o The incorporeal right, however, is distinct from the

INTELLECTUAL PROPERTY LAW property in the material object subject to it.

Ownership in one does not necessarily vest
BRIEF OVERVIEW ownership in the other.
OF THE INTERNATIONAL PROPERTY SYSTEM
o The transfer or assignment of the intellectual
property will not necessarily constitute a conveyance
Intellectual Property (IP) refers to creations of the of the thing it covers, nor would a conveyance of the
mind: inventions, literary and artistic works, and latter imply the transfer or assignment of the
symbols, names, images, and designs used in intellectual right. (Distilleria Washington, Inc. v.
commerce. The Honorable Court of Appeals, G.R. No.
120961, October 17, 1996.)
TWO (2) CATEGORIES OF IP
o An infringement of intellectual rights is no less
INDUSTRIAL PROPERTY- includes inventions vicious and condemnable as theft of material
(patents), trademarks, industrial designs, and property, whether personal or real. (Amigo
geographic indications of source; and Manufacturing vs. Cluetpeabody Co., Inc., G.R.
No. 139300, 14 March 2001)
COPYRIGHT - includes literary and artistic works such
as novels, poems and plays, films, musical works, 1987 CONSTITUTION
artistic works such as drawings, paintings, photographs SEC. 3, ART. VII
and sculptures, and architectural designs. Rights related “The State shall protect and secure the
to copyright include those of performing artists in their exclusive rights of scientists, inventors,
performances, producers of phonograms in their artists and other gifted citizens to their
recordings, and those of broadcasters in their radio and intellectual property and creations, particularly
television programs. when beneficial to the people for such period as
may be provided by law.”
FOUR (4) ASPECTS OF IP
Republic Act No. 8293
1. Creationg Section 2 of Republic Act No. 8293. Declaration of
2. Protection State Policy. –
3. Utilization o The State recognizes that an effective
4. Enforcement intellectual and industrial property system is
vital to the development of domestic and
OWNERSHIP creative activity, facilitates transfer of
technology, attracts foreign investments, and
Art. 427 of the Civil Code of the Philippinesprovides: ensures market access for our products. It shall
“Ownership may be exercised over things or rights” protect and secure the exclusive rights of
scientists, inventors, artists and other gifted
Art. 712 of the Civil Code of the Philippinesprovides: citizens to their intellectual property and
“Ownership is acquired by occupation and by creations, particularly when beneficial to the
intellectual creation. people, for such periods as provided in this Act.

Ownership and other real rights over property are
acquired and transmitted by law, by donation, by estate
and intestate succession, and in consequence of certain
contracts, by tradition.
They may also be acquired by means of prescription”.
o The use of intellectual property bears a
social function. To this end, the State shall
promote the diffusion of knowledge and
information for the promotion of national
development and progress and the common
good.

Nature of Intellectual Property o It is also the policy of the State to streamline

1. Intangible administrative procedures of registering
2. Territorial patents, trademarks and copyright, to liberalize
3. Conferred by Law the registration on the transfer of technology,
4. Non Rivalrous and to enhance the enforcement of intellectual
• Information may be enjoyed by others at the property rights in the Philippines.
same time.
• Maybe consumed by many at the same IP RELATED LAWS
time without additional cost or diminishing Republic Act No. 8293 Intellectual Property Code of the
its value. Philippines (as amended by RA
No. 10372)
1
Republic Act No. 3720 Food and Drug Administration
(as amended by RA No. 9711)
Republic Act No. 8203 Special Law on Counterfeit
Drugs
Republic Act No. 9239 Optical Media Act
Republic Act No. 8792 Electronic Commerce Act
Republic Act No. 9150 Protection of Layout Design of
Integrated Circuits
Republic Act No. 9168 Plant Variety and Protection Act
Republic Act No. 9052 Universally Accessible and
Quality Medicine Act of 2006
Republic Act No. 10055 Philippine Technology Transfer
Act of 2009
Republic Act No. 10088 Anti-Camcording Act
Republic Act No. 10175 Cybercrime Prevention Act
Republic Act No. 10365 An Act Amending RA
No. 9160
(Anti Money Laundering Act)
Kinds of Intellectual Property Rights
Section 4 of RA No. 8293 provides that:
The term "intellectual property rights" consists
of:
1. Copyright and Related Rights;
2. Trademarks and Service Marks;
3. Geographic Indications;
4. Industrial Designs;
5. Patents;
6. Layout-Designs (Topographies) of Integrated
Circuits; and
7. Protection of Undisclosed Information
Copyright and Related Rights
o Exists over original and derivative intellectual
creations in the literary and artistic domain protected
from the moment of their creation.(§172, IP Code)
Trademarks and Service Marks
o 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.(§121.1, IP Code)
Geographic Indications
o Indications which identify a good as originating in the
territoryof a Member of the Agreement, or a region
or locality in that territory, where a given quality,
reputation or other characteristic of the good is
essentially attributable to its geographical origin.
(Article 22, TRIPS Agreement)
Industrial Designs
o Any composition of lines or colors or any three-
dimensional form, whether or not associated with
lines or colors, provided that such composition or
form gives a special appearance to and can serve as
pattern for an industrial product or handicraft. It must
be new or original. (§112, 113 IP Code)
Patents
o Any technical solution of a problem in any field of
human activity which is new, involves an inventive
step and is industrially applicable. It may be, or may
relate to, a product, or process, or an improvement
of any of the foregoing. (§21, IP Code)
Integrated Circuit
o Means a product, in its final form, or an intermediate
form, in which the elements, at least one of which is
an active element and some or all of the
interconnections are integrally formed in and/or on a
piece of material, and which is intended to perform
an electronic function;
Layout-Design is synonymous With 'Topography' and
means
the three-dimensional disposition, however
expressed, of the elements, at least one of which is
an active element, and of some or all of the
interconnections of an integrated circuit, or such a
three-dimensional disposition prepared for an
integrated circuit intended for manufacture. (§112.2,
and 112.3 IP Code as amended by R.A. No. 9150
[August 6, 2001])
Protection of Undisclosed Information
o Protection of information lawfully held from being
disclosed to, acquired by, or used by others without
their consent in a manner contrary to honest
commercial practices so long as such information:
(a) is secret in the sense that it is not, as a body or
in the precise configuration and assembly of its
components, generally known among or readily
accessible to persons within the circles that normally
deal with the kind of information in question; (b) has
commercial value because it is secret; and (c) has
been subject to reasonable steps under the
circumstances, by the person lawfully in control of
the information, to keep it secret. (Article 39, TRIPS
Agreement)
Trade Secret
o A plan or process, tool, mechanism or compound
known only to its owner and those of his employees
to whom it is necessary to confide it. The definition
also extends to: (a) a secret formula or process not
patented, but known only to certain individuals using
it in compounding some article of trade having a
commercial value; or (b) any formula, pattern,
device, or compilation of information that: (1) is used
in one's business; and (2) gives the employer an
opportunity to obtain an advantage over competitors
who do not possess the information. (Air
Philippines Corporation vs. Pennwell, Inc., G.R.
No. 172835, 13 December 2007)
INTELLECTUAL PROPERTY RIGHTS
(Laws, principles, rules and relevant cases)
TRADEMARKS
2

DEFINITIONS:
o "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;
o "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;
o "Trade name" means the name or designation
identifying or distinguishing an enterprise.(§121.1,
121.2, 121.3, IP Code)
REQUIREMENTS FOR PROTECTION OF
TRADEMARKS
HOW MARKS ARE ACQUIRED(§122)
o The rights in a mark shall be acquired through
registration made validly in accordance with the
provisions of the IP Code.
CERTIFICATE OF REGISTRATION AS PRIMA FACIE
EVIDENCE OF VALIDITY OF REGISTRATION (§138)
o 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.
