TRADEMARKS

TRADEMARKS

1. TERMS:

   • "Mark" - visible sign distinguishing:
     • Trademark = goods
     • Service Mark = services
   • Collective Mark - visible sign; distinguishing origin or any common characteristics
   • Trade name - name identifying an enterprise

2. ACQUISITION OF RIGHT

   • Registered with IPO
     • CERTIFICATE OF REGISTRATION
       • prima facie evidence of
         • validity
         • ownership
         • exclusive right to use
       • CANCELLATION OF REGISTRATION
         • Filed with Bureau of Legal Affairs: believes will be damaged by registration
         • Period
           • GR: 5 YRS from date of registration
           • EXCEPT
             • without justifiable reason fails to use the mark OR use in PH by virtue of license during uninterrupted period of 3 yrs or longer
             • mark becomes generic, abandoned, or obtained fraudulently
             • enforcement of rights to a registered mark
   • Trade name need not be registered

3. NON-REGISTRABLE MARKS

   • immoral, deceptive, or scandalous matter
     • may disparage or falsely suggest a connection
   • flag, coat of arms or insignia of PH or foreign nation
   • name, portrait, or signature of living individual or deceased president of PH
     • UNLESS written consent by himself or widow
   • identical with registered mark belonging to others
     • same goods/services
     • closely related goods/services
     • resembles as to be likely to deceived/cause confusion
       • Colorable Imitation - likelihood of confusion; to deceive ordinary person
   • Identical or confusingly similar, well known international and in PH (whether reg or not)
   • identical or confusingly similar, reg in PH
   • likely to mislead the public
   • exclusively of signs that generic
     • not legally protectable
   • exclusively of signs that customary or usual
   • exclusively of signs that designate the kind, quality, qty, intended purpose, value, geo origin, time, or production
   • shapes necessitated by technical factors
   • color
     • UNLESS defined by given form
   • contrary to public order or morality

4. DOCTRINE OF SECONDARY MEETING

   • used so long and exclusively by one producer
   • the word, phrase has come to mean that the article was his produce (e.g Genebra)

5. PRIORITY CLAIM

   • local application when earlier app is filed abroad
     • filed within 6 MOS. from filing of priority
     • Certified copy of priority app. w/in 3 MOS from filing date
     • Failure to file = waiver of priority claim

6. LEGAL LIFE

   • 10 years from registration
     • renewable 6 mos before or after the expiration

7. DECLARATION OF ACTUAL USE

   • w/in 3 YEARS from filing date
     • extendible for 6 mos.
       • Non-compliance: deemed abandon
   • Another DAU w/in 1 YR from 5th anniv. of registration
     • Non-compliance: removed from Register by Office
   • w/in 1 YR from date of renewal of mark
   • Non-compliance: deemed abandoned or cancelled reg.

8. THEORY OF DILUTION

   • Rights of owner of well-known mark - reg in PH, extend to goods which are NOT similar
     • use of mark indicate a connection between goods & owner
     • interest of owner likely to be damaged
   • not included: purposes of mere identification/info

9. TRADEMARK INFRINGEMENT

   • elements to be proven:
     • validity of mark
     • ownership of mark
     • use of mark or colorable imitation alleged by infringer results in likelihood of confusion
   • Definition
     • Unauthorized use in connection with sale including preparatory steps which cause confusion
     • Reproduce, counterfeit, copy, or colorable imitate, regardless of whether there is actual sale
   • Tests:
     • Holistic/Totality Test - entirety of marks
     • Dominancy Test - prevalent or dominant features only
   • Remedies of Owner:
     • Damages
       • based on reasonable profit which would have made or,
       • profit made by defendant by using infringement
       • if cannot be ascertained: reasonable % based on gross sales of defendant which mark was use
     • injunction
     • destruction of infringing materials
   • Prior user in good faith -> Goodwill (reg. mark have no effect)

10. UNFAIR COMPETITION

    • Definition
      • likely influence to believe that goods are those of dealer
      • false belief of offering services of another
      • to discredit goods/business
    • Penalty
      • Imprisonment: 2-5yrs
      • Fine: 50k - 200k
    • Requisites:
      • confusingly similarity in general appearance
      • intent to deceive is required
      • Sale is required
      • Passing-off element