IPL- Prof Amador's Presentation

Pau Duman / Intellectual Property Rights / Prof. Amador / Page 1

IPL 134 Trademarks Prof. Vicente B. Amador Senior Partner Sycip Salazar Hernandez & Gatmaitan

Acquisition of marks by Registration Registration SECT SECTIO ION N 122 122.. How How Ma Marks are Acq Acqui uirred. ed. - The The ri right ghts in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Sec. 2A, R A. No. 166a) Maintaining trademark trademark rights through actual use 124.2. The applicant or the registrant registrant shall file a declaration 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. 124.3. One (1) application may relate relate to several goods and/or services, whether they belong to one (l) class or to several classes of the Nice Classification. Classification. Developers Group of Companies, Inc. vs. Shangri-la International Hotel Management, Management, Inc. et. al. CA- G. R. CV No. 53351 Developers is the registered owner of the mark Shangri-La and S Logo in the Philippines under Regn. No. 31904 issued on May 31, 1983, which it started using in 1982. SIHM is the beneficial owner of the Shangri-La and the S Logo, which it started using in 1962 as part of its corporate name and as a mark mark for its hotels starting starting in 1975. 1975. It

claims that this mark is internationally internationally well-known and is protected under the Paris Convention. 1. Issue: Issue: Real Real Party Party in Interest Interest? ? “SLIHM is not the owner of the Shangri-la hotels, but through a licensing agreement, operates the same hotels. Logically, a member of a group of companies cannot claim ownership over the alleged properties of its mother company or any member of the conglomeration, conglomeration, which has distinct and separate separate personality personality of its own. Thus, defendant SLIM cannot claim to legally own the subject Shangri-la trademark trademark and S-logo by virtue of the alleged ownership of the same by Kuok Group.” 2. Issue: Is there trademark infringement? “Granting that Kuok’s use of the Shangri-law tradename tradename and S-Logo since 1962 benefits defendant-appellant SLIHM as a member of the conglomerate, the same is not the actual use required under Republic Republic Act No. 166. 166. The law requires the the actual use in commerce of the said tradename and S-Logo in the Philippines. The bulk of defendants-appellants’ defendants-appellants’ evidence show that the alleged use of the Shangri-la tradename was done abroad and not in the Philippines. The name Shangri-la was only actually used in the Philippines when the hotels with the same name were constructed in 1987. Defendants-appellants’ Defendants-appellants’ actual use in commerce of the subject tradename and S-logo in the Philippines commenced only in 1987.

The alleged defendants-appellants’ publication of advertisement worldwide is unavailing. To reiterate the Supreme Court ruling – Such right grows out of their actual use. Adoption is not use. One may make advertisements, advertisements,


issue circulars, give out price lists on certain goods; but these alone would not give exclusive right of use.”

Nestle filed notice of opposition to CFC’s application for FLAVOR MASTER

If this case is decided under the IP Code, will the outcome be different? Secondary meaning meaning or acquired distinctiveness may be gained only only with respect to marks under paragraphs paragraphs (j),(k) and (l)

CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the former's trademarks, MASTER ROAST and MASTER BLEND. 1. MASTER is either a generic generic or descriptive descriptive word Other words used with the trademarks trademarks are very different from each other — in meaning, spelling, pronunciation, and sound.

Precedents on Secondary Meaning • •

Phil. Nut Industry Inc. vs. Standard Brands Inc., GR L-23035, July 31, 1975; PLANTERS trademark Ang vs. Teodoro, GR No. L-48226, December 14, 194; ANG TIBAY trademark

Sec. 123 123.2. .2. As regar regards ds signs or devices devices mentio mentioned ned in paragraphs paragraphs (j), (k), and (l), nothing shall prevent the registration registration of any such sign or device which 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. The Office 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 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. SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs. COURT OF APPEALS and CFC CORPORATION, G.R. No. 112012. April 4, 2001. Nestle’s Marks: MASTER ROAST and MASTER BLEND." CFC’s Marks: Marks: "FLAVOR MASTER"

Bureau of Patents denied CFC’s trademark application, but CA reversed its decision and ruled in favor of CFC. CA held that the physical discrepancies between appellant CFC's and appellee's respective logos are so ostensible that the casual purchaser cannot likely mistake one for the other. Supreme Court reversed the CA: 1. The Court of Appeals applied some judicial precedents which are not on all fours with this case. 2. In infringement or trademark trademark cases in the Philippines, no set rules can be deduced in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. Each case must be decided on its own merits. 2. The cases cases cited cited by the Court Court of Appeals Appeals to justify justify the the application of the totality or holistic test to this case are inapplicable, the factual circumstances being substantially different. 3. BIOFERIN and BUFFERIN for pains caused headaches and colds are spelled and pronounced pronounced differently and and are prescribed by physicians


ALACTA for goods under Class 6 for pharmaceutical and nutritional preparation preparation is distinguishable distinguishable from ALASKA for goods under Class 47 47 for food ingredients. ingredients. The latter does not require prescription. 4. "The determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are, in general, undiscerningly rash in buying the more common and less expensive household products like coffee, and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products."

5. MASTER is the dominant feature of opposer's mark. MASTER is printed predominantly on the label and emphasized in TV, radio and printed advertising materials with personalities like Robert Jaworski and Atty. Ric Puno Jr., who are given the titles Master of the Game and Master of the Talk Show. 6. In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said term can not be invalidated invalidated as a trademark and, therefore, may be legally protected. Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. 7. The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers. Territorial character of trademarks

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Philip Morris Inc. et. al. vs. Fortune Tobacco Corp., July 16, 1993

“[T]here is no proof whatsoever that any of plaintiff’s products which they seek to protect from any adverse effect of the trademark applied for by defendant, is in actual use and available for commercial purposes anywhere in the Philippines.*** In assailing the justification arrived at by respondent court when it recalled the writ of preliminary injunction, petitioners are of the impression that actual use of their trademarks trademarks in Philippine commercial dealings is not an indispensable element under Article 2 of the Paris Convention in that: (2) …no condition as to the possession of a domiciled or establishment in the country where protection is claimed may be required of persons entitled to the benefits of the Union for the enjoyment of any industrial property rights. Yet petitioner’s petitioner’s perception along this line is nonetheless resolved by Sections 2 and 2-A of the Trademark Law which speaks about the necessity of actual commercial use of the trademark trademark in the local forum: … Following universal acquiescence and comity, our municipal law on trademarks regarding the requirement of actual use in the Philippines must subordinate an international agreement inasmuch as the apparent clash is being decided by a municipal tribunal. … Under the doctrine of incorporation incorporation as applied in most countries, rules of international law are given a standing equal, if not superior, to national legislative enactments.” But see Section Section 123(e) * * * 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; “Through advertisement, a well-established and well-earned reputation may be gained in countries where the trademark owner has itself no established business connection. Goodwill may thus be seen to be much less confined territorially than say, a hundred or fifty years ago. It is no longer true that a trademark trademark of itself cannot travel to markets where there is no article to wear the badge and no trader to offer the article. Advertisement of trademark is geared toward promotion of use of the marked article and the attraction of potential buyers and users; by fixing the identity of the marked article in the public mind, it prepares the way for growth in such commerce whether the commerce be handled by the trademark owner itself or by its licensees or independent traders.”

