and owned by oppose constitutes an unlawful appropriation of a mark previously used in the Philippines and not abandoned therefore a statutory violation of Sec 4 (d) of Republic Act No. 166, as amended. The opposition was dismissed and Escobar was issued a certificate of registration for the trademark “Barbizon”, and subsequently Escobar assigned all her rights and interest over the trademark to petitioner Pribhdas J. Mirpuri. However, Escobar failed to file an Affidavit of Use of the trademark so Escobar’s certificate of registration was cancelled. Consequently, she reapplied for the registration of the cancelled trademark. Opposer's BARBIZON as well as its BARBIZON and Bee Design and BARBIZON and Representation of a Woman trademarks are deemed to qualify as well-known trademarks.
Issue:
Whether or not the Convention of Paris for the Protection of Industrial Property affords protection to a foreign corporation against a Philippine applicant for the registration of a similar trademark
Held: On record, there can be no doubt that respondent-applicant's sought- to-be-registered trademark BARBIZON is similar, in fact obviously identical, to opposer's alleged trademark BARBIZON, in spelling and pronunciation. The only appreciable but very negligible difference lies in their respective appearances or manner of presentation. Respondent-applicant's trademark is in bold letters (set against a black background), while that of the opposer is offered in stylish script letters. The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, is a multilateral treaty that seeks to protect industrial property consisting of patents, utility models, industrial designs, trademarks, service marks, trade names and indications of source or appellations of origin, and at the same time aims to repress unfair competition. The Convention is essentially a compact among various countries which, as members of the Union, have pledged to accord to citizens of the other member countries trademark and other rights comparable to those accorded their own citizens by their domestic laws for an effective protection against unfair competition. In short, foreign nationals are to be given the same treatment in each of the member countries as that country makes available to its own citizens. Nationals of the various member nations are thus assured of a certain minimum of international protection of their industrial property. The main argument is embedded on Art 6 of the Paris Convention which governs the protection of well-known marks. The essential requirement of the said article is that the trademark to be protected must be "well-known" in the country where protection is sought. The power to determine whether a trademark is well-known lies in the "competent authority of the country of registration or use." This competent authority would be either the registering authority if it has the power to decide this, or the courts of the country in question if the issue comes before a court
(b) Berries Agricultural Co. Inc. v. Norby Abyadang G. no 183404, October 13,
Facts:
Norvy Abyadang filed a trademark application with the IPO for the mark "NS D-10 PLUS" for use in connection with Fungicide. Berris Agricultural Co., Inc. filed an opposition against the trademark citing that it is similar and/or confusingly similar to its registered trademark, "D-10 80 WP" which is also used for Fungicide
also with the same active ingredient IPO ruled in favor of Berries but on appeal with the CA, the CA ruled in favor of Abyadang.
Issue:
WON there exists a confusing similarity between the trademarks of Berris and Agyadang.
Held: YES.
Ratio: According to Section 123(d) of R. No. 8293, a mark cannot be registered if it is identical with a registered mark belonging to a different proprietor with an earlier filing or priority date, with respect to: (1) the same goods or services; (2) closely related goods or services; or (3) near resemblance of such mark as to likely deceive or cause confusion. In determining similarity and likelihood of confusion, jurisprudence has developed tests the Dominancy Test and the Holistic or Totality Test. The Dominancy Test focuses on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public. In contrast, the Holistic or Totality Test necessitates a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly similar to the other. The Supreme Court found that both products have the component D-10 as their ingredient and that it is the dominant feature in both their marks. Applying the Dominancy Test, Abyadang's product is similar to Berris' and that confusion may likely to occur especially that both in the same type of goods. Using the Holistic Test, it was more obvious that there is likelihood of confusion in their packaging and color schemes of the marks. The Supreme Court states that buyers would think that Abyadang's product is an upgrade of Berris'.Furthermore, Berris, as prior user and prior registrant has in its favor the rights conferred by the IP law with regards to registered mark. Dispositive: The petition is GRANTED. Costs against respondent.
