Trademarks:

1.) Test of Confusing Similarity

Dominancy Test
The Dominancy Test focuses on the similarity of the prevalent features of the competing trademarks that might
cause confusion or deception.
It is applied when the trademark sought to be registered contains the main, essential and dominant features of the
earlier registered trademark, and confusion or deception is likely to result.
Duplication or imitation is not even required; neither is it necessary that the label of the applied mark for registration
should suggest an effort to imitate.
The important issue is whether the use of the marks involved would likely cause confusion or mistake in the mind of
or deceive the ordinary purchaser, or one who is accustomed to buy, and therefore to some extent familiar with, the
goods in question.
Given greater consideration are the aural and visual impressions created by the marks in the public mind, giving
little weight to factors like prices, quality, sales outlets, and market segments.
Legal Basis: Section 155.1 of IP CODE: 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
Holistic Test
On the other hand, the Holistic Test entails a consideration of the entirety of the marks as applied to the products,
including labels and packaging, in determining confusing similarity.
The scrutinizing eye of the observer must focus not only on the predominant words but also on the other features
appearing in both labels so that a conclusion may be drawn as to whether one is confusingly similar to the other

2.) Trade Dress

Trade dress is the overall commercial image (look and feel) of a product that indicates or identifies the source of the
product and distinguishes it from those of others. It may include the design or shape/configuration of a product;
product labeling and packaging; and even the dcor or environment in which services are provided. Trade dress can
consist of such elements as size, shape, color and texture, to the extent that such elements are not functional. In
many countries, trade dress is referred to as get-up or product design.

3.) Doctrine of Related Goods and Services

The Supreme Court took the occasion of discussing what is implied in the definition of infringement when it stated:
Implicit in this definition is the concept that the goods must be so related that there is likelihood either of confusion
of goods or business. But as to whether trademark infringement exists depends for the most part upon whether or not

the goods are so related that the public may be, or is actually, deceived and misled that they came from the same
maker or manufacturer. For non-competing goods may be those which, though they are not in actual competition,
are so related to each other that it might reasonably be assumed that they originate from one manufacturer. Noncompeting goods may also be those which, being entirely unrelated, could not reasonably be assumed to have a
common source. In the former case of related goods, confusion of business could arise out of the use of similar
marks; in the latter case of non-related goods, it could not.

4.) Distinctiveness: Doctrine of Secondary Meaning

Adescriptive or generic mark may, however, be placed on the supplemental register, which gives the holder of the m
ark acertain measure of trademark protection. If the mark acquires a secondary meaning after five years of continuou
s, exclusiveuse on the market, the mark may be placed on the principal register
A descriptive or generic mark attains a secondary meaning if the producer so effectively markets the product with th
e markthat consumers come to immediately associate the mark with only that producer of that particular kind of
goods.

5.) Doctrine of dilution

Trademark Dilution Doctrine is basically a trademark law concept that permits the owner of a famous mark to
forbid others from using that mark in a way which would harm its uniqueness.
A trademark is diluted when the use of similar or identical trademarks in other noncompeting markets means that
the trademark in and of itself will lose its capacity to signify a single source.
In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse
consumers regarding who has made a product.
Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association
in the public mind with a particular product, perhaps imagined if the trademark were to be encountered
independently of any product.
Dilution Doctrine is a principle of trademark law that protects a trademark from deterioration in strength, as when a
person seeks to use the mark for an unrelated product.

6.) Idem Sonans rule

Idem sonans is a legal doctrine whereby a person's identity is presumed known despite the misspelling of his or her
name. The presumption lies in the similarity between the Phonology, or sounds of the correct name and the name as
written. Such similar-sounding words are called a homonym, while similar-sounding phrases or names would be
a holorime.
The rule of idem sonans is that absolute accuracy in spelling names is not required in a legal document
or proceedings either civil or criminal; that if the name, as spelled in the document, though different from the correct
spelling thereof, conveys to the ear, when pronounced according to the commonly accepted methods, a sound
practically identical with the correct name as commonly pronounced,the name thus given is a

sufficient identification of the individual referred to, and no advantage can be taken of the clerical error.

7.) Domain name: Cyber squatting

When a person other than the owner of a well-known trademark registers that trademark as an Internet domain name
and then attempts to profit from it either by ransoming the domain name back to the trademark owner or by using
the domain name to divert business from the trademark owner to the owner of the domain name.
The elements required to establish a cybersquatting claim are:
plaintiff's ownership of a distinctive or famous mark entitled to protection;
defendant's domain name is identical or confusingly similar to plaintiff's trademark; and
defendant registered domain name with bad faith intent to profit from it

8.) Infringement; unfair competition

Under the theory of unfair competition, any trade-mark or similar device adopted by the plaintiff, registered or not,
will be protected against simulation attempted by a competitor which violates the rules of fair competition and does
injury to the plaintiff.
This is covered by Section 168 of the IP Code which reads:
168.2. 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, and shall be subject to an action therefor.