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Application process early filing date or priority date Examination process conflict with other marks applied for or m registered or with prior users of the trademark

How to Obtain Protection • •

Actual use in commerce Application for registration registration

The old Trademark Law followed an actual use system, while the IP Code followed a hybrid filing-actual use system While actual use was required for at least two months before application under old TM law, the IP Code allows application without use and requires it only within three years from filing date

See also: SECTION SECTION 3. Internatio International nal Conve Convention ntions s and Reciproc Reciprocity ity.. Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. (n) Essential Steps to Protection •

Actual use in commerce

SECT SECTIO ION N 124. 124. Requi equire reme ment nts s of Appl Applic icat atio ion. n. - 124. 124.1. 1. The application for the registration registration of the mark shall be in Filipino or in English and shall contain the following: (a) (a) A req reque uest st for for reg regis istr trat atio ion; n; (b) (b) The The nam name e and and addr addres ess s of of the the appl applic ican ant; t; (c) (c) The The name name of a Stat State e of of whi which ch the the app appli lica cant nt is is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, establishment, if any; (d) Where Where the the appl applica icant nt is is a juri juridic dical al enti entity ty,, the the law law under which it is organized and existing; (e) The appoi appointm ntment ent of an agent agent or or repr represe esenta ntativ tive, e, if if the the applicant is not domiciled in the Philippines; (f) Where Where the applic applicant ant claims claims the prior priority ity of an earlie earlierr application, an indication of:


i) The The nam name e of the the Sta State te with with whos whose e nat natio iona nall off offic ice e the the earlier application application was filed or if filed with an office other than a national office, the name of that office, ii) ii) The The dat date e on on whic which h the the ear earli lier er appl applic icat atio ion n was was fil filed ed,, and iii) iii) Wher Where e avai availa labl ble, e, the the app appli lica cati tion on num numbe berr of the the earlier application; (g) Where Where the applic applicant ant claims claims color color as a dist distinc inctiv tive e feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which are in that color; (h) (h) Wher Where e the the mark mark is is a thre three-d e-dim imen ensi sion onal al mar mark, k, a statement to that effect; (i) (i) One One or or mor more e repr reprod oduc ucti tion ons s of of the the mark mark,, as prescribed in the Regulations; (j) A transliteration transliteration or translation translation of the mark mark or of some parts of the mark, as prescribed in the Regulations; (k) (k) The The name names s of the the good goods s or serv servic ices es for for whi which ch the the registration registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; and (l) A sign signatu ature re by, by, or or othe otherr self self-id -ident entifi ifica catio tion n of, of, the applicant or his representative. representative. 124.2. The applicant or the registrant registrant shall file a declaration 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.

124.3. One (1) application may may relate to several goods goods and/or services, whether they belong to one (l) class or to several classes of the Nice Classification. Classification. 124.4. If during the examination examination of the application, application, the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt. (Sec. 5, R.A. No. 166a) SECTION 127. Filing Date – determines the right of priority of the application, the examination and publication so it is important to comply with the requirements for a filing date under this provision Question: ABC filed an application application for trademark trademark DEF with the IP Office on 1/1/04 claiming the priority priority date of its US application filed with with the USPTO on 6/1/03. Is the applicant entitled to a priority date of 6/1/03. SECT SECTIO ION N 131 131.. Prio Priori rity ty Righ Right. t. - 131 131.1 .1.. An An app appli lica cati tion on for registration registration of a mark filed in the Philippines by a person referred to in Section 3, and who previously duly filed an application for registration registration of the same mark in one of those countries, shall be considered as filed as of the day the application was first filed in the foreign country. 131.2. No registration registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant. Limitation on right to sue 131.3. Nothing in this section section shall entitle the owner owner of a registration registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the


Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law. When a first foreign application is withdrawn 131.4. In like manner and subject subject to the same conditions conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided, That any foreign application application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority. (Sec. 37, R.A. No. 166a) SECTION 128. Single Registration Registration for Goods and/or Services- several classes of goods and/or services may be included in one (1) application, but the application shall result in one registration registration additional fees are imposed goods determine the protection afforded under the related goods doctrine • declaration declaration of use within three years from filing date must provide evidence of actual use on specific products and registration will mention only such products SECTION 130.Signature and Other Means of SelfIdentification. • hand-written signature, printed or stamped signature • communications made by telefacsimile accepted followed by original within thirty days No attestation, notarization, authentication, legalization or other certification of any signature or other means of self-

identification referred to in the preceding paragraphs, will be required, except, where the signature concerns the surrender of a registration

SECTION 132.Application Number and Filing Date are given when the filing requirements are met SECTION 133. Examination and Publication – examination on the issue of registrability, and if approved the trademark application will be published in the Official Gazette SECTION 126. Disclaimers. The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable registrable mark but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive distinctive of the applicant's or owner's goods, business or services. (Sec. 13, R.A. No. 166a) Conflict with rival applicants or users •

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What are the rights of a prior user of a trademark vis a vis the registered owner but junior user of an identical mark? TRIPS Agreement says that “the rights [of a registered owner] shall not prejudice any existing prior rights.” Section 236. Preservation of Existing Rights. Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act. (n)


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Pursuant to TRIPS, the IP Code makes rights to trademarks available on the basis of use Under 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, Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director.

The only possible exception may be well-known trademarks, which may bar other applications “whether or not it is registered here” Question: ABC filed an application application for trademark trademark DEF with the IP Office on 6/1/04 claiming the priority priority date of its US application filed with the USPTO on 1/1/04. 1/1/04. The IP Office Office granted the registration when ABC filed its certificate of registration from the USPTO. ABC then sued XYZ for trademark infringement infringement for acts committed for the preceding 4 years during which it used the mark. Will the action prosper? Will your answer be the same if DEF is a well-known mark?