b. Acquisition of ownership and mark (sec 122)
(a) Birkenstock Orthopaedic Gmbh and CO. Kg. (formerly Birkenstock Orthopaedic GMBh vs. Philippine Shoe Expo Mktg. Corp. Gr. No 194307 November 20, 2013
Facts: Petitioner, a corporation duly organized and existing under the laws of Germany applied for various trademark registrations before the Intellectual Property Office (IPO). However, the applications were suspended in view of the existing registration of the mark “BIRKENSTOCK AND DEVICE” under Registration No. 56334 dated October 21, 1993 in the name of Shoe Town International and
Industrial Corporation, the predecessor-in -interest of respondent Philippine Shoe Expo Marketing Corporation. On May 27, 1997, petitioner filed a petition (Cancellation Case) for cancellation of Registration No. 564334 on the ground that it is the lawful and rightful owner of the Birkenstock marks. During its pendency, however, respondent and/or it predecessor-in -interest failed to file the required 10th Year Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on or before October 21, 2004, thereby resulting the cancellation of such mark. Accordingly, the cancellation case was dismissed for being moot and academic thereby paving the way for the publication of the subject applications.
In response, respondent filed with the Bureau of Legal Affairs (BLA) of the IPO three separate verified notices of opposition to the subject applications docketed as Inter Partes Cases claiming, among others, it, together with its predecessor-in -interest, has been using the Birkenstock marks in the Philippines for more than 16 years through the mark “BIRKENSTOCK AND DEVICE”. In its Decision, the BLA of the IPO sustained respondent’s opposition, thus ordering the rejection of the subject applications. Aggrieved, petitioner appealed to the IPO Director General whereby in its decision, the latter reversed and set aside the ruling of the BLA thus allowing the registration of the subject applications. Finding the IPO Director General’s reversal of the BLA unacceptable, respondent filed a petition for review with the Court of Appeals. In its decision dated June 25, 2010, the CA reversed and set aside the ruling of the IPO Director General and reinstated that of the BLA. The petitioner filed a Motion for Reconsideration but was denied by the CA. Hence , this petition to the Supreme Court.
ISSUE:
- Whether or not the petitioner’s documentary evidence, although photocopies, are admissible in court?
- Whether or not the subject marks should be allowed registration in the name of the petitioner?
HELD:
- The court ruled yes. It is a well-settled principle that the rules of procedure are mere tools aimed at facilitating the attainment of justice, rather than its frustration. A strict and rigid application of the rules must always be eschewed when it would subvert the primary objective of the rules, that is, to enhance fair trials and expedite justice. In the light of this, Section 5 of the
In Prosource International, Inc. v. Horphag Research Management SA, this Court laid down what constitutes infringement of an unregistered trade name, thus: (1) The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered; (2) The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer; (3) The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services; (4) The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and (5) It is without the consent of the trademark or trade name owner or the assignee thereof.
Clearly, a trade name need not be registered with the IPO before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines. Section 22 of Republic Act No. 166, 12 cЃa as amended, required registration of a trade name as a condition for the institution of an infringement suit. However, RA 8293, Section 165 of RA 8293 categorically states that trade names shall be protected, even prior to or without registration with the IPO, against any unlawful act x x x. Also, applying the dominancy test or the holistic test, petitioners "SAN FRANCISCO COFFEE" trademark is a clear infringement of respondents "SAN FRANCISCO COFFEE & ROASTERY, INC." trade name.
(2) GSIS Family Bank and Thrift Bank v. BPI Family Bank G no. 175278, September 23 , 2015
d. Non Registrable Marks (Sec 123)
(1) Fredco Manufacturing Corp. v. President and Fellow of Harvard College G. no 185917, June 1, 2011
Facts:
Fredco Manufacturing Corporation filed before the Bureau of Legal Affairs of the Philippine Intellectual Property Office a Petition for Cancellation of Registration No. 56561 issued to President and Fellows of Harvard College for the mark “Harvard Veritas Shield Symbol”. Fredco claimed that Harvard University had no right to register the mark, since its Philippine registration was based on a foreign registration. Hence,Harvard University could not have been considered as a prior user of the mark in the Philippines. Fredco explained that the mark was first used in the Philippines by its predecessor-in -interest New York Garments as early as 1982, and a certificate of registration was then issued in 1988 for goods under class 25. Although the registration was cancelled for the non-filing of an affidavit of use, the fact remained that the registration preceded Harvard University’s use of the subject mark in the Philippines.