PROTECTION OF TRADENAMES/BUSINESS NAMES
o A name or designation may not be used as a trade
name if by its nature or the use to which such name
or designation may be put, it is contrary to public
order or morals and if, in particular, it is liable to
deceive trade circles or the public as to the nature of
the enterprise identified by that name.
o Notwithstanding any laws or regulations
providing for any obligation to register trade
names, such names shall be protected, even
prior to or without registration, against any
unlawful act committed by third parties.
o 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.(§165, IP CODE)
FUNCTIONS OF A TRADEMARK
o A trademark is a distinctive mark of authenticity
through which the merchandise of a particular
producer or manufacturer may be distinguished from
that of others, and its sole function is to designate
distinctively the origin of the products to which it is
attached. (Arce Sons and Company, G.R. No. L-
14761 and G. R. No. 171981, 28 January 1961)
o A trademark is any visible sign capable of
distinguishing goods. It includes any word, name,
symbol, emblem, sign or device or any combination
thereof, adopted and used by a manufacturer or
merchant to identify his goods and distinguish them
from those manufactured, sold or dealt in by others.
It symbolizes the goodwill and business reputation of
the owner of the product and is a property right
protected by law. (Mirpuri v. Court of Appeals,
G.R. No. 114508, 19 November 1999)
o Modern authorities on trademark law view
trademarks as performing three distinct functions: (1)
they indicate origin or ownership of the articles to
which they are attached; (2) they guarantee that
those articles come up to a certain standard of
quality; and (3) they advertise the articles they
symbolize. (Mirpuri v. Court of Appeals, G.R. No.
114508, 19 November 1999)
o The protection of trademarks as intellectual property
is intended not only to preserve the goodwill and
reputation of the business established on the goods
bearing the mark through actual use over a period of
time, but also to safeguard the public as consumers
against confusion on these goods. (Berris
Agricultural Co., Inc. vs. Norvy Abyadang, G.R.
No. 183404, October 13, 2010)
TRADEMARK = Visible + Distinctive + Not
Barred
from Registration
Critical issues : Distinctiveness and Non
Registrability
Guide on the Degree of Distinctiveness
1. Fanciful - e.g. Xerox (copier)
2. Arbitrary - e.g. Apple (mobile
phone)
3. Suggestive - e.g. Tough (shoes)
4. Descriptive - e.g. Fragrant (perfume)
5. Generic - e.g. Pants (pants)
NON REGISTRABLE MARKS
REGISTRABILITY (§123) – A mark cannot be registered
if it:
o Consists of immoral, deceptive or scandalous
matter, or matter which may disparage or
falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national
symbols, or bring them into contempt or
disrepute;
o Consists of the flag or coat of arms or other
insignia of the Philippines or any of its political
3
 subdivisions, or of any foreign nation, or any
simulation thereof;
o Consists of a name, portrait or signature
identifying a particular living individual except
by his written consent, or the name, signature, or
portrait of a deceased President of the
Philippines, during the life of his widow, if
any, except by written consent of the widow;
CIVIL CODE OF THE PHILIPPINES
Art. 26.Every person shall respect the dignity,
personality, privacy and peace of mind of his neighbors
and other persons. The following and similar acts,
though they may not constitute a criminal offense, shall
produce a cause of action for damages, prevention and
other relief:
(1) Prying into the privacy of another's residence;
(2) Meddling with or disturbing the private life or
family relations of another;
(3) Intriguing to cause another to be alienated from
his friends; 
(4) Vexing or humiliating another on
account of his religious beliefs, lowly station in
life, place of birth, physical defect, or other
personal condition.
NON REGISTRABLE MARKS
Registrability (§123) – A mark cannot be registered if it:
o Is identical with a registered mark belonging to
a different proprietor or a mark with an earlier
filing or priority date, in respect of:
a. The same goods or services, or
b. Closely related goods or services – (e.g.
same class, same nature and/or
characteristics )
c. If it nearly resembles such a mark as to be
likely to deceive or cause confusion
IDENTICAL = same, equal, alike, or having close
similarity or resemblance
Q: Is mere similarity sufficient?
A: The law does not prohibit or enjoin every similarity.
The similarity must be such that the ordinary purchaser
will be deceived into the belief that the goods are those
of another. (The Alhambra Cigar and Cigarette
Manufacturing Co. v. Compania General de Tabacos
De Filipinas, G. R. No. 11490, October 14, 1916)
LIKELIHOOD OF CONFUSION
o Is a relative concept; the particular, and sometimes
peculiar, circumstances of each case being
determinative of its existence. (Philip Morris, Inc.
vs. Fortune Tobacco Corporation, G.R. No.
158589, 27 June 2006; Prosource International,
Inc. vs. Horphag Research Management SA, G.R.
No. 180073. November 25, 2009)
NO DEFINITE RULE
o In infringement or trademark cases in the
Philippines, particularly in ascertaining whether
one trademark is confusingly similar to or is a
colorable imitation of another, no set of rules can
be deduced. Each case must be decided on
its own merits. The likelihood of confusion is
a relative concept; to be determined only
according to the particular, and sometimes
peculiar, circumstances of each case. In
trademark cases, even more than in any other
litigation, precedent must be studied in light of
the facts of the particular case. The wisdom of
the likelihood of confusion test lies in its
recognition that each trademark infringement
case presents its own unique set of facts.
Indeed, the complexities attendant to an
accurate assessment of likelihood of confusion
require that the entire panoply of elements
constituting the relevant factual landscape be
comprehensively examined. (Societe Des
Produits Nestle, S.A. v. Court of Appeals,
G.R. No. 112012, 04 April 2001; Esso
Standard Eastern, Inc. vs. The Honorable
Court of Appeals, G.R. No. L-29971, 31
August 1982; Canon Kabushiki Kaisha vs.
Court of Appeals, G.R. No. 120900, 20 July
2000)
TESTS TO DETERMINE CONFUSING SIMILARITY OF
MARKS
2 TYPES OF CONFUSION:
Confusion of Goods
o The ordinarily prudent purchaser would be
induced to purchase one product in the belief
that he was purchasing the other.
Confusion of Origin (Confusion of Business)
o The goods of the parties are different, the
defendant’s product is such as might reasonably
be assumed to originate with the plaintiff, and
the public would then be deceived either into
that belief or into the belief that there is some
connection between the plaintiff and defendant
which, in fact, does not exist.
(See: Nestle v. Dy, GR No. 172276, August 8, 2010,
citing Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft and Callman.)
TESTS TO DETERMINE CONFUSING SIMILARITY OF
MARKS
2 TESTS TO DETERMINE COLORABLE IMITATION:
1. Dominancy Test
o If the competing trademark contains the main or
essential or dominant features of another, and
confusion and deception are likely to result,
infringement takes place. Duplication or
imitation is not necessary; nor is it necessary
4
 that the infringing label should suggest an effort
to imitate. (C. Neilman Brewing Co. v.
Independent Brewing Co., 191 F. 489, 495,
citing Eagle White Lead Co. vs. Pflugh [CC] 180
FED. 579) See Del Monte vs. CA, GR No. L-
78325, January 25, 1990
2. Holistic Test
o The trademarks in their entirety as they appear
in their respective labels are considered in
relation to the goods to which they are attached.
The discerning eye of the observer must focus
not only on the predominant words but also on
the other features appearing in both labels in
order that he may draw his conclusion whether
one is confusingly similar to the other (Bristol
Myers Co. vs. Director of Patents, 17 SCRA 131;
See also Fruit of the Loom Inc. vs. CA, GR No.
L-32747, November 29, 1984.)
BEFORE THE ENACTMENT OF RA NO. 8293
Section 22 of R.A. No. 166, provides that:
Section 22. Infringement, what constitutes.
Any person who shall use, without the consent of
the registrant, any reproduction, counterfeit, copy
or colorable imitation of any registered mark or
trade-name in connection with the sale, offering for
sale, or advertising of any goods, business or
services on or in connection with which such use is
likely to cause confusion or mistake or to deceive
purchasers or others as to the source or origin of
such goods or services, or identity of such
business; or reproduce, counterfeit, copy or
colorably imitate any such mark or trade-name and
apply such reproduction, counterfeit, copy, or
colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or
advertisements intended to be used upon or in
connection with such goods, business or services,
shall be liable to a civil action by the registrant for
any or all of the remedies herein provided.
