Required Use As Condition For Registration

1. Required Use As Condition For Registration SECTION 124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

2. Declaration must specify the goods and outlets where they are sold Adoption alone of a trademark would not vest exclusive right upon the proprietor Trademark is a creation of use

3. Required Use As Condition For Maintenance Section 145. * * * the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by the regulations, within one (1) year from the fifth anniversary of the date of registration of the mark. Otherwise, the mark shall be removed from the Register by the Office.

4. Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated and North Edsa Marketing, Incorporated, G.R. No. 148222, August 15, 2003 • Issue: TM infringement, Class of Goods • Facts: • P&D manufactures advertising display units or light boxes, which utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. • It secured a TM registration for "Poster Ads" which petitioner's president said was a contraction of "poster advertising."

5. 3. But the goods covered by the registration were were "stationeries such as letterheads, envelopes, calling cards and newsletters," which P&D did not actually manufacture. • The SC held: • 1. Under ruling in Faberge Inc. vs. Intermediate Appellate Court, involving Section 20 of the old Trademark Law, "the certificate of registration issued by the Director of Patents can confer (upon petitioner) the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and

6. limitations specified in the certificate . . . . One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description." Faberge, Inc. was correct and was in fact recently reiterated in Canon Kabushiki Kaisha vs. Court of Appeals. 2. Assuming arguendo that "Poster Ads" could validly qualify as a trademark, the failure of P & D to secure a trademark registration for light boxes meant that there could not have been any trademark infringement since registration was an essential element thereof. 3. Note Sec. 147, “identical or similar”

7. Canon Kabushiki Kaisha vs. Court of Appeals and NSR Rubber Corporation, G.R. No. 120900. July 20, 2000 Issue: Related Goods Doctrine Facts: 1. NSR Rubber Corporation (private respondent) filed an application with the BPTTT for registration of the mark CANON for sandals. 2. Canon Kabushiki Kaisha opposed the application. 3. Canon’s certificates of registration for the mark. CANON in the Philippines and other countries covering goods in class 2 (paints, chemical products, toner, and dye stuff).

8. 4. BPTT and CA dismissed the opposition. 5. Before the SC, Canon claims that its use of CANON on paints, chemical products, toner, and dye stuff, which are used as shoe polisher and polishing agents justified the rejection of NSR’s application for CANON for sandals.

9. The SC held: • Ordinarily, a trademark is a a property right that is protected by law. • But when a trademark is used by another on product in which the opposer does not deal, the use of the same trademark on the latter's product cannot be validly objected to. • Related Goods Doctrine: There is a world of difference between the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private respondent. • Natural Expansion of Business Doctrine:

10. It would be taxing one's credibility to aver at this point that the production of sandals could be considered as a possible "natural or normal expansion" of its business operation". 5. In Faberge, Incorporated vs. Intermediate Appellate Court, the Director of patents allowed the junior user to use the trademark of the senior user on the ground that the briefs manufactured by the junior user, the product for which the trademark BRUTE was sought to be registered, was unrelated and non-competing with the products of the senior user consisting of after shave lotion, shaving cream, deodorant, talcum powder, and toilet soap.

11. Paris Convention Claim: "A tradename shall be protected in all the countries of the Union without the obligation of filing or registration, whether or not it forms part of a trademark.“ • Kabushi Kaisha Isetan vs. Intermediate Appellate Court : "Regarding the applicability of Article 8 of the Paris Convention, this Office believes that there is no automatic protection afforded an entity whose tradename is alleged to have been infringed through the use of that name as a trademark by a local entity.

12. Excused Non-Uses SECTION 152. Non-use of a Mark When Excused. - 152.1. Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark.

13. 152.2. The use of the mark in a form different from the form in which it is registered, which does not alter its distinctive character, shall not be ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark.

14. 152.3. The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class.

15. Uses by Related Companies 152.4. The use of a mark by a company related with the registrant or applicant shall inure to the latter's benefit, and such use shall not affect the validity of such mark or of its registration: Provided, That such mark is not used in such manner as to deceive the public. If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services, such use shall inure to the benefit of the registrant or applicant. (n)

16. Administrative Actions for TM Enforcement • Opposition • Cancellation • Administrative actions before the Bureau of Legal Affairs • Bureau of Customs Border Control • Civil Actions for TM Enforcement • Trademark infringement • Unfair competition • False designation of Origin • (iv) Criminal Actions

17. Rights of Registered Owner SECTION 147. Rights Conferred. - 147.1. 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. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.

18. 147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that 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. (n)

19. Non-actionable Use SECTION 148. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. - Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. (n)

20. Section 151. Cancellation - * * * Section 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.

21. 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.