Intellectual Property Law 134 Trademarks

From creation From filing, From filing, without any formality publication, grant publication, grant

Comparative Table Copyright Original intellectual creations in the literary or artistic domain

Originality

Patents

Trademarks

Technical solution Visible sign of a problem in capable of any field of human distinguishing activity goods or services of enterprise

Novelty, in inventive Distinctiveness step and industrial applicability

Reproduction, Making, using, dramatization, selling, offering for first public sale and importing distribution, rental, public display, public performance other communication communication to public

Use in commerce without consent of a mark or a dominant feature in connection with sale, offering for sale, distribution, advertising in a manner likely to cause confusion

During lifetime and Twenty years from Ten years 50 years after death filing date renewable without limitation

Stimulation of artistic Promotion of Protection of creativity for the innovation for free goodwill and public good exploitation the public against confusion


Section 121.1."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; (Sec. 38, R.A. No. 166a) Is the MGM Roaring Lion registrable as a trademark in the Philippines? Is the Harley Davidson roaring engine registrable as a trademark trademark in the Philippines? In what ways is a collective mark different from a trademark? Sect Sectio ion n 121 121.2 .2.. "Col "Colle lect ctiv ive e mar mark" k" mean means s any any visi visibl ble e sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, 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; (Sec. 40, R.A. No. 166a) How are trademarks classified based on their distinctiveness? Spectrum of Distinctiveness • Generic – no trademark significance , cannot be exclusively appropriated appropriated except as a part of an otherwise composite mark, and even then must be disclaimed, e.g, Kamiseta, Pancake House • Descriptive – tells us the intended purpose, function, use,size, desirable characteristics characteristics of goods, nature of goods or effects upon users,

e.g., T-JOISTS for floor and roof systems; self-laudatory self-laudato ry marks like TASTY for bread, CHAP STICK for lip balm;

change of form notwithstanding, SPECS for spectacles, DYANSHINE for shoe polish from dye and shine; KWIKSTART for car batteries; but may be registrable registrable upon proof of secondary meaning • Suggestive – indirect or vague reference to information about the product and requires a thought process, ROACH MOTEL for cockroach trap, COPPERTONE COPPERTONE for tan oil, PLAYBOY for magazine, CYCLONE for wire fence, STRONGHOLD for nails • Arbitrary Arbitrary or Fanciful – usually coined words, ROLEX for watches, KODAK for cameras Why Distinctiveness Matters Pearl & Dean (Phil.), Incorporated vs. Shoemart, Incorporated, Incorporated, and North Edsa Marketing, Incorporated, G.R. No. 148222, August 15, 2003 Issue: TM infringement, Non-distinctive mark Facts: 1. P&D manufa manufactur ctures es advert advertising ising display display units units or or light light boxes, which utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. 2. It secured secured a TM registr registratio ation n for "Poster "Poster Ads" Ads" which petitioner's president said was a contraction of "poster advertising." 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. The trademark trademark registration registration did not cover cover poster poster ads. If at all, the cause of action should have been for unfair competition, a situation which was possible even if P & D had no registration.


2. Nonetheles Nonetheless, s, respondent respondents s are not liable liable for unfair unfair competition. 3. There was no evidence that P & D's use of "Poster Ads" was distinctive distinctive or has been associated associated by the public with P&D by reason of long and exclusive use in its business. "'Poster Ads' was too generic a name so it was difficult to identify it with any company. company. Hence, in the mind of the public, the goods and services carrying the trademark "Poster Ads" could not be distinguished from the goods and services of other entities. 4. "Poster Ads" cannot acquire secondary meaning. SOCIETE DES PRODUITS NESTLE, S.A. and NESTLE PHILIPPINES, INC. vs. COURT OF APPEALS and CFC CORPORATION, G.R. No. 112012. April 4, 2001. Nestle’s Marks: MASTER ROAST and MASTER BLEND." CFC’s Marks: Marks: "FLAVOR MASTER" Nestle filed notice of opposition to CFC’s application for FLAVOR MASTER CFC argued that its trademark, trademark, FLAVOR MASTER, is not confusingly similar with the former's trademarks, MASTER ROAST and MASTER BLEND. 1. MASTER is either a generic generic or descriptive descriptive word Other words used with the trademarks trademarks are very different from each other — in meaning, spelling, pronunciation, and sound.

Bureau of Patents denied CFC’s trademark application, but CA reversed its decision and ruled in favor of CFC. CA held that the physical discrepancies between appellant CFC's and appellee's respective logos are so ostensible that the casual purchaser cannot likely mistake one for the other.

Supreme Court reversed the CA: 1. The Court of Appeals applied some judicial precedents which are not on all fours with this case. 2. In infringement or trademark trademark cases in the Philippines, no set rules can be deduced in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another. Each case must be decided on its own merits. 3. The cases cited by the Court of Appeals to justify the application of the totality or holistic test to this case are inapplicable, the factual factual circumstances being substantially different. BIOFERIN and BUFFERIN for pains caused headaches and colds are spelled and pronounced pronounced differently and and are prescribed by physicians ALACTA for goods under Class 6 for pharmaceutical and nutritional preparation preparation is distinguishable from ALASKA for goods under Class 47 for food ingredients. ingredients. The latter does not require prescription. 4. "The determination of whether two trademarks are indeed confusingly similar must be taken from the viewpoint of the ordinary purchasers who are, in general, undiscerningly rash in buying the more common and less expensive household products like coffee, and are therefore less inclined to closely examine specific details of similarities and dissimilarities between competing products." 5. MASTER is the dominant feature of opposer's mark. MASTER is printed predominantly on the label and emphasized in TV, radio and printed advertising materials with personalities like Robert Jaworski and Atty. Ric Puno Jr., who are given the titles Master of the Game and Master of the Talk Show.


6. In addition, the word "MASTER" is neither a generic nor a descriptive term. As such, said term can not be invalidated invalidated as a trademark and, therefore, may be legally protected. Rather, the term "MASTER" is a suggestive term brought about by the advertising scheme of Nestle. 7. The term "MASTER", therefore, has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestle. As such, the use by CFC of the term "MASTER" in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers. What elements of this art design are registrable as trademarks trademarks and how do you classify them in terms of distinctiveness ? Trademarks, Patents and Copyright as Subjects of Commercial Transactions SECTION SECTION 4. 4. Definition Definitions. s. - 4.1. The term "intellectu "intellectual al property rights" consists of: a) Copy Copyri righ ghtt and and Rela elated Right ights s; b) Tradema emarks and and Ser Serv vice ice Ma Marks; rks; c) Geographic Indications; d) Industrial Designs; e) Patents; f) Layo Layout ut-D -Des esig igns ns (Top (Topog ogra raph phie ies) s) of Inte Integr grat ated ed Circuits; and g) Prot Protec ecti tion on of of Undi Undisc sclo lose sed d Info Inform rmat atio ion n (n, (n, TRIP TRIPS) S).. What elements in this pictorial illustration are registrable as trademarks trademarks in the Philippines and how do you classify them in terms of distinctiveness? distinctiveness?