Under RA No. 8293
TRADEMARK INFRINGEMENT (§155)
o The commission of the following acts by any
person, without the consent of the owner of the
registered mark:
a. 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; or
b. 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 advertising of goods or services
on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive, shall be
liable in a civil action for infringement by the registrant.
RULES OF PROCEDURE
FOR INTELLECTUAL PROPERTY RIGHTS CASES
A.M. No. 10-3-10 SC, October 18, 2011
Rule 18
EVIDENCE IN TRADEMARK INFRINGEMENT AND
UNFAIR COMPETITION CASES
SEC. 3. Presumption of likelihood of confusion. –
Likelihood of confusion shall be presumed in case
an identical sign or mark is used for identical
goods or services.
SEC. 4. Likelihood of confusion in other cases. – In
determining whether one trademark is confusingly
similar to or is a colorable imitation of another, the
court must consider the general impression of the
ordinary purchaser, buying under the normally
prevalent conditions in trade and giving the
attention such purchasers usually give in buying
that class of goods.
o Visual, aural, connotative comparisons and overall
impressions engendered by the marks in
controversy as they are encountered in the
realities of the marketplace must be taken into
account. Where there are both similarities and
differences in the marks, these must be weighed
against one another to see which predominates.
In determining likelihood of confusion between
marks used on non- identical goods or services,
several factors may be taken into account, such as, but
not limited to:
a. the strength of plaintiff’s mark;
b. the degree of similarity between the plaintiff’s
and thedefendant’s marks;
c. the proximity of the products or services;
d. the likelihood that the plaintiff will bridge the
gap;
e. evidence of actual confusion;
f. the defendant's good faith in adopting the mark;
g. the quality of defendant's product or service;
and/or
h. the sophistication of the buyers.―
o Colorable imitation denotes such a close or ingenious
imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to
deceive an ordinary purchaser giving such attention
as a purchaser usually gives, as to cause him to
purchase the one supposing it to be the other.
RELATED GOODS
In resolving whether goods are related, several factors
come into play:
a. the business (and its location) to which the
goods belong;
5
 b. the class of product to which the goods belong;
c. the product’s quality, quantity, or size, including
the nature of thepackage, wrapper or container;
d. the nature and cost of the article;
e. The descriptive properties, physical attributes or
essentialcharacteristics with reference to their
form, composition, texture orquality;
f. the purpose of the goods;
g. whether the article is bought for immediate
consumption, that is, day- to-day household
items;
h. fields of manufacture;
i. the conditions under which the article is usually
purchased; and,
j. The channels of trade through which the goods
flow, how they are distributed, marketed,
displayed and sold. (Mighty Corporation vs. E.
J. Gallo Winery, G.R. No. 154342, 14 July
2004)
o Goods are related when they belong to the same
class or have the same descriptive properties; when
they possess the same physical attributes or
essential characteristics with reference to their form,
composition, texture or quality. They may also be
related because they serve the same purpose or are
sold in grocery stores. (Esso Standard Eastern, Inc.
vs. The Honorable Court of Appeals; Canon
Kabushiki Kaisha vs. Court of Appeals, G.R. No.
120900, 20 July 2000)
o 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. Non-competing
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. (Esso Standard Eastern, Inc.
vs. The Honorable Court of Appeals, G.R. No. L-
29971 31 August 1982)
CASE: Emerald Garment Manufacturing Corp. vs.
CA, (GR No.100098, December 1995)
LEE vs. STYLISTIC MR. LEE
N.B. Holistic Test was applied
o Pants products are not inexpensive
o Consumer is knowledgeable of the product he
buys
o Ordinary Purchaser Rule
Related Supreme Court Cases:
o Societe Des Produits Nestle vs. Court of
Appeals, GR No. 112012, April 4, 2001
o Flavor Master vs. Master Roast and Master
Blend
N.B. Dominancy Test was applied
• Master is the dominant feature (2x size of Roast)
• Master has been given in advertisements
• Master is suggestive not descriptive or generic
o The totality or holistic test is contrary to the
elementary postulate of the law on trademarks and
unfair competition that confusing similarity is to be
determined on the basis of visual, aural, connotative
comparisons and overall impressions engendered by
the marks in controversy as they are encountered in
the realities of the marketplace. The totality or holistic
test only relies on visual comparison between two
trademarks whereas the dominancy test relies not only
on the visual but also on the aural and con- notative
comparisons and overall impressions between the two
trademarks. (Societe Des Produits Nestle, S.A. v.
Court of Appeals, G.R. No. 112012, 04 April 2001)
o Colorable imitation denotes such a close or ingenious
imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to
deceive an ordinary purchaser giving such attention as
a purchaser usually gives, as to cause him to purchase
the one supposing it to be the other.
o The test of dominancy focuses on the similarity of the
prevalent features of the competing trademarks which
might cause confusion or deception and thus constitute
infringement. (Societe Des Produits Nestle, S.A. v.
Court of Appeals, G.R. No. 112012, 04 April 2001)
CASE: Mighty Corp. v. E. & J. Gallo
(G.R. 154352,
July 14, 2004)
GALLO and ERNEST & JULIO GALLO for wines
vs
GALLO for cigarettes
N.B. Both Holistic and Dominancy Test applied
o Whether a trademark causes confusion and is likely
to deceive the public hinges on colorable imitation
which has been defined as “similarity in form, content,
words, sound, meaning, special arrangement or
general appearance of the trademark or trade name
in their overall presentation or in their essential
and substantive and distinctive parts as would
likely mislead or confuse persons in the ordinary
course of purchasing the genuine article.”
o 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. The use of an identical mark does
6
 not, by itself, lead to a legal conclusion that there is
trademark infringement: (Mighty Corporation vs. E.
J. Gallo Winery, G.R. No. 154342, 14 July 2004)
CASE: McDonald’s Corp. vs. L.C. Big Mak Burger,
Inc.
GR No. 143993, August 18, 2004
Big Mac vs. Big Mak
o The dominancy test focuses on the similarity of the
prevalent features of the competing trademarks that
might cause confusion. The dominancy test considers
the dominant features in the competing marks in
determining whether they are confusingly similar.
Under the dominancy test, courts give greater weight
to the similarity of the appearance of the product
arising from the adoption of the dominant features of
the registered mark, disregarding minor differences.
Courts will consider more 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. (McDonalds
Corporation v. L. C. Big Mak Burger, Inc., G.R. No.
143993, 18 August 2004)
o It has been consistently held that the question of
infringement of a trademark is to be determined by
the test of dominancy. Similarity in size, form and
color, while rel- evant, is not conclusive. If the
competing trademark contains the main or essential
or dominant features of another, and confusion and
deception is likely to result, infringement takes place.
Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an
effort to imitate. (G. Heilman Brewing Co.
vs.Independent Brewing Company, 191 F., 489, 495,
citing Eagle White Lead, Co. vs. Pluff (CC) 180 Fed.
579). The question at issue in cases of infringement
of trademarks is whether the use of the marks
involved would be likely to cause confusion or mis-
takes in the mind of the public or deceive purchasers.
(Auburn Rubber Corporation vs. Honover Rubber
Co., 107 F. 2d 588). (McDonalds Corporation v. L.
C. Big Mak Burger, Inc., G.R. No. 143993, 18
August 2004.)
CASE: Philip Morris, vs Fortune Tobacco, Inc.