22. Section 134 Opposition • any person who may be damaged by registration; may be a registrant or user of an identical or similar mark • opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts • specify the grounds on which it is based and include a statement of the facts relied upon

23. (4) certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed (5) within thirty days from publication in the OG, extendible up to 120 days

24. Section 151, Cancellation • any person who believes that he is or will be damaged by the registration • Period for filing: • (a)Within five (5) years from the date of the registration of the mark under this Act

25. (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

26. 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.

27. TRADEMARK INFRINGEMENT SECTION 155. Remedies; Infringement. - Any person who shall, without the consent of the owner of the registered mark: 155.1. 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

28. 155.2. 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 for the remedies hereinafter set forth:

29. Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.

30. Elements of infringement: 1. Use of registered trademark or colorable imitation thereof or its dominant feature (i) for the sale, distribution or advertising of goods and services and other preparatory steps, or (ii) on labels, signs, prints, packages, wrappers, receptacles or advertisements 2. Without the consent of the owner 3. Such use is likely to cause confusion, or to cause mistake, or to deceive

31. Exact imitation is not required • (i) Dominant feature test • (ii) Holistic test • Actual sale is not required, preparatory steps are sufficient • Actual confusion is not necessary, likelihood is enough • Confusion as to goods • Confusion as to origin

32. Section 147.2 on well-known mark speaks of “connection” with and “damage” to owner of the mark arising from the use of the mark on dissimilar goods

34. Axion vs. Kitchenmate

35. Emerald Garment Manufacturing Corp. vs. Court of Appeals docketed as G.R. No. 100098, promulgated by the Supreme Court on December 29, 1995 was a litigation between H.D. Lee Company, Inc. of Delaware, USA and a Philippine company, Emerald Garment, whereby private respondent H.D. Lee Company, as registrant of the trademark "LEE" in the Philippines sought cancellation of the trademark "STYLISTIC MR. LEE" from the Supplemental Register in the name of the Philippine company. The Bureau of Patents and Trademarks declared that STYLISTIC MR. LEE confusingly similar to MR. LEE on the basis of the dominant-feature test. The word mark LEE is the dominant feature of both marks the use of which is likely to confuse consumers. On the other hand, the HOLISTIC TEST mandates that the entirely of the marks in question must be considered in determining confusing similarity. (ibid) Quoting Fruit of the Loom, Inc. vs. Court of Appeals, 133 SCRA 405 (1984), the Supreme Court advanced that " (I)n determining whether the marks are confusingly similar, a comparison of the words is not the only determinant factor. The trademarks in their entirely as they appear in their respective labels or hang tags must also be 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 they may draw his conclusion whether one is confusingly similar to the other." Section 155.1 on infringement now speaks of “colorable imitation of a registered mark … or a dominant feature thereof.”

36. Del Monte Corporation vs. Court of Appeals G.R. No. L-78325, January 25, 1990 • Side-by-side comparison is not the final test of similarity • general confusion made by the article upon the eye of the casual purchaser who is unsuspicious • consumer must depend upon his recollection of the appearance of the product which he intends to purchase • consider the mark as a whole and not as dissected

37. (v) age, training and education of the usual purchaser, the nature and cost of the article, whether the article is bought for immediate consumption and also the conditions under which it is usually purchased

38. AMIGO MANUFACTURING, Inc. vs. CLUETT PEABODY CO., INC. G.R. No. 139300. March 14, 2001 Peabody: 1. GOLD TOE, under Certificate of Registration No. 6797 dated September 22, 1958; 2. DEVICE, representation of a sock and magnifying glass on the toe of a sock, under Certificate of Registration No. 13465 dated January 25, 1968; 3. DEVICE, consisting of a 'plurality of gold colored lines arranged in parallel relation within a triangular area of toe of the stocking and spread from each other by lines of contrasting color of the major part of the stocking' under Certificate of Registration No. 13887 dated May 9, 1968; and 4. LINENIZED, under Certificate of Registration No. 15440 dated April 13, 1970.

39. Amigo: 'GOLD TOP, Linenized for Extra Wear.' It has the dominant color 'white' at the center and a 'blackish brown' background with a magnified design of the sock's garter, and is labeled 'Amigo Manufacturing Inc., Mandaluyong, Metro Manila, Made in the Philippines'. Bureau of Patents & Trademarks and Court of Appeals declared the marks confusingly similar. The Supreme Court affirmed. a] Peabody presented Bureau registrations indicating the dates of first use in the Philippines of the trademark and the devices as follows: a) March 16, 1954, Gold Toe; b) February 1, 1952, the Representation of a Sock and a Magnifying Glass; c) January 30, 1932, the Gold Toe Representation; and February 28, 1952, "Linenized."

40. b] The registration of the above marks in favor of respondent constitutes prima facie evidence, which petitioner failed to overturn satisfactorily, of respondent's ownership of those marks, the dates of appropriation and the validity of other pertinent facts stated therein. c] Moreover, the validity of the Certificates of Registration was not questioned. d] Amigo failed to present proof of the date of alleged first use of the trademark "Gold Top and Device". Thus, even assuming that Peabody started using it only on May 15, 1962, we can make no finding that Amigo started using it ahead of Peabody. e] While pronunciations of the two marks do create confusion, respondent’s mark is a combination of the abovementioned trademarks registered separately by the petitioner in the Philippines and the United States.

41. f] The difference in sound occurs only in the final letter at the end of the marks. 'GOLD TOE' and 'GOLD TOP' are printed in identical lettering. Both show [a] representation of a man's foot wearing a sock. 'GOLD TOP' blatantly incorporates petitioner's 'LINENIZED' which by itself is a registered mark." g] The similarities are of such degree, number and quality that the overall impression given is that the two brands of socks are deceptively the same, or at least very similar to each another. SC rejected respondent’s argument that Peabody did not present evidence of first use to be entitled to protection. Since Peabody registered its trademarks under the principal register, the requirement of prior use had already been fulfilled. There exists a prima facie presumption of the correctness of the contents of the certificates, including the date of first use. Petitioner has failed to rebut this presumption.

42. PEARL & DEAN (PHIL.), INCORPORATED vs. SHOEMART, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED, G.R. No. 148222, August 15, 2003 • Issue: TM infringement • Facts: • P&D manufactures advertising display units or light boxes, which utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. • It secured a TM registration for "Poster Ads" which petitioner's president said was a contraction of "poster advertising." But the goods specified

43. 3. But the goods covered were "stationeries such as letterheads, envelopes, calling cards and newsletters," which P&D did not actually manufacture. • The SC held: • 1. Under ruling in Faberge Inc. vs. Intermediate Appellate Court, involving Section 20 of the old Trademark Law, "the certificate of registration issued by the Director of Patents can confer (upon petitioner) the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and

44. limitations specified in the certificate . . . . One who has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others for products which are of a different description." Faberge, Inc. was correct and was in fact recently reiterated in Canon Kabushiki Kaisha vs. Court of Appeals. 2. Assuming arguendo that "Poster Ads" could validly qualify as a trademark, the failure of P & D to secure a trademark registration for specific use on the light boxes meant that there could not have been any trademark infringement since registration was an essential element thereof.

45. Word- Analysis Approach and Sound Alikes • “SALONPAS” and “LIONPAS,” TEXTWOOD and DEXWOOD – likely to cause confusion • "WRANGLER" and "WRANCO," not likely to cause confusion • Nature of the Goods and Channels of Trade • “ESSO” for petroleum and for cigarettes • Purchasers’ Attitude

46. Mcdonald’s Corporation and McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc et al,G.R. No. 143993, August 18, 2004 • Remedial law; Petition for Review on Certiorari • Trademark infringement; unfair competition; review of factual findings • (a) nature of business • (b) kind of goods sold • (c ) use of “Big Mak” as corporate name • (d) holistic test • (e) dominant-feature test • (f) passing off • (g) trademark use • 3. Trademark infringement; cause of action and elements

47. a] The cause of action based on the first part of Section 22 Elements b] Generic and descriptive character c] Prior users of trademark d] Element of confusion: confusion as to goods and confusion as to origin e] Market consideration and price differences f] Dominant-feature test vs. Holistic test 4. Unfair competition; elements a] elements of an action for unfair competition b] dissimilarities in the packaging 5.   Remedies

48. Mighty Corporation, Et Al. V. E&J Gallo Winery, et al. SC G.R. No. 154342, July 14, 2004 • Petition for certiorari; questions of fact and questions of law • Applicable law at the time the case was filed • (a) Section 239 • (b) Curative statute • Article 6bis of the Paris Convention: elements of trademark infringement • First use of trademarks • (a) PX stores • (b) Affidavit of non-use • 5. Distinctions between trademark infringement • and unfair competition : Del Monte case

49. Elements under Section 22 • wines and cigarettes are related goods • Product indicated in the certificate of registration • Types of confusion : goods vs. origin: The Supreme Court adopted these two-part analysis inn Sterling Products International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, et al., and in the recent decision in McDonald’s Corporation McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18, 200 •  Dominant Feature Test vs. Holistic Test • McDonald’s Corporation McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc., G.R. No. 143993, August 18, 2004, demonstrated that the application of one test excludes the other. Here the Supreme Court applied the test of dominancy and rejected the holistic test

50. Societe Des Produits Nestlé, S.A. v. Court of Appeals, where the Court explicitly rejected the holistic test in this wise: [T]he totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determinedon 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. (Emphasis supplied)