4.2. The term "technolo "technology gy transfer transfer arrangem arrangements" ents" refers refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or


licensing of all forms of intellectual property property rights, including licensing of computer software except computer software developed for mass market. Section 150. License Contracts. – Any license contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If the license contract does not provide for such quality control or if such quality control is not effectively carried out, the license contract shall not be valid. Technology Transfer Arrangement Section Section 4.2. 4.2. The term term "technolo "technology gy transfe transferr arrangem arrangements" ents" refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property property rights, including licensing of computer software except computer software developed for mass market. Requirement for Enforceability Section Section 92. Non-Regis Non-Registra tration tion with the Documentat Documentation, ion, Information and Technology Transfer Bureau. - Technology transfer arrangements arrangements that conform with the provisions of Sections 86 and 87 need not be registered with the Documentation, Information and Technology Transfer Bureau. Non-conformance with any of the provisions of Sections 87 and 88, however, shall automatically render the technology transfer arrangement unenforceable, unless said technology transfer arrangement arrangement is approved and registered with the Documentation, Information and Technology Transfer Bureau under the provisions of Section 91 on exceptional cases. (n)

Don’ts of IP Licensing SECTION 87. Prohibited Clauses. - Except in cases under Section 91, the following provisions shall be deemed prima facie to have an adverse effect on competition and trade: 87.1. 87.1. Those which which impose impose upon upon the licensee licensee the oblig obligatio ation n to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor; 87.2. 87.2. Those pursua pursuant nt to which which the licens licensor or reserves reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license; 87.3. 87.3. Those that that contain contain restrictio restrictions ns regarding regarding the volume volume and structure of production; 87.4. 87.4. Those that that prohibi prohibitt the use use of competit competitive ive technologies in a non-exclusive technology transfer agreement; 87.5. 87.5. Those that that establi establish sh a full or partia partiall purchase purchase option option in favor of the licensor; 87.6. 87.6. Those that that obligat obligate e the licensee licensee to trans transfer fer for free free to the licensor the inventions or improvements that may be obtained through through the use of the licensed technology; 87.7. 87.7. Those that that requir require e payment payment of roya royalties lties to the owners of patents for patents which are not used; 87.8. 87.8. Those that that prohibi prohibitt the licensee licensee to to export export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted;


87.9. 87.9. Those which which restri restrict ct the use use of the the technology technology supplied after the expiration of the technology transfer arrangement, except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee; 87.10. Those which require payments payments for patents and other industrial property rights after their expiration, termination arrangement; 87.11. Those which require that that the technology recipient recipient shall not contest the validity of any of the patents of the technology supplier; 87.12. Those which restrict the the research and development development activities of the licensee designed to absorb and adapt the transferred technology technology to local conditions or to initiate research and development programs in connection with new products, processes or equipment; 87.13. Those which prevent the licensee licensee from adapting adapting the imported technology to local conditions, or introducing innovation to it, as long as it does not impair the quality standards prescribed by the licensor; 87.14. Those which exempt the licensor for liability liability for nonfulfillment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology; and 87.15. Other clauses with equivalent equivalent effects. (Sec. (Sec. 33-C (2), R.A 165a) Do’s of IP Licensing SECTION SECTION 88. Mandatory Mandatory Provisi Provisions. ons. - The following following provisions shall be included in voluntary license contracts: 88.1. 88.1. That the the laws of the Philip Philippines pines shall shall gove govern rn the interpretation interpretation of the same and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office;

88.2. 88.2. Continued Continued access access to impro improvemen vements ts in technique techniques s and processes related to the technology shall be made available during the period of the technology transfer arrangement; 88.3. 88.3. In the event event the technolog technology y transfer transfer arra arrangeme ngement nt shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country; and 88.4. 88.4. The Philippi Philippine ne taxes taxes on all payment payments s relating relating to the technology transfer arrangement arrangement shall be borne by the licensor. (n)

Exceptions to to the Don’ts Don’ts and Do’s SECTION SECTION 91. Exception Exceptional al Cases. Cases. - In exceptiona exceptionall or meritorious cases where substantial benefits will accrue to the economy, economy, such as high technology content, increase in foreign exchange earnings, employment generation, regional dispersal of industries and/or substitution with or use of local raw materials, or in the case of Board of Investments, registered companies with pioneer status, exemption from any of the above requirements may be allowed by the Documentation, Information and Technology Technology Transfer Bureau after evaluation thereof on a case by case basis. (n)


Not All Marks are Created Equal

You can’t go wrong with a mark like ROLEX Montres Rolex, S. S. A. vs. Rolex Scientific Scientific Corporation, Corporation, SEC Decision, April 28, 2004 Issue: Unauthorized use of Rolex trademark trademark and trade name Facts: 1. Petition Petitioner er is the register registered ed owner of the the trademark trademark ROLEX for watches in the Phils. and elsewhere. ROLEX is used as a trade name. 2. ROLEX trademark is registered in numerous countries worldwide. It is used as part of the corporate name of a Rolex subsidiary in the Phils. 3. Respondent used and and registered ROLEX as as part of its corporate name in the Phils. ahead of the Rolex subsidiary. Respondent manufactures laboratory supplies. Respondent claims that confusion is unlikely because it is using ROLEX only as part of its corporate name, but not as a trademark. Held:

1. Under Sec. 37 of TM Law Law (and now now Sec. 165 165 of IP Code), trade names are protected against subsequent use by a third party in a manner likely to mislead the public. 2. Sec. 18 of Corp. Code Code also protects protects the registered corporate names of Rolex companies in the Phils. A corporation’s right to use its corporate name is a property right, which it may protect against the whole world. 3. The ROLEX ROLEX name name and mark mark is known known worldw worldwide ide as a leading brand or name for timepieces. It is a world famous mark. 4. Respondent’s argument that confusion confusion is not likely is unacceptable because “what is sought to be protected is not the product alone, but the trade name itself of petitioner. 4. The protect protection ion to which which the prior prior user user of a corporat corporate e name is entitled is not limited to guarding its goods or business from actual market competition with identical or similar products of the parties but extends to all cases in which the use of the junior appropriator appropriator of the name is likely to lead to confusion as to source, as where prospective purchasers would be misled into thinking that the complaining corporation corporation has extended its business into the field, or is in any way connected with the activities of the infringer; or when it forestalls the normal expansion of its business.