(GR
158589, June 27, 2006)
“MARK VII” and “MARK TEN v. MARK both for
cigarettes
No infringement
o The Supreme Court applied the Holistic Test as it
took into account the striking dissimilarities of the
entire marking system, but also ratiocinated that
even if you apply the Dominancy Test, there can be
no likelihood of confusion.
o Cigarette smokers are already predisposed to a
certain brand
CASE:Berris Agricultural Co., Inc. v. Norvy
Abyadang (G.R. No. 183404, 13
Oct. 2010)
NS D-10- PLUS vs. D-10 80 WP
o Applying the Dominancy Test, it cannot be gainsaid
that Abyadang’s “NS D-10 PLUS” is similar to Berris’
“D-10 80 WP,” that confusion or mistake is more
likely to occur. ….. Both depictions of “D-10,” as
found in both marks, are similar in size, such that this
portion is what catches the eye of the purchaser.
Undeniably, the likelihood of confusion is present.
o This likelihood of confusion and mistake is made
more manifest when the Holistic Test is applied,
taking into consideration the packaging, for both use
the same type of material (foil type) and have
identical color schemes (red, green, and white); and
the marks are both predominantly red in color, with
the same phrase “BROAD SPECTRUM FUNGICIDE”
written underneath. Considering these striking
similarities, predominantly the “D-10,” the buyers of
both products, mainly farmers, may be misled into
thinking that “NS D-10 PLUS” could be an upgraded
formulation of the “D-10 80 WP.”
CASE: Societe Des Produits Nestle vs. Martin Dy,
GR No. 172276, August 8, 2010
NAN vs. NANNY
o Applying the dominancy test in the present case, the
Court finds that “NANNY” is confusingly similar to
“NAN.” “NAN” is the prevalent feature of Nestle’s line
of infant powdered milk products. It is written in bold
letters and used in all products. The line consists of
PRE-NAN, NAN-H.A., NAN-1, and NAN-2. Clearly,
“NANNY” contains the prevalent feature “NAN.” The
first three letters of “NANNY” are exactly the same as
the letters of “NAN.” When “NAN” and “NANNY” are
pronounced, the aural effect is confusingly
similar.
o In determining the issue of confusing similarity, the
Court takes into account the aural effect of the letters
contained in the marks.
CASE: Skechers U.S.A., Inc. v. Inter Pacific Industrial
Trading Corp. (G.R. No. 164321, 28 March 2011)
SKECHERS vs. STRONG
o Using the Dominancy Test, the Supreme Court found
that the use of the “S” symbol by Strong rubber shoes
infringes on the registered Skechers trademark. It is
the most dominant feature of the mark -- one that
catches the buyer’s eye first. The same font and style
7
 was used in this case. While there may be
dissimilarities between the appearances of the shoes,
such dissimilarities do not outweigh the stark and
blatant dissimilarities in their general features.
o On MR the Supreme Court ruled: “Based on the
foregoing, this Court is at a loss as to how the
RTC and the CA, in applying the holistic test,
ruled that there was no colorable imitation, when
it cannot be any more clear and apparent to this
Court that there is colorable imitation. The
dissimilarities between the shoes are too trifling and
frivolous that it is indubitable that respondent's
products will cause confusion and mistake in the eyes
of the public. Respondent's shoes may not be an
exact replica of petitioner's shoes, but the features
and overall design are so similar and alike that
confusion is highly likely.”
CASE: GREAT WHITE SHARK vs. CARALDE, JR

[G.R. No. 192294, November 21, 2012.]
o The Holistic or Totality Test considers the entirety of
the marks as applied to the products, including the
labels and packaging, and focuses not only on the
predominant words but also on the other features
appearing on both labels to determine whether one is
confusingly similar to the other as to mislead the
ordinary purchaser. The “ordinary purchaser” refers
to one accustomed to buy, and therefore to some
extent familiar with, the goods in question.
o A trademark device 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. Apart
from its commercial utility, the benchmark of
trademark registrability is distinctiveness. Thus, a
generic figure as that of a shark in this case, if
employed and designed in a distinctive manner, can
be a registrable trademark device, subject to the
provisions of the IP Code.
• Irrespective of both tests, the Court finds no
confusing similarity between the subject marks.
While both marks use the shape of a shark, the
Court noted distinct visual and aural differences
between them.(Great White Shark Enterprises,
Inc. vs. Danilo M. Caralde, Jr., G.R. No. 192294,
21 November 2012)
CASE: Victorio P. Diaz vs. People of the Philippines
and Levi Strauss [Phils.] Inc. (G.R. No. 180677, 18
February 2013)
o The Supreme Court acquitted the accused stating
that maong pants or jeans made and sold by LEVI’s,
which included “501,” were very popular in the
Philippines. The consuming public knew that the
original “501” jeans were under a foreign brand and
quite expensive. Such jeans could be purchased only
in malls or boutiques as ready-to-wear items, and
were not available in tailoring shops like those of
Diaz’s. Neither can the “501” be acquired on a
“made-to-order” basis.
o The High Court noted that Diaz used the trademark
“LS JEANS TAILORING” for the jeans he produced
and sold in his tailoring shops. His trademark was
visually and aurally different from the trademark
“LEVI STRAUSS & CO” appearing on the patch of
original jeans under the trademark LEVI’s 501. The
word “LS” could not be confused as a derivative from
“LEVI STRAUSS” by virtue of the “LS” being
connected to the word “TAILORING”, thereby openly
suggesting that the jeans bearing the trademark “LS
JEANS TAILORING” came or were bought from the
tailoring shops of Diaz, not from the malls or
boutiques selling original LEVI’S 501 jeans to the
consuming public.
o The Court also noted that in terms of classes of
customers and channels of trade, the jeans made by
LEVI’s and the accused cater to different classes of
customers and flow through the different channels of
trade. The customers of LEVI’s are mall goers
belonging to class A and B market group – while
those of Diaz are those who belong to class D and E
market who can only afford Php300 for a pair of
made-to-order pants.
o Moreover, based on the certificate issued by the
Intellectual Property Office, “LS JEANS TAILORING”
was a registered trademark of Diaz. He had
registered his trademark prior to the filing of the
present cases. The IPOPHL would certainly not have
allowed the registration had Diaz’s trademark been
confusingly similar with the registered trademark for
LEVI’s “501” jeans.
WHAT IF THE MARK IS NOT REGISTERED
IN THE INTELLECTUAL PROPERTY OFFICE?
OWNERSHIP OF TRADEMARKS
Intellectual property is in essence a creation of the
mind,hence, the following considerations are relevant:
(1) Ownership
(2) Prior use
(3) Bad faith
(4) Probability of using similar marks
(5) Motivation
CASE: E.Y. Industrial Sales, Inc. v. Shen Dar
Electricity and Machinery Co., Ltd. (G.R. No. 184850,
20 Oct. 2010)
o E.Y. Industrial Sales Inc. (EYIS) and Shen Dar
Electricity and Machinery Co. (Shen Dar) both claim
to have the right to register the trademark “VESPA”
8
 for air compressors. The Supreme Court rules that
EYIS is the prior user of the mark. The use by EYIS
in the concept of owner is shown by commercial
documents and sales invoices unambiguously
describing the goods as “VESPA” air compressors.
o “Ownership of a mark or trade name may be acquired
not necessarily by registration but by adoption and
use in trade or commerce. As between actual use of
a mark without registration, and registration of the
mark without actual use thereof, the former prevails
over the latter. For a rule widely accepted and firmly
entrenched, because it has come down through the
years, is that actual use in commerce or business is a
pre-requisite to the acquisition of the right of
ownership.”
xxxx
By itself, registration is not a mode of acquiring
ownership.
CASE: Superior Commercial Enterprises Inc.
Kunnan Enterprises Ltd. And Sports Concept &
Distributor, Inc. (G.R. No. 169974, 20 April 2010)
o Superior Commercial Enterprises, Inc. (SUPERIOR),
as the registered owner of the trademarks, trading
styles, company names and business names
“KENNEX”, “KENNEX & DEVICE”, “PRO KENNEX”
and “PRO-KENNEX” (disputed trademarks) filed a
complaint for trademark infringement and unfair
competition with preliminary injunction against
Kunnan Enterprises Ltd. (KUNNAN) and Sports
Concept and Distributor, Inc. (SPORTS CONCEPT).