Harvard University, on the other hand claimed that the name and mark “Harvard” was adopted in 1639 as the name of Harvard College of Cambridge, Massachusetts, USA. The Bureau of Legal Affairs ruled in favor of Fredco and ordered the cancellation of Registration No. 56561. It found Fredco to be the prior user and adopter of the mark “Harvard” in the Philippines. On appeal, the Office of the Director General of the Intellectual Property Office reversed the BLA ruling on the ground that more than the use of the trademark in the Philippines, the applicant must be the owner of the mark sought to be registered. Fredco, not being the owner of the mark, had no right to register it. The Court Appeals affirmed the decision of the Office of the Director General. Fredco appealed the decision with the Supreme Court. In its appeal, Fredco insisted that the date of actual use in the Philippines should prevail on the issue of who had a better right to the mark.
The SC held that:
Under Section 2 of Republic Act No. 166, as amended (R. No. 166), before a trademark can be registered, it must have been actually used in commerce for not less than two months in the Philippines prior to the filing of an application for its registration. While Harvard University had actual prior use of its marks abroad for a long time, it did not have actual prior use in the Philippines of the mark "Harvard Veritas Shield Symbol" before its application for registration of the mark "Harvard" with the then Philippine Patents Office. However, Harvard University's registration of the name
"Harvard" is based on home registration which is allowed under Section 37 of R. No. 166. As pointed out by Harvard University in its Comment:
Section 2 of the Trademark law (R. 166) requires for the registration of trademark that the applicant thereof must prove that the same has been actually in use in commerce or services for not less than two (2) months in the Philippines before the application for registration is filed, where the trademark sought to be registered has already been registered in a foreign country that is a member of the Paris Convention, the requirement of proof of use in the commerce in the Philippines for the said period is not necessary. An applicant for registration based on home certificate of registration need not even have used the mark or trade name in this country.”
“In any event, under Section 239 of Republic Act No. 8293 (R. No. 8293), "[m]arks registered under Republic Act No. 166 shall remain in force but shall be deemed to have been granted under this Act x x x," which does not require actual prior use of the mark in the Philippines. Since the mark "Harvard Veritas Shield Symbol" is now deemed granted under R. No. 8293, any alleged defect arising from the absence of actual prior use in the Philippines has been cured by Section 239.”
The Supreme Court further ruled that Harvard University is entitled to protection in the Philippines of its trade name “Harvard” even without registration of such trade name in the Philippines. It explained:
“There is no question then, and this Court so declares, that "Harvard" is a well-known name and mark not only in the United States but also internationally, including the Philippines.
(2) Ana Ang vs. Toribio Teodoro, G. no L-48226, December 14, 1942
FACTS Respondent Toribio Teodoro, has continuously used "Ang Tibay," both as a trade-mark and as a trade-name, in the manufacture and sale of slippers, shoes, and indoor baseballs since 1910. He formally registered it as trade-mark on September 29, 1915, and as trade-name on January 3, 1933. Petitioner registered the same trade-mark "Ang Tibay" for pants and shirts on April 11, 1932, and established a factory for the manufacture of said articles in the year 1937. In that year she advertised the factory which she had just built and it was when this was brought to the attention of the herein respondent filed a complaint against the petitioner.
The trial court absolved the complaint on the grounds that the two trademarks are dissimilar and are used on different and non-competing goods; that there had been no exclusive use of the trade-mark by the plaintiff(petitioner); and that there had been no fraud in the use of the said trade-mark by the defendant because the goods on which it is used are essentially different from those of the plaintiff. The Court of Appeals reversed the trial court’s judgment holding that by uninterrupted and exclusive use since 1910 in the manufacture of slippers and shoes, respondent's trade-mark has acquired a secondary meaning.
ISSUE Whether or not the “doctrine of secondary meaning” can be applied to respondent’s trade-mark.
RULING OF THE COURT The Function of a trade-mark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied. “Ang Tibay,” as used by the respondent to designate his wares, had exactly performed that function for 22 years before the petitioner adopted it as a trade-mark in her own business. “Ang Tibay” shoes and slippers are, by association, known throughout the Philippines as products of the “Ang Tibay” factory owned and operated by the respondent. Even if “Ang Tibay,” therefore, were not capable of exclusive appropriation as a trade-mark, the application of the doctrine of secondary meaning could nevertheless be fully sustained because, in any event, by respondent’s long and exclusive use of said phrase with reference to his products and his business, it has acquired a propriety connotation.