If you have not heard of In tel, you don’t belong to this century !!!

Everybody Loves Microsoft!!!

Why it is given special treatment Pribhdas J. Mirpuri .vs. Court of Appeals, Director of Patents and the Barbizon Corporation, G.R. No. 114508. November 19, 1999 Issue: Well-known mark Facts: 1. Escobar Escobar applied applied with with the BPTT for the regist registrat ration ion of the trademark "Barbizon" for use in brassieres and ladies undergarments. undergarments. She claimed use of the mark mark since 1970. 2. Barbizon Barbizon opposed opposed the applic applicatio ation n on the basis of its use of “Barbizon” for apparel. 3. Escobar prevailed but her registration registration lapsed lapsed because because she failed to file affidavit of use. 4. Barbizon opposed Escobar’s re-application. Opposition was based on new grounds: fraudulent registration registration in 1974, violation of Art. 189 (3) the RPC, protection of well-known mark under Art. 6bis of Paris Convention SC held: 1. Oppositio Opposition n is not barred barred by res res judicata judicata because because while the first opposition was only based on claim of confusing similarity second opposition was based on new grounds not raised in the first case. 2. Barbizon Barbizon’s ’s opposi opposition tion is is anchored anchored on protec protection tion of of well-known mark Article Article under 6bis of the Paris Paris Convention 3. The “Barbizon” trademark is well-known because: (a) It has been used as early as 1933 on products such as robes, pajamas, lingerie, nightgowns and slips; (b) It was registered with the USPO in 1934 and 1949; and variations variations of the same trademark, trademark, i.e., "BARBIZON" with Bee design and "BARBIZON" with the representation of a woman were also registered with the USPO in 1961 and 1976;


(c) It has been used in the Philippines and in many countries all over the world for over forty years. (d) "Barbizon" products have been advertised in international publications publications and the marks registered in 36 countries worldwide;

• • • •

It doesn’t pay to copy another’s mark particularly particularly if it’s well known

Par (f) covers situation where: a mark is considered well-known internationally and in the Phils. • such mark is also registered in the Phils. • the goods or services for which the mark is registered are not similar to those in respect of which rival mark is applied for • well-known mark bars the rival mark if “connection” with and “prejudice” to owner of mark are shown Rule102. Criteria. In determining whether a mark is well known, the following criteria or any combination thereof may be taken into account: (a) The duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical geographical area of any promotion of the mark, including the advertising or publicity and the presentation at fairs, or exhibitions, of the goods and services to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and services to which the mark applies; ( c) the degree of the inherent or acquired distinction of the mark; (d) the quality, image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world (f) the exclusivity of registration registration attained by the mark in the world; •

Section 123. Registrability. A mark cannot be registered if it:* (e) Is identi identical cal with, with, or confus confusing ingly ly simila similarr to, 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 wellknown, 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; SECTION 123.Registrability. A mark cannot be registered if it:* (f) Is ide ident ntic ical al with with,, or conf confus usin ingl gly y simi simila larr to, to, or 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 registration is applied for: Provided, Par (e) covers situation where:

a mark is considered by Philippine authorities to be well-known internationally internationally and in the Phils. the mark may or may not be registered in the Phils. the mark is used for identical or similar goods goods and services to those of the rival user the well-known mark bars the rival mark


(g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) The com commer mercia ciall value value attr attribu ibuted ted to the the mar mark k in the the world; (j) The record of successful protection of the rights in the mark (k)the outcome of litigations dealing with the issue of whether the mark is a well-known mark (l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods and services and owned by persons other than the person claiming that his mark is a well-known mark. Protection of Trade Names • Paris Convention mandates that member countries shall protect the trade names of nationals of other members “without the obligation of filing or registration” • Section 18 of the Corporation Code prevents the use as corporate names of designations “protected by law”

1. What is the nationa nationall treatment treatment princip principle le in IP law? Each WTO member shall accord to nationals of other Members treatment no less favorable than that which it accords to its own nationals with regard to the protection of intellectual property 2. What is the most-f most-favo avored red national national treatm treatment ent in IP law? With regard to the protection of intellectual property, any advantage, favor, privilege or immunity

granted by Members to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members. Section 123. Registrability. A mark cannot be registered if it:* (e) Is identi identical cal with, with, or confus confusing ingly ly simila similarr to, to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally 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 wellknown, 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; Why do I have to worry about it? SECTION 123.Registrability. A mark cannot be registered if it:* (f) Is ide ident ntic ical al with with,, or conf confus usin ingl gly y simi simila larr to, 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 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, further, That the interests of the owner of the registered mark are likely to be damaged by such use;


You are truly something special Rule102. Criteria. In determining whether a mark is well known, the following criteria or any combination thereof may be taken into account: (a) The duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical geographical area of any promotion of the mark, including the advertising or publicity and the presentation at fairs, or exhibitions, of the goods and services to which the mark applies; (b) the market share, in the Philippines and in other countries, of the goods and services to which the mark applies; ( c) the degree of the inherent or acquired distinction of the mark; (d) the quality, image or reputation acquired by the mark; (e) the extent to which the mark has been registered in the world (f) the exclusivity of registration registration attained by the mark in the world; (g) the extent to which the mark has been used in the world; (h) the exclusivity of use attained by the mark in the world; (i) The com commer mercia ciall value value attr attribu ibuted ted to the the mar mark k in the the world; (j) The record of successful protection of the rights in the mark (k)the outcome of litigations dealing with the issue of whether the mark is a well-known mark (l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods and services and owned by persons other than the person claiming that his mark is a well-known mark. Call it by any other name and it won’t mean the same same

Sec Section tion 121.3. .3. "Tr "Trade nam name" means eans the name name or designation identifying or distinguishing an enterprise; (Sec. 38, R.A. No. 166a) A mark can be a trade name and vice versa ROLEX, KODAK, INTEL, MICROSOFT, MICROSOFT, AMAZON, BARBIZON Protection of Trade Names •

•

Paris Convention mandates that member countries shall protect the trade names of nationals of other members “without the obligation of filing or registration” Section 18 of the Corporation Code prevents the use as corporate names of designations “protected by law”

When is it immoral and when deceptive? Section Section 165. Trade rade Names or Business Business Names. Names. - 165.1. 165.1. 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.