KUNNA presented proof that it is the prior user and
true owner of the disputed trademarks, while
SUPERIOR as the former distributor of KUNNAN
fraudulently registered said trademarks. KUNNAN
also presented proof of pending cancellation
proceedings before the IPO against the registration of
the disputed marks under SUPERIOR’s name.
o After the IPO cancelled SUPERIOR’s registration
over the disputed marks, SUPERIOR’s case for
trademark infringement lost its legal basis and no
longer presented a valid cause of action since
trademark ownership is an essential element to
establish trademark infringement.
o SUPERIOR’s possession of the aforementioned
Certificates of Principal Registration does not
conclusively establish its ownership of the disputed
trademarks as dominion over trademarks is not
acquired by the fact of registration alone. At best,
registration merely raises a presumption of ownership
that can be rebutted by contrary evidence.
SUPERIOR was a mere distributor and could not
have been the owner, and was thus an invalid
registrant of the disputed trademarks.
CASE: Ecole De Cuisine Manille (Cordon Bleu of the
Philippines), Inc. v. Renaud Cointreau & CIE and Le
Condron Bleu Int’l., B.V. (G.R. No. 185830, 05 June
2013)
o Respondent Cointreau filed a trademark application
for the mark "LE CORDON BLEU & DEVICE.“ After it
was published for opposition purposes, Petitioner
Ecole De Cuisine Manille, Inc. (Ecole) filed an
opposition to the subject application, averring among
others, that it is the owner of the mark "LE CORDON
BLEU, ECOLE DE CUISINE MANILLE," which it has
been using since 1948 in cooking and other culinary
activities, including in its restaurant business.
Cointreau filed its answer claiming to be the true and
lawful owner of the subject mark. It averred that: (a) it
has filed applications for the subject mark’s
registration in various jurisdictions, including the
Philippines; (b) Le Cordon Bleu is a culinary school of
worldwide acclaim which was established in Paris,
France in 1895; (c) Le Cordon Bleu was the first
cooking school to have set the standard for the
teaching of classical French cuisine and pastry
making; and (d) it has trained students from more
than eighty (80) nationalities.
o Cointreau has been using the subject mark in France
since 1895, prior to Ecole’s averred first use of the
same in the Philippines in 1948, of which the latter
was fully aware thereof. In fact, Ecole’s present
directress, Ms. Lourdes L. Dayrit (and even its
foundress, Pat Limjuco Dayrit), had trained in
Cointreau’s Le Cordon Bleu culinary school in Paris,
France. Cointreau was likewise the first registrant of
the said mark under various classes, both abroad and
in the Philippines, having secured Home Registration
No. 1,390,912 dated November 25, 1986 from its
country of origin, as well as several trademark
registrations in the Philippines.
o On the other hand, Ecole has no certificate of
registration over the subject mark but only a pending
application covering services limited to Class 41 of
the Nice Classification, referring to the operation of a
culinary school. Its application was filed only on
February 24, 1992, or after Cointreau filed its
trademark application for goods and services falling
under different classes in 1990. Under the foregoing
circumstances, even if Ecole was the first to use the
mark in the Philippines, it cannot be said to have
validly appropriated the same.
o It is thus clear that at the time Ecole started using the
subject mark, the same was already being used by
Cointreau, albeit abroad, of which Ecole’s directress
was fully aware, being an alumna of the latter’s
culinary school in Paris, France. Hence, Ecole cannot
claim any tinge of ownership whatsoever over the
subject mark as Cointreau is the true and lawful
owner thereof.
NON REGISTRABLE MARKS
REGISTRABILITY (§123)
9
A mark cannot be registered if it:
5. 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;
A mark cannot be registered if it:
6. Is identical with, or confusingly similar to, or
constitutes a translation of a mark considered
well-known in accordance with the preceding
paragraph, which is registered in the Philippines
with respect to goods or services which are not
similar to those with respect to which registration
is applied for: Provided, That use of the mark in
relation to those goods or services would
indicate a connection between those goods or
services, and the owner of the registered mark:
Provided further, That the interests of the owner
of the registered mark are likely to be damaged
by such use;
CASE: Fredco Manufacturing Corporation vs
President and Fellows of Harvard College (Harvard
University),G.R. No. 185917, 01 June 2011
o 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. The mark “Harvard” is rated
as one of the most famous marks in the world. It has
been registered in at least 50 countries. It has been
used and promoted extensively in numerous
publications worldwide. It has established a
considerable goodwill worldwide since the founding of
Harvard University more than 350 years ago. It is
easily recognizable as the trade name and mark of
Harvard University of Cambridge, Massachusetts,
U.S.A., internationally known as one of the leading
educational institutions in the world. As such, even
before Harvard University applied for registration of
the mark “Harvard” in the Philippines, the mark was
already protected under Article 6bis and Article 8 of
the Paris Convention. Again, even without applying
the Paris Convention, Harvard University can invoke
Section 4(a) of R.A. No. 166 which prohibits the
registration of a mark “which may disparage or
falsely suggest a connection with persons, living
or dead, institutions, beliefs x x x.”
o Indeed, Section 123.1 (e) of R.A. No. 8293 now
categorically states that “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,” cannot be
registered by another in the Philippines. Section
123.1 (e) does not require that the well-known mark
be used in commerce in the Philippines but only that
it be well-known in the Philippines.
o Thus, while under the territoriality principle a mark
must be used in commerce in the Philippines to be
entitled to protection, internationally well-known
marks are the exceptions to this rule.
(Fredco Manufacturing Corporation vs President and
Fel- lows of Harvard College (Harvard University),
G.R. No. 185917, 01 June 2011)
o The scope of protection initially afforded by Article
6bis of the Paris Convention has been expanded in
the 1999 Joint Recommendation Concerning
Provisions on the Protection of Well-Known Marks,
wherein the World Intellectual Property Organization
(WIPO) General Assembly and the Paris Union
agreed to a nonbinding recommendation that a well-
known mark should be protected in a country even if
the mark is neither registered nor used in that
country. (Sehwani, Incorporated vs. In-N-Out
Burger, Inc., G. R. No. 171053, 15 October 2007)
o The use of the well-known mark on the entirely
unrelated goods or services would indicate a
connection between such unrelated goods and
services and those goods and services specified in
certificate of registration in the well known mark. This
requirement refers to the likelihood of confusion of
origin or business or some business connection or
relationship between the registrant and the user of
the mark. (246 Corporation, doing business under
the name and style of Rolex Music Lounge vs.
Hon. Reynaldo B. Daway, in his capacity as
Presiding Judge of RTC Branch 90, Quezon City,
GR No. 157216, November 20, 2003)
7. Is likely to mislead the public, particularly as to
the nature, quality, characteristics or
geographical origin of the goods or services;
8. Consists exclusively of signs that are generic for
the goods or services that they seek to identify;
9. Consists exclusively of signs or of indications
that have become customary or usual to
designate the goods or services in everyday
language or in bona fide and established trade
practice;
10. Consists exclusively of signs or of indications
that may serve in trade to designate the kind,
quality, quantity, intended purpose, value,
geographical origin, time or production of the
goods or rendering of the services, or other
characteristics of the goods or services;
10
 11. Consists of shapes that may be necessitated by
technical factors or by the nature of the goods
themselves or factors that affect their intrinsic
value;
12. Consists of color alone, unless defined by a
given form; or
13. Is contrary to public order or morality.
Note: The nature of the goods to which the mark is
applied will not constitute an obstacle to registration.
EXCEPTIONS – Descriptive marks, shapes, and
color alone, may be registered if it 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.
o The IPO 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.
See: Section 123.2, IP Code
DOCTRINE OF SECONDARY MEANING
o This doctrine is to the effect that a word or phrase
originally incapable of exclusive appropriation with
reference to an article on the market, because
geographically or otherwise descriptive, might
nevertheless have been used so long and so
exclusively by one producer with reference to his
article that, in that trade and to that branch of the
purchasing public, the word or phrase has come to
mean that the article was his product. (Ang v.