(3) Mcdonalds Corporation v. LC Big Mac Burger, Inc. G no 14399
Facts: McDonald’s is a corporation organized under the laws of Delaware which operates by itself or through its franchisees a global chain of fast-food restaurants. It owns a family of marks including “Big Mac” for their “double- decker hamburger sandwich.” This trademark was registered with the US Trademark Registry on October 16, 1979. Thus, McDonald’s displays the “Big Mac” mark in their items and paraphernalia.
L. Big Mak Burger, Inc. is a domestic corporation which operates fast-food outlets and snack vans in Metro Manila and nearby provinces. The menu includes hamburger sandwiches. On October 25, 1988, they applied for the registration of the “Big Mak” mark for their hamburger sandwiches which McDonald’s opposed,
On September 23, 2003, petitioner Seri Somboonsakdikul (petitioner) filed an
application for registration of the mark LOLANE with the IPO for goods classified
under Class 3 (personal care products) of the International Classification of Goods
and Services for the Purposes of the Registration of Marks (International
Classification of Goods). Orlane S. (respondent) filed an opposition to petitioner's
application, on the ground that the mark LOLANE was similar to ORLANE in
presentation, general appearance and pronunciation, and thus would amount to an
infringement of its mark. Respondent alleged that: (1) it was the rightful owner of
the ORLANE mark which was first used in 1948; (2) the mark was earlier registered
in the Philippines on July 26, 1967 under Registration No. 129961 with the following
goods: x x x perfumes, toilet water, face powders, lotions, essential oils, cosmetics,
lotions for the hair, dentrifices, eyebrow pencils, make-up creams, cosmetics &
toilet preparations under Registration No. 12996 and (3) on September 5, 2003, it
filed another application for use of the trademark on its additional products.
Petitioner denied that the LOLANE mark was confusingly similar to the mark
ORLANE. He averred that he was the lawful owner of the mark LOLANE which he
has used for various personal care products sold worldwide. He alleged that the
first worldwide use of the mark was in Vietnam on July 4, 1995. Petitioner also
alleged that he had continuously marketed and advertised Class 3 products bearing
LOLANE mark in the Philippines and in different parts of the world and that as a
result, the public had come to associate the mark with him as provider of quality
personal care products.
Petitioner maintained that the marks were distinct and not confusingly similar
either under the dominancy test or the holistic test.
The Bureau of Legal Affairs (BLA) rejected petitioner's application in a Decision
dated February 27, 2007, finding that respondent's application was filed, and its
mark registered, much earlier. The BLA ruled that there was likelihood of confusion
based on the following observations: (1) ORLANE and LOLANE both consisted of six
letters with the same last four letters - LANE; (2) both were used as label for similar
products; (3) both marks were in two syllables and that there was only a slight
difference in the first syllable; and (4) both marks had the same last syllable so that
if these marks were read aloud, a sound of strong similarity would be produced and
such would likely deceive or cause confusion to the public as to the two
trademarks.
Petitioner filed a motion for reconsideration but this was denied by the Director of the BLA on May 7, 2007. On appeal, the Director General of the IPO affirmed the Decision of the BLA Director. Thus, petitioner filed a petition for review before the CA arguing that there is no confusing similarity between the two marks. The Court of Appeals denied the petition and held that there exists colorable imitation of respondent's mark by LOLANE. The CA accorded due respect to the Decision of the Director General and ruled that there was substantial evidence to support the IPO's findings of fact. Applying the dominancy test, the CA ruled that LOLANE' s mark is confusingly or deceptively similar to ORLANE
Issue: Wether or not there is confusing similarity between ORLANE and LOLANE which would bar the registration of LOLANE before the IPO.
Ruling: No, there is no confusing similarity between ORLANE and LOLANE which would bar the registration of LOLANE before the IPO. The Court ruled that the CA erred when it affirmed the Decision of the IPO.