No registration is required for protection 165. 165.2. 2.(a (a)) Notw Notwit iths hsta tand ndin ing g any any laws laws or or regu regula lati tion ons s providing for any obligation to register trade names, such names shall be protected, protected, even prior to or without without registration, registration, against any unlawful act committed by third parties. (b) In par partic ticula ularr, any any subse subseque quent nt use use of of the the trad trade e name 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.

Enterprise must be be transferred with the trade name 165.3. The remedies provided for in Sections 153 153 to 156 and Sections 166 and 167 shall apply mutatis mutandis. 165.4. Any change in the ownership ownership of a trade name name shall be made with the transfer of the enterprise or part thereof identified by that name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis mutandis.

Domain name as a trademark A BENCH is what you wear to sit on one Is it alright to use your name as a mark when you’re dead? Section 123.1. 123.1. A mark cannot be registered registered if it* *(e) Consists of the name, portrait 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 lifetime of his widow, if any, except by the written consent of the widow; What you hear is what you paid for

A name may be a mark


If TEXT ALOUD doesn’t tell you what it is, it time to quit this course!!

and even then, it’s just prima facie after five years!!! The Office 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 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. If it has a secondary secondary meaning, it must have have a primary

Don’t use it if it tells you what the product is Section 123. A mark cannot be registered if it: (j) 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 the rendering of the services or other characteristics characteristics of the goods or services. … unless you are ready to use it for the at least five years before you can claim it as your own 123.2 As regards signs or devices mentioned mentioned in paragraphs paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which 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.

Doctrine of secondary meaning or acquired distinctiveness • limited to marks under paragraphs (j),(k) and (l), and excludes absolutely unregistrable trademarks trademarks • Phil. Nut Industry Inc. vs. Standard Brands Inc., GR L-23035, July 31, 1975; PLANTERS • Ang vs. Teodoro, GR No. L-48226, December 14, 194; ANG TIBAY It’s the consumer’s mind that counts Tests of Strength • Strength refers to the distinctiveness of the mark • Fanciful-suggestive-descri Fanciful-suggestive-descriptive ptive continuum is often used to determine strength or weakness of marks • It is a question of consumer recognition • It is not determined by the value of the goods on which it is used …and the more users there are, the less distinctive distinctive it is • Strength is also determined by number of third-party uses • e.g., In a crowded field, MRS. OF THE WORLD is not likely to be confused with MISS WORLD, Miss World UK vs. Mrs. American Pageant, Inc. 856 F. 2d 1445


Do you order it single or double? • A mark may be used singly or in combination with other marks e.g., company company name is used as house mark in addition to another mark on labels: SONY VAIO, KELLOGG POP-TARTS, Kellogg vs. General Foods Corp., 166 USPQ 27 • Multiple marks may be used together by multiple users e.g., lawn mower manufactured by Yardman and retailed by Sears Roebuck can be If it’s difficult to remember, it’s better than one that isn’t Types of Marks • Arbitrarily arranged letters given wide protection because they are difficult to remember • An alphanumeric telephone number may be used a trademark, trademark, but if it includes a generic term, composite mark can be descriptive and may be protected only upon proof of secondary meaning • But numbers used to indicate size, capacity, model or style are not used as trademarks • Abbreviations and nicknames may function as marks, e.g., COKE for Coca-Cola, BUD for Budweiser • Slogans can serve as marks, e.g.. Where There’s Life… There’s Bud, but not Soil It-Wash It-Wash it-NeverNeeds Pressing for apparel If it is ornamental, keep it as a house décor Ornamental symbols and designs may serve as source designations, but not if exclusively ornamental, e.g., red, white and blue panels on basketball, In re Soccer Sport Supply Co., 507 F 2d 1400; colored bands around top of men’s socks is not distinctive, In re Schenectady Varnish Co., 280 F2d 169; but a mark consisting of three parallel

colored lines of each side of ADIDAS shoes was registered on proof of secondary meaning, In re Dassler, 134 USPQ 265 If is useful for practical practical purposes, it doesn’t function as a mark Product and Container Shapes may be protected under unfair competition law if following elements are present: • Non-functionality • Proof of secondary meaning • Likelihood of confusion e.g., shape of classic automobile, Ferrari Ferrari SpA vs. McBurnie, 11 USPQ2d 1843; overall design of sports shoes, L. A. Gear vs. Thom McAn Shoe, 12 USPQ2d 1001 … but if is neither fu nctional nor ornamental, it might be worth a try Levi’s pocket tab is a valid trademark, not primarily functional, and not merely ornamental, Levi Strauss & Co. vs. Blue Bell, 200 USPQ 434 You can’t appropriate what others need to compete If one manufacturer should should make an advance advance in effectiveness of operation or simplicity of form, or in utility of color; and if that advance did not entitle him to a monopoly by means of a machine or process or a product or a design patent; and if by means of unfair trade suits he could shut out other manufacturers who plainly intended to share in the benefits of unpatented utilities … he would be given gratuitously a monopoly more effective than that of the unobtainable patent in a ratio of eternity to seventeen years – Pope automatic Merchandising Co. vs. McCrum-Howell Co., 191 F. 979, 223 US 730


If the Supreme Court said so, you better believe it! Functional features cannot be appropriated appropriated as trademarks trademarks • Asia Brewery Inc. vs. San Miguel Corp., July 5, 1993 Territorial character of trademarks • Philip Morris Inc. et. al. vs. Fortune Tobacco Corp., July 16, 1993 • But see Section 123(e) * * * 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;


Required Use As Condition For Registration SECT SECTIO ION N 124. 124.2. 2. The The appl applic ican antt or the the reg regis istr tran antt shal shalll file 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. Declaration Declaration must specify the goods and outlets where they are sold Adoption alone of a trademark trademark would not vest exclusive right upon the proprietor

sandwiched between plastic sheets and illuminated with back lights. 2. It secured secured a TM registr registratio ation n for "Poster "Poster Ads" Ads" which petitioner's president said was a contraction of "poster advertising." 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 Faberge Inc. vs. Intermediate Appellate Court, involving Section 20 of the old Trademark Law, "the certificate of registration 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

Trademark is a creation of use 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. 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: 1. P&D manufac manufacture tures s advertis advertising ing displa display y units or light boxes, which utilize specially printed posters

limitations specified 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 registration for light boxes meant that there could not have been any trademark trademark infringement since registration registration was an essential element thereof. 3. Note Sec. 147, “identical or similar”


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, toner, and dye stuff ).