Teodoro, G. R. No. 48226, 14 December 1942)
PROTECTION OF TRADENAMES/BUSINESS
NAMES(§165)
o A name or designation may not be used as a trade
name if by its nature or the use to which such name
or designation may be put, it is contrary to public
order or morals and if, in particular, it is liable to
deceive trade circles or the public as to the nature of
the enterprise identified by that name.
o Notwithstanding any laws or regulations providing for
any obligation to register trade names, such names
shall be protected, even prior to or without
registration, against any unlawful act committed by
third parties.
o 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.
CASE: Coffee Partners, Inc. v. San Francisco Coffee
& Roastery, Inc., (G.R. No. 169504, 03 March 2010)
o The issue in this case is whether the use of the
trademark “SAN FRANCISCO COFFEE” constitutes
infringement of the tradename ‘SAN FRANCISCO
COFFEE & ROASTERY, INC.” even if the tradename
is not registered with the IPO.
o The Supreme Court ruled that 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. A corporation has the exclusive
right to use its name. The right proceeds from the
theory that it is a fraud on the corporation which has
acquired a right to that name and perhaps carried on
its business thereunder, that another should attempt
to use the same name, or the same name with a
slight variation in such a way as to induce persons to
deal with it in the belief that they are dealing with the
corporation which has given a reputation to the
name.
o The Supreme Court likewise upheld the ruling of the
IPO Bureau of Legal Affairs (BLA) that the right to the
exclusive use of a trade name with freedom from
infringement by similarity is determined from priority
of adoption. Since SAN FRANCISCO COFFEE &
ROASTERY, INC. registered its business name with
the Department of Trade and Industry in 1995 and
COFFEE PARTNERS, INC. registered its trademark
with the IPO in 2001 in the Philippines and in 1997 in
other countries, then the former must be protected
from infringement of its trade name.
o The IPO-BLA also held that SAN FRANCISCO
COFFEE & ROASTERY, INC. did not abandon the
use of its trade name as substantial evidence
indicated that it continuously used its trade name in
connection with the purpose for which it was
organized.
LEGAL REMEDIES
(1) Trademark Infringement
(2) Unfair Competition
(3) Damages
TRADEMARK INFRINGEMENT(§155)
o The commission of the following acts by any person,
without the consent of the owner of the registered
mark:
a. 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
11
use is likely to cause confusion, or to cause mistake, or
to deceive; or
b. 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 advertising of
goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or
to deceive, shall be liable in a civil action for infringement
by the registrant.
COUNTERFEIT GOODS VS. COLORABLE IMITATION
Counterfeit Goods
o Shall mean any goods, including packaging, bearing
without authorization a trademark which is identical to
the trademark validly registered in respect of such
goods, or which cannot be distinguished in its
essential aspects from such a trademark, and which
thereby infringes the rights of the owner of the
trademark in question under the law of the country of
importation [TRIPs Agreement]
Colorable Imitation.
o This term has been defined as "such a close or
ingenious imitation as to be calculated to deceive
ordinary purchasers, or such resemblance of the
infringing mark to the original as to deceive an
ordinary purchaser giving such attention as a
purchaser usually gives, and to cause him to
purchase the one supposing it to be the other.“
[Emerald v. CA, G.R. No. 100098. December 29,
1995]
o Infringement takes place when the competing
trademark contains the essential features of another.
Imitation or an effort to imitate is unnecessary. The
question is whether the use of the marks is likely to
cause confusion or deceive purchasers. (Societe
Des Produits Nestle, S. A. vs. Martin T.Dy, G.R.
No. 172276, 09 August 2010)
o A crucial issue in any trademark infringement case is
the likelihood of confusion, mistake or deceit as to the
identity, source or origin of the goods or identity of the
business as a consequence of using a certain mark.
Likelihood of confusion is admit- tedly a relative term,
to be determined rigidly according to the particular
(and some- times peculiar) circumstances of each
case. Thus, in trademark cases, more than in other
kinds of litigation, precedents must be studied in the
light of each particular case. (Mighty Corporation
vs. E. J. Gallo Winery, G.R. No. 154342, 14 July
2004)
o Failure to present proof of actual confusion does not
negate their claim of trademark infringement.
Trademark infringement requires the less stringent
standard of “likelihood of confusion” only. While proof
of actual confusion is the best evidence of
infringement, its absence is inconsequential.
(McDonalds Corporation v. L. C. Big Mak Burger,
Inc., G.R. No. 143993, 18 August 2004.)
o The mere unauthorized use of a container bearing a
registered trademark in connection with the sale,
distribution or advertising of goods or services which
is likely to cause confusion, mistake or deception
among the buyers or consumers can be considered
as trademark infringement. (Republic Gas
Corporation v. Petron Corporation, G. R. No.
194062, 17 June 2013)
o Unauthorized use of a container bearing a registered
trademark in connection with the sale, distribution or
advertising of goods or services which is likely to
cause confusion, mistake or deception among the
buyers/consumers can be considered as trade- mark
infringement. (Yao v. People of the Philippines, G.
R. No. 168306, 19 June 2007)
o A crucial issue in any trademark infringement case is
the likelihood of confusion, mistake or deceit as to the
identity, source or origin of the goods or identity of the
business as a consequence of using a certain mark.
Likelihood of confusion is admittedly a relative term,
to be determined rigidly according to the particular
(and some- times peculiar) circumstances of each
case. Thus, in trademark cases, more than in other
kinds of litigation, precedents must be studied in the
light of each particular case.
o There are two types of confusion in trademark
infringement. The first is “confusion of goods” when
an otherwise prudent purchaser is induced to
purchase one product in the belief that he is
purchasing another, in which case defendant’s goods
are then bought as the plaintiff’s and its poor quality
reflects badly on the plaintiff’s reputation. The other
is “confusion of business” wherein the goods of the
parties are different but the defendant’s product can
reasonably (though mistakenly) be assumed to
originate from the plaintiff, thus deceiving the public
into believing that there is some connection between
the plaintiff and defendant which in fact does not
exist.(Mighty Corporation vs. E. J. Gallo Winery,
G.R. No. 154342, 14 July 2004)
CASE: Juno Batistis v. People (G.R. No. 181571, 19
December 2009)
o The case involves refilling of empty liquor bottles of
Fundador. The RTC convicted accused for
trademark infringement and unfair competition but on
appeal he was acquitted for unfair competition but
conviction for trademark infringement was affirmed.
o According to the Supreme Court: “Batistis exerted the
effort to make the counterfeit products look genuine
12
 to deceive the unwary public into regarding the
products as genuine. The buying public would be
easy to fall for the counterfeit products due to their
having been given the appearance of the genuine
products, particularly with the difficulty of detecting
whether the products were fake or real if the buyers
had no experience and the tools for detection, like
black light.”
o “He thereby infringed the registered Fundador
trademark by the colorable imitation of it through
applying the dominant features of the trademark on
the fake products, particularly the two bottles filled
with Fundador brandy. His acts constituted
infringement of trademark…”
UNFAIR COMPETITION(Sec. 168)
o 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 will be protected in the same
manner as other property rights.
o 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.
The following shall be deemed guilty of unfair
competition:
o 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 be likely to 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;
o 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
o 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 another.
RULE 18, A.M. 10-3-10 SC
SEC. 6.Intent to defraud or deceive. – In an action for
unfair competition, the intent to defraud or deceive the
public shall be presumed:
a) when the defendant passes off a product as his by
using imitative devices, signs or marks on the general
appearance of the goods, which misleads prospective
purchasers into buying his merchandise under the
impression that they are buying that of his
competitors;
b) when the defendant makes any false statement in
the course of trade to discredit the goods and
business of another; or
c) where the similarity in the appearance of the goods
as packed and offered for sale is so striking.
o Unfair competition has been defined as the passing
off (palming off) or attempting to pass off upon the
public of the goods or business of one person as the
goods or business of another with the end and
probable effect of deceiving the public. The essential
elements of unfair competition are (1) confusing
similarity in the general appearance of the goods; and
(2) intent to deceive the public and defraud a
competitor. (Superior Enterprises, Inc. vs. Kunnan
Enterprises Ltd., G.R. No. 169974, 20 April 2010)
o The essential elements of an action for unfair
competition are (1) confusing similarity in the general
appearance of the goods, and (2) intent to deceive
the public and defraud a competitor. The confusing
similarity may or may not result from similarity in the
marks, but may result from other external factors in
the packaging or presentation of the goods. The
intent to deceive and defraud may be inferred from
the similarity of the appearance of the goods as
offered for sale to the public. (McDonalds
Corporation v. L. C. Big Mak Burger, Inc., G.R. No.
143993, 18 August 2004)
TM INFRINGEMENT vs. UNFAIR COMPETITION
(1) In infringement of trademark the prior registration of the
trademark is a prerequisite for the action; in unfair
competition registration of the trademark is not
necessary.
(2) In infringement of trademark, fraudulent intent is not
necessary; in unfair competition fraudulent intent is
essential.
(3) Infringement of trademark is the unauthorized use of a
trademark, while unfair competition is the passing off of
one’s goods for the goods of another.
COUNTERFEIT GOODS VS. COLORABLE IMITATION
Under Section 147.1 of the IP Code:
The owner of a registered mark shall have the
exclusive right to prevent all third parties not
having the owner's consent from using in the
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 course of trade identical or similar signs or
containers for goods or services which are
identical or similar to those in respect of which
the trademark is registered where such use
would result in a likelihood of confusion. In case
of the use of an identical sign for identical
goods or services, a likelihood of confusion shall
be presumed. [Also, §1 Article 16, TRIPs
Agreement]
RULES OF PROCEDURE
FOR INTELLECTUAL PROPERTY RIGHTS CASES
A.M. No. 10-3-10 SC, October 18, 2011
Rule 18
EVIDENCE IN TRADEMARK INFRINGEMENT AND
UNFAIR COMPETITION CASES
SEC. 3. Presumption of likelihood of confusion. –
Likelihood of confusion shall be presumed in case an
identical sign or mark is used for identical goods or
services.
SEC. 4. Likelihood of confusion in other cases. – In
determining whether one trademark is confusingly
similar to or is a colorable imitation of another, the court
must consider the general impression of the ordinary
purchaser, buying under the normally prevalent
conditions in trade and giving the attention such
purchasers usually give in buying that class of goods.
Visual, aural, connotative comparisons and overall
impressions engendered by the marks in controversy as
they are encountered in the realities of the marketplace
must be taken into account. Where there are both
similarities and differences in the marks, these must be
weighed against one another to see which
predominates.
In determining likelihood of confusion between
marks used on non- identical goods or services,
several factors may be taken into account, such as, but
not limited to:
a. the strength of plaintiff’s mark;
b. the degree of similarity between the plaintiff’s
and thedefendant’s marks;
c. the proximity of the products or services;
d. the likelihood that the plaintiff will bridge the
gap;
e. evidence of actual confusion;
f. the defendant's good faith in adopting the mark;
g. the quality of defendant's product or service;
and/or
h. the sophistication of the buyers.―
o Colorable imitation denotes such a close or ingenious
imitation as to be calculated to deceive ordinary
persons, or such a resemblance to the original as to
deceive an ordinary purchaser giving such attention
as a purchaser usually gives, as to cause him to
purchase the one supposing it to be the other.
TRADEMARK DILUTION
o Trademark dilution is the lessening of the capacity of
a famous mark to identify and distinguish goods or
services, regardless of the presence or absence of:
(1) competition between the owner of the famous
mark and other parties; or (2) likelihood of confusion,
mistake or deception. Subject to the principles of
equity, the owner of a famous mark is entitled to an
injunction against another person’s commercial use in
commerce of a mark or trade name, if such use
begins after the mark has become famous and
causes dilution of the distinctive quality of the mark.
(Levi Strauss & Co., v. Clinton Apparelle, Inc.,
G.R. No. 138900, 20 September 2005)
CASE: Levi Strauss & Co., v. Clinton Apparelle, Inc.,
G.R. No. 138900, 20 September 2005
DOCKERS VS. PADDOCKS
o Based on the foregoing, to be eligible for protection
from dilution, there has to be a finding that: (1) the
trademark sought to be protected is famous and
distinctive; (2) the use by respondent of “Paddocks
and Design” began after the petitioners’ mark
became famous; and (3) such subsequent use
defames petitioners’ mark. In the case at bar,
petitioners have yet to establish whether “Dockers
and Design” has acquired a strong degree of
distinctiveness and whether the other two elements
are present for their cause to fall within the ambit of
the invoked protection. The Trends MBL Survey
Report which petitioners presented in a bid to
establish that there was confusing similarity between
two marks is not sufficient proof of any dilution that
the trial court must enjoin.
o Given the single registration of the trademark
“Dockers and Design” and considering that
respondent only uses the assailed device but a
different word mark, the right to prevent the latter
from using the challenged “Paddocks” device is far
from clear. Stated otherwise, it is not evident whether
the single registration of the trademark “Dockers and
Design” confers on the owner the right to prevent the
use of a fraction thereof in the course of trade. It is
also unclear whether the use without the owner’s
consent of a portion of a trademark registered in its
entirety constitutes material or substantial invasion of
the owner’s right.
o It is likewise not settled whether the wing-shaped
logo, as opposed to the word mark, is the dominant
or central feature of petitioners’ trademark—the
feature that prevails or is retained in the minds of the
14
 public—an imitation of which creates the likelihood of
deceiving the public and constitutes trademark
infringement. In sum, there are vital matters which
have yet and may only be established through a full-
blown trial.
CASE: Tanduay Distillers, Inc. vs. Ginebra San
Miguel, Inc.G.R. NO. 164324, August 14, 2009
o It is not evident whether San Miguel has the right to
prevent other business entities from using the word
“Ginebra.” It is not settled (1) whether “Ginebra” is
indeed the dominant feature of the trademarks, (2)
whether it is a generic word that as a matter of law
cannot be appropriated, or (3) whether it is merely a
descriptive word that may be appropriated based on
the fact that it has acquired a secondary meaning.
o The issue that must be resolved by the trial court is
whether a word like “Ginebra” can acquire a
secondary meaning for gin products so as to prohibit
the use of the word “Ginebra” by other gin
manufacturers or sellers. This boils down to whether
the word “Ginebra” is a generic mark that is incapable
of appropriation by gin manufacturers.
o In Asia Brewery, Inc. v. Court of Appeals,[53] the
Court ruled that “pale pilsen” are generic words,
“pale” being the actual name of the color and “pilsen”
being the type of beer, a light bohemian beer with a
strong hops flavor that originated in Pilsen City in
Czechoslovakia and became famous in the Middle
Ages, and hence incapable of appropriation by any
beer manufacturer.Moreover, Section 123.1(h) of the
IP Code states that a mark cannot be registered if it
“consists exclusively of signs that are generic for the
goods or services that they seek to identify.”
o In this case, a cloud of doubt exists over San Miguel’s
exclusive right relating to the word “Ginebra.” San
Miguel’s claim to the exclusive use of the word
“Ginebra” is clearly still in dispute because of
Tanduay’s claim that it has, as others have, also
registered the word “Ginebra” for its gin products.
This issue can be resolved only after a full-blown trial.
SEC. 151. Cancellation. - 151.1. A petition to cancel a
registration of a mark under this Act may be filed
with the Bureau of Legal Affairs by any person
who believes that he is or will be damaged by the
registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the
registration of the mark under this Act.
(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 this
Act, 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.
(c) At any time, if the registered owner of the mark
without legitimate reason fails to use the mark
within the Philippines, or to cause it to be used in
the Philippines by virtue of a license during an
uninterrupted period of three (3) years or longer.
SEC. 151. Cancellation. –
xxx
151.2. Notwithstanding the foregoing provisions, the
court or the administrative agency vested with
jurisdiction to hear and adjudicate any action to
enforce the rights to a registered mark shall
likewise exercise jurisdiction to determine whether
the registration of said mark may be cancelled in
accordance with this Act. The filing of a suit to
enforce the registered mark with the proper court
or agency shall exclude any other court or agency
from assuming jurisdiction over a subsequently
filed petition to cancel the same mark. On the
other hand, the earlier filing of petition to cancel
the mark with the Bureau of Legal Affairs shall not
constitute a prejudicial question that must be
resolved before an action to enforce the rights to
same registered mark may be decided. (Sec. 17,
R.A. No. 166a)
SEC. 156. Actions, and Damages and Injunction for
Infringement.
156.1. The owner of a registered mark may recover
damages from any person who infringes his rights, and
the measure of the damages suffered shall be either the
reasonable profit which the complaining party would
have made, had the defendant not infringed his rights, or
the profit which the defendant actually made out of the
infringement, or in the event such measure of damages
cannot be readily ascertained with reasonable certainty,
then the court may award as damages a reasonable
percentage based upon the amount of gross sales of the
defendant or the value of the services in connection with
which the mark or trade name was used in the
infringement of the rights of the complaining party.
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156.2. On application of the complainant, the court may
impound during the pendency of the action, sales
invoices and other documents evidencing sales.
156.3. In cases where actual intent to mislead the public
or to defraud the complainant is shown, in the discretion
of the court, the damages may be doubled.
156.4. The complainant, upon proper showing, may also
be granted injunction.
CIVIL ACTION
REQUIREMENT OF NOTICE FOR DAMAGES (§158)
o 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 '"Registered Mark" or the letter R within a
circle or if the defendant had otherwise actual notice
of the registration.
SEC. 157. Power of Court to Order Infringing Material
Destroyed. -157.1. In any action arising under this
Act, in which a violation of any right of the owner of
the registered mark is established, the court may
order that goods found to be infringing be, without
compensation of any sort, disposed of outside the
channels of commerce in such a manner as to
avoid any harm caused to the right holder, or
destroyed; and all labels, signs, prints, packages,
wrappers, receptacles and advertisements in the
possession of the defendant, bearing the registered
mark or trade name or any reproduction,
counterfeit, copy or colorable imitation thereof, all
plates, molds, matrices and other means of making
the same, shall be delivered up and destroyed.
157.2. In regard to counterfeit goods, the simple removal
of the trademark affixed shall not be sufficient
other than in exceptional cases which shall be
determined by the Regulations, to permit the
release of the goods into the channels of
commerce.
A.M. No. 02-1-06-SC January 30, 2002
RULE ON SEARCH AND SEIZURE IN CIVIL ACTIONS
FOR INFRINGEMENT OF INTELLECTUAL
PROPERTY RIGHTS
Section 22.Judgment. - If it appears after trial that the
seized documents and articles are found to infringe the
intellectual property right of the applicant or that they
constitute the means for the production of infringing
goods, the court shall order their destruction or donation
to charitable, educational or religious institutions with the
prohibition against bringing the same into the channels
of commerce. In the latter case, infringing trademarks or
trade names found on labels, tags and other portions of
the infringing materials shall be removed or defaced
before the donation. In no case shall the infringing
materials be returned to the defendant.
If the court finds no infringement, the seized materials
shall be immediately returned to the defendant.
LEGAL REMEDIES - FALSE DESIGNATION OF
ORIGIN, FALSE DESCRIPTION OR
REPRESENTATION (SEC. 169)
o Any person who, on or in connection with any
goods or services, or any container for goods, uses
in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false
designation of origin, false or misleading
description of fact, or false or misleading
representation of fact, which:
 Is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person
with another person, or as to the origin,
sponsorship, or approval of his or her goods,
services, or commercial activities by another
person; or
o Any person who, on or in connection with any
goods or services, or any container for goods, uses
in commerce any word, term, name, symbol, or
device, or any combination thereof, or any false
designation of origin, false or misleading
description of fact, or false or misleading
representation of fact, which:
• In commercial advertising or promotion,
misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or
another person's goods, services, or
commercial activities, shall be liable to a civil
action for damages and injunction by any
person who believes that he or she is or is
likely to be damaged by such act.
o Any goods marked or labelled in contravention of
the provisions of this Section shall not be imported
into the Philippines or admitted entry at any
customhouse of the Philippines.
o The owner, importer, or consignee of goods
refused entry at any customhouse under this
section may have any recourse under the customs
revenue laws or may have the remedy given by the
IP Code in cases involving goods refused entry or
seized.
CRIMINAL PENALTY
Independent of the civil and administrative sanctions
imposed by law
o A criminal penalty of imprisonment from two (2) years
to five (5) years and a fine ranging from Fifty
thousand pesos (P50,000) to Two hundred thousand
pesos(P200,000), shall be imposed on any person
who is found guilty of committing infringement (§159),
unfair competition (§168) and false designation of
16
 origin, false or misleading description of fact, or false
or misleading representation of fact (§169.1).
LIMITATIONS ON ACTIONS
SEC. 159. Limitations to Actions for Infringement.
Notwithstanding any other provision of this Act, the
remedies given to the owner of a right infringed under
this Act shall be limited as follows:
tampered, unlawfully modified, or infringed upon as
defined under Section 155 of this Code. (As
amended by Republic Act No.9502 or the
Universally Accessible Cheaper and Quality
Medicines Act of 2008)
AUTHORITY TO DETERMINE RIGHT TO
REGISTRATION(SEC. 161)

159.1. Notwithstanding the provisions of Section 155 o In any action involving a registered mark, the court
hereof, a registered mark shall have no effect may determine the right to registration, order the
against any person who, in good faith, before the cancellation of a registration, in whole or in part, and
filing date or the priority date, was using the mark for otherwise rectify the register with respect to the
the purposes of his business or enterprise: Provided, registration of any party to the action in the exercise
That his right may only be transferred or assigned of this.
together with his enterprise or business or with that
part of his enterprise or business in which the mark COLLECTIVE MARKS (§167)
is used. o "Collective mark" means any visible sign designated
as such in the application for registration and capable
159.2. Where an infringer who is engaged solely in of distinguishing the origin or any other common
the business of printing the mark or other infringing characteristic, including the quality of goods or
materials for others is an innocent infringer, the services of different enterprises which use the sign
owner of the right infringed shall be entitled as under the control of the registered owner of the
against such infringer only to an injunction against collective mark;
future printing. o An application for registration of a collective mark
shall designate the mark as a collective mark and
159.3. Where the infringement complained of is shall be accompanied by a copy of the agreement, if
contained in or is part of paid advertisement in a any, governing the use of the collective mark.
newspaper, magazine, or other similar periodical or o The registration of a collective mark, or an application
in an electronic communication, the remedies of the therefor shall not be the subject of a license
owner of the right infringed as against the publisher contract
or distributor of such newspaper, magazine, or other
similar periodical or electronic communication shall
be limited to an injunction against the presentation of
such advertising matter in future issues of
suchnewspapers, magazines, or other similar
periodicals or in future transmissions of such
electronic communications. The limitations of this
subparagraph shall apply only to innocent infringers:
Provided, That such injunctive relief shall not be
available to the owner of the right infringed with
respect to an issue of a newspaper, magazine, or
other similar periodical or an electronic
communication containing infringing matter where
restraining the dissemination of such infringing
matter in any particular issue of such periodical or in
an electronic communication would delay the
delivery of such issue or transmission of such
electronic communication is customarily conducted
in accordance with the sound business practice, and
not due to any method or device adopted to evade
this section or to prevent or delay the issuance of an
injunction or restraining order with respect to such
infringing matter; and

159.4. There shall be no infringement of trademarks

or tradenames of imported or sold drugs and
medicines allowed under Section 72.1 of this Act, as
well as imported or sold off-patent drugs and
medicines: Provided, That said drugs and medicines
bear the registered marks that have not been
17