Trademarks and Infringement

What is a trademark?

A trademark is any visible sign capable of distinguishing the goods.[1]

It is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others.[2] It is "intellectual property deserving protection by law," and "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."[3]

How is ownership of a trademark acquired?

The ownership of a trademark is acquired by its registration and its actual use by the manufacturer or distributor of the goods made available to the purchasing public.[4]

Under the law[5], the rights in a mark shall be acquired through registration with the Intellectual Property Office (IPO). R.A. No. 8293, however, requires the applicant for registration or the registrant to file a declaration of actual use (DAU) of the mark, with evidence to that effect, within three (3) years from the filing of the application for registration; otherwise, the application shall be refused or the mark shall be removed from the register.[6]

What right does a trademark owner have?

Under Sec. 147 of R.A. No. 8293, otherwise known as the Intellectual Property Code of the Philippines, 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 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.

What constitutes trademark infringement?

Sec. 155 of R.A. No. 8293 provides that any person shall be liable in a civil action for infringement when he shall, without the consent of the owner of the registered mark:

(1) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale of any goods or services including other preparatory steps with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(2) reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce with which such use is likely to cause confusion, or to cause mistake, or to deceive.

The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause confusion.[7]

How is likelihood of confusion determined?

Under Sec. 3 of the Rules of Procedure for Intellectual Property Rights Cases[8], likelihood of confusion shall be presumed in case an identical sign or mark is used for identical goods or services.

Further, under Sec. 4 of the same Rule, 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 must be taken into account.

What are the tests in determining similarity and likelihood of confusion?

Jurisprudence has developed two tests: the dominancy test, and the holistic or totality test. In Wilton Dy and/or Philites Electronic & Lighting Products v. Koninklijke Philips Electronics, N.V.[9], the Supreme Court discussed the said tests, to wit:

“On one hand, 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. Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments.

On the other hand, 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.”

In cases involving trademark infringement, no set of rules can be deduced. Each case must be decided on its own merits. Jurisprudential precedents must be studied in the light of the facts of each particular case.[10]

[1] Section 121.1, Republic Act No. 8293 (R.A. No. 8293) as amended, Intellectual Property Code of the Philippines. [2] Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16, 2010. [3] Wilton Dy and/or Philites Electronic & Lighting Products v. Koninklijke Philips Electronics, N.V., G.R. No. 186088, March 22, 2017. [4] UFC Philippines, Inc. (now merged with Nutri-Asia, Inc., with Nutri-Asia, Inc. as the surviving entity) v. Barrio Fiesta Manufacturing Corporation, G.R. No. 198889, January 20, 2016. [5] Sec. 122, R.A. No. 8293. [6] Supra, note 4. [7] Id. [8] A.M. No. 10-3-10-SC, 18 October 2011. [9] Supra, note 3. [10] Supra, note 4.