There is no colorable imitation between the marks LOLANE and ORLANE which would lead to any likelihood of confusion to the ordinary purchasers. A trademark is defined under Section 121 of RA 8293 as any visible sign capable of distinguishing the goods. It is susceptible to registration if it is crafted fancifully or arbitrarily and is capable of identifying and distinguishing the goods of one manufacturer or seller from those of another. Thus, the mark must be distinctive. The registrability of a trademark is governed by Section 123 of RA 8293. Section 123 provides: Section 123. 1. A mark cannot be registered if it: xxx... Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: i. The same goods or services, or ii. Closely related goods or services, or iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion; e. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: provided, that in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; xxx.
In determining the likelihood of confusion, the Court must consider: [a] the resemblance between the trademarks; [b] the similarity of the goods to which the
trademarks are attached; [c] the likely effect on the purchaser and [d] the registrant's express or implied consent and other fair and equitable considerations. Likewise, the Court finding that LOLANE is not a colorable imitation of ORLANE due to distinct visual and aural differences using the dominancy test, it no longer finds necessary to discuss the contentions of the petitioner as to the appearance of the marks together with the packaging, nature of the goods represented by the marks and the price difference, as well as the applicability of foreign judgments. The Court ruled that the mark LOLANE is entitled to registration. Hence, the petition is GRANTED and the Decision of the Court of Appeals dated July 14, 2009 is REVERSED and SET ASIDE.
(6) Lyceum of the Philippines vs. Court of Appeals, G. no. 101897, March 5, 1993
Facts:
Petitioner Lyceum of the Philippines had commenced before the SEC a proceeding against the Lyceum of Baguio to change its corporate name alleging that the 2 names are substantially identical because of the word ‘Lyceum’. SEC found for petitioner and the SC denied the consequent appeal of Lyceum of Baguio in a resolution. Petitioner then basing its ground on the resolution, wrote to all educational institutions which made use of the word ‘Lyceum’ as part of their corporate name to discontinue their use. When this recourse failed, petitioner moved before the SEC to enforce its exclusive use of the word ‘Lyceum.’ Petitioner further claimed that the word ‘Lyceum’ has acquired a secondary meaning in its favor. The SEC Hearing Officer found for petitioner. Both SEC En Banc and CA ruled otherwise.
Issues:
(1) Whether or not ‘Lyceum’ is a generic word which cannot be appropriated by petitioner to the exclusion of others.
(2) Whether or not the word ‘Lyceum’ has acquired a secondary meaning in favor of petitioner.
(3) Whether or not petitioner is infringed by respondent institutions’ corporate names.
Ruling:
(1) YES. “Lyceum” is in fact as generic in character as the word “university.” In the name of the petitioner, “Lyceum” appears to be a substitute for “university;” in other places, however, “Lyceum,” or “Liceo” or “Lycee” frequently denotes a secondary school or a college. It may be that the use of the word “Lyceum” may not yet be as widespread as the use of “university,” but it is clear that a not inconsiderable number of educational institutions have adopted “Lyceum” or “Liceo” as part of their corporate names. Since “Lyceum” or “Liceo” denotes a school or institution of learning, it is not unnatural to use this word to designate an entity which is organized and operating as an educational institution.
(2) NO. Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that, in that trade and to that group of the purchasing public, the word or phrase has come to mean that the article was his produce. With the foregoing as a yardstick, [we] believe the appellant failed to satisfy the aforementioned requisites. While the appellant may have proved that it had been using the word ‘Lyceum’ for a long period of time, this fact alone did not amount to mean that the said word had acquired secondary meaning in its favor because the appellant failed to prove that it had been using the same word all by itself to the exclusion of others. More so, there was no evidence presented to prove that confusion will surely arise if the same word were to be used by other educational institutions.
(3) NO. We do not consider that the corporate names of private respondent institutions are “identical with, or deceptively or confusingly similar” to that of the petitioner institution. True enough, the corporate names of private respondent entities all carry the word “Lyceum” but confusion and deception are effectively precluded by the appending of geographic names to the word “Lyceum.” Thus, we do not believe that the “Lyceum of Aparri” can be mistaken by the general public for the Lyceum of the Philippines, or that the “Lyceum of Camalaniugan” would be confused with the Lyceum of the Philippines. We conclude and so hold that petitioner institution is not
the system of rules which a particular country or community recognizes as regulating the actions of its members and which it may enforce by the imposition of penalties. "they were taken to court for breaking the law"
Course: Business Administration (BSBA)
University: Tarlac State University
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