4. BPTT and CA dismissed the opposition. 5. Before the SC, Canon claims 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. The SC held: 1. Ordinarily, Ordinarily, a trademark trademark is a a property property right that that is protected by law. 2. But when a tradem trademark ark is used used by another another on product product in which the opposer does not deal, the use of the same trademark on the latter's product cannot be validly objected to. 3. Related Related Goods Goods Doctrin Doctrine: e: There is a world world of difference between the paints, chemical products, toner, and dyestuff of petitioner and the sandals of private respondent. 4. Natural Natural Expansi Expansion on of Business Business Doctr Doctrine: ine: 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, Faberge, Incorporated vs. Intermediate Appellate Court, the Director of patents patents allowed the junior 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.

6. Paris Paris Conventio Convention n Claim: "A tradena tradename me shall be protected in all the countries of the Union without the obligation of filing or registration, registration, whether or not it forms part of a trademark.“ 7. Kabushi Kabushi Kaisha Kaisha Isetan Isetan vs. Intermedia Intermediate te Appellate 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. Excused Non-Uses SEC SECTION TION 152. Non-u on-us se of of a Mar Mark When hen Excu Excuse sed. d. 152.1. Non-use of a mark may be excused if caused by circumstances arising independently independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark. 152.2. The use of the mark in a form 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.


152.3. The use of a mark in connection connection with one or more 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. Uses by Related Companies 152.4. The use of a mark by a company 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: 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 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) Administrative Administrative Actions for TM Enforcement (i) (ii) (iii) (iii) (iv) (iv)

Opposition Cancellation Admini Administr strati ative ve acti actions ons befo before re the the Bureau Bureau of of Legal Legal Affairs Bure Bureau au of Cus Custo toms ms Bor Borde derr Con Contr trol ol

Civil Actions for TM Enforcement (i) (i) Tradem ademar ark k infr infrin inge geme ment nt (ii (ii) Unfa Unfair ir com compet petitio ition n (iii (iii)) False alse desi design gnat atio ion n of of Ori Origi gin n (iv) Criminal Actions Rights of Registered Owner

SECT IO ION 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. 147.2. The exclusive right right of the owner of a well-known 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) Non-actionable Non-actionable Use SECT SECTIO ION N 148. 148. Use Use of Indi Indica cati tion ons s by Thir Third d Partie rties s for for Purposes Other than those for which the Mark is Used. Registration 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, 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) Section 151. Cancellation - * * *


Sec Section tion 151.2. .2. Notw Notwit iths hsttand anding ing the the for foregoi egoing ng provisions, the court or the administrative 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. Section 134 Opposition (1) any person who may be damaged by registration; registration; may be a registrant or user of an identical or similar mark (2) opposition shall be in writing writing and verified by the oppositor or by any person on his behalf who knows the facts (3) specify the grounds on which it is based and include a statement of the facts relied upon (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 Sectio Section n 151, 151, Cancel Cancellat lation ion (1) any person who believes believes that he is or will will be damaged by the registration

(2) Period for filing: filing: (a)Within five (5) years from the date of the registration registration of the mark under this Act

(b) At any any time time,, if if the the regist register ered ed mark mark become becomes s the the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration 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 The primary significance of the registered mark to the relevant public rather than purchaser motivation 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) (c) At any any tim time, e, if if the the regi regist ster ered ed own owner er of of the the mark mark without legitimate reason 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. TRADEMARK INFRINGEMENT SEC SECTION TION 155. Remed emediies; es; Inf Infrring ingemen ement. t. - An Any per perso son n who shall, without the consent of the owner of the registered mark: 155.1. Use in commerce any reproduction, counterfeit, copy, 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 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


155.2. Reproduce, counterfeit, counterfeit, copy or colorably 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 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: 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 advertisements 2. Without the consent of the owner 3. Such use is likely to cause confusion, or to cause mistake, or to deceive Exact imitation is not required (i) Dominant feature test (ii) Holistic test Actual sale is not required, preparatory preparatory steps are sufficient Actual confusion is not necessary, necessary, likelihood is enough (i) (i) Conf Confus usio ion n as as to to go goods ods (ii) (ii) Conf Confus usio ion n as as to orig origin in

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 goods


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 trademark "STYLISTIC MR. LEE" from the Supplemental Register Register in the name of the Philippine company.The Bureau of Patents and Trademarks 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.” Del Monte Corporation vs. Court of Appeals G.R. No. L78325, January 25, 1990 (i) Side-b Side-by-s y-side ide compa comparis rison on is is not not the the fina finall test test of of similarity (ii) (ii) genera generall confu confusio sion n made made by by the the artic article le upon upon the the eye eye of the casual purchaser who is unsuspicious

(iii) (iii) (iv) (iv)

consum consumer er must must depe depend nd upon upon his his reco recolle llecti ction on of the appearance of the product which he intends to purchase consid consider er the the mark mark as a whole whole and and not not as as disse dissecte cted d

(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 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 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.

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 confusi ngly similar. similar. The Supreme Court affirmed.


a] Peabody presented Bureau registrations 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; Representation; and February 28, 1952, "Linenized." 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 trademark "Gold Top and Device". Thus, even assuming that Peabody 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 pronunciations of the two marks marks do create confusion, respondent’s mark is a combination of the abovementioned trademarks trademarks registered separately by the petitioner in the Philippines and the United States. 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 representation of a man's foot wearing a sock. 'GOLD TOP' blatantly incorporates 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. PEARL & DEAN (PHIL.), INCORPORATED vs. SHOEMART, INCORPORATED, INCORPORATED, and NORTH EDSA MARKETING, INCORPORATED, G.R. No. 148222, August 15, 2003 Issue: TM infringement Facts: 1. P&D manufa manufactur ctures es advert advertising ising display display units units or or light light boxes, which utilize specially printed posters sandwiched between plastic sheets and illuminated with back lights. 2. It secured secured a TM registr registratio ation n for "Poster "Poster Ads" Ads" which petitioner's president said was a contraction of "poster advertising." But the goods specified 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 Faberge Inc. vs. Intermediate Appellate Court, involving Section 20 of the old Trademark Law, "the certificate of registration 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 limitations 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, 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 registration for specific use on the light boxes meant that there could not have been any trademark infringement since registration registration was an essential element thereof. Word- Analysis Approach and Sound Alikes (i) “SALON “SA LONPA PAS” S” and “LIONP “LIONPAS, AS,” TEXT TEXTWOO WOOD D and and DEXWOOD – likely to cause confusion (ii) (ii) "WRANG "WRANGLER LER"" and and "WRA "WRANCO NCO," ," not not likely likely to cause cause confusion Nature of the Goods and Channels of Trade (i) “ESSO” “ES SO” for petro petroleu leum m and and for cigare cigarett ttes es Purchasers’ Attitude

(g) trademark use 3. Trademark Trademark infringement; infringement; cause of action and elements

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

Remedies

Mighty Corporation, Corporation, Et Al. V. E&J Gallo Winery, et et al. SC G.R. No. 154342, July 14, 2004 Mcdonald’s Corporation Corporation and McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc et al,G.R. No. 143993, August 18, 2004 1. Remedial Remedial law; law; Petition Petition for Review Review on Certiorar Certiorarii 2. Trademark 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 dominant-feature test (f) passing off

1. Petition for certiorari; certiorari; questions of fact and questions questions of law 2. Applicabl Applicable e law at at the time time the case case was was filed (a) Section 239 (b) Curative statute 3. Article Article 6bis 6bis of the Paris Paris Conventi Convention: on: elements elements of trademark trademark infringement 4. First First use of trad tradema emarks rks (a) PX stores (b) Affidavit of non-use 5. Distinctions between trademark infringement and unfair competition : Del Monte case


(a) Elements under under Section 22 (b) wines and cigarettes cigarettes are related goods (c) Product indicated indicated in the certificate certificate of registration registration (d) Types 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., 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 (e) Dominant Feature Test Test vs. Holistic Test Test (f) McDonald’s Corporation Corporation McGeorge Food 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. other. Here the Supreme Court applied the test of dominancy and rejected the holistic test Societe Des Produits Nestlé, S.A. v. Court of Appeals, 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 determined on the basis of visual, aural, connotative comparisons and overall and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. (Emphasis supplied) Trademark Conflicts and Prior Use SECT SECTIO ION N 168. 168. Unfa Unfair ir Comp Compet etit itio ion, n, Righ Rights ts,, Reg Regul ulat atio ion n and Remedies. - 168.1. 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. 168.2. Any person who shall employ deception deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor. 168.3. In particular, particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair competition: (a) Any person person,, who who is is sell selling ing his goods goods and gives gives them 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; (b) Any person person who by any artif artifice ice,, or or devi device, ce, 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 (c) (c) Any Any pers person on who who sha shall ll mak make e any any fals false e stat statem emen entt 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. 168.4. The remedies provided by Sections 156, 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29, R.A. No. 166a) Unfair Competition (i) No registration of mark is required in unfair competition (ii) Defendant shall have given to his goods the general appearance of the goods of the complaining party, either 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 the complaining party; (iii) the defendant should have clothed the goods with such appearance for the purpose of deceiving the public and defrauding the complaining party of his legitimate trade

faith of a nature calculated to discredit the goods, business or services of another This is called disparaging use of marks or trade libel in other jurisdiction Examples: Genital Electric for panties – General Electric; Inutel Inside – Intel Inside; Where There’s Bugs, There’s Life for insecticides – Where There’s Life, There’s Bud

(iv)Unfair competition usually arises in cases of trade dress imitation (v)Plaintiff in an unfair competition action must show that his goods have acquired goodwill and reputation among consumers

(vi) The true test of unfair competition is whether the acts of defendant are such as are calculated to deceive the ordinary buyer making his purchases under the ordinary conditions which prevail in the particular trade to which the controversy relates (vii)Fraudulent intent on the part of defendant to pass off his goods or business as or for that of plaintiff is necessary Section 168.2 subjects to liability for unfair competition “any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good

Section 169.1 False Designation of Origin … any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which: (a) 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 approval of his or her goods, services, or commercial activities by another person; or


(b) (b) In com comme merc rcia iall adve advert rtis isin ing g or pro promo moti tion on,, 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 provided in Sections 156 and 157 of this Act by any person who believes that he or she is or is likely to be damaged by such act. 169.2. Any goods marked or labeled labeled in contravention contravention of the provisions of this Section shall not be imported into the Philippines or admitted entry at any customhouse of the Philippines. 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 this Act in cases involving goods refused entry or seized. (Sec. 30, R.A. No. 166a) Remedies and Reliefs In Unfair Competition SECT SECTIO ION N 156 156.. Act Actions ions,, and and Dam Damages ges and and Inju Injunc ncttion ion for Infringement. (1) damages suffered suffered shall be either (i) the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or (ii) the profit which the defendant actually made out of the infringement; or (iii) if not ascertainable, ascertainable, 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 (2) impounding during the pendency of the action, sales invoices and other documents evidencing sales (3) 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

(4) 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 (5) complainant, upon proper showing, may also be granted injunction (6) under Section 157, destruction of infringing goods and materials used for infringement; removal of infringing mark not enough to justify release of goods Search and seizure in civil cases now allowed under Supreme Court circular A.M. NO. 02-1-06-SC SEC. 2. The writ of search and seizure. – Where any delay is likely to cause irreparable harm to the intellectual property right holder or where there is demonstrable risk of evidence being destroyed, the intellectual property right holder or his duly authorized representative representative in a pending civil action for infringement or who intends to commence such an action may apply ex parte for the issuance of a writ of search and seizure directing the alleged infringing defendant or expected adverse party to admit into his premises the persons named in the order and to allow the search, inspection, copying, photographing, audio and audiovisual recording or seizure of any document and article specified in the order Administrative Administrative Actions for TM Enforcement Section 166, Goods Bearing Infringing Marks or Trade Names may be barred from commerce through customs exclusion proceeding

Criminal Penalties for Counterfeiting SEC SECTION TION 170. Pena enaltie lties. s. - Ind Indep epen end dent ent of of the the civ civil and administrative sanctions imposed by law, 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 any of the acts mentioned in Section 155, Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised Penal Code)

In the United States of America, in the case of Brookfield Communications Inc. v. West Coast Entertainment Corp, 50 U.S.P.Q. 2d 1545 (9th Cir. 1999), the Court regarded the practice of meta tagging as potential trademark infringement, stating that such use might suggest sponsorship or authorization by the trademark owner, or that consumers looking for the products of the trademark owner might be misdirected and diverted to a competitor's website and be at least initially confused in their search for the trademarked goods Sale of Trademarks as Keywords Retailers, Retailers, for example, have purchased keywords so that their banner advertisements are displayed whenever certain trademarked trademarked products are the object of a search

Trademarks Online VeriSign, estimates that 70% of domain names associated with top brands are not registered by the true brand owner, prompting rights holders to defensively register their marks as domain names Trademark owners are also facing new types of infringement, including user-traffic diversion through keywords and meta tags, or unauthorized linking and framing Metatags A 'meta tag' or 'meta data' is a keyword or phrase embedded in a website's HTML (hypertext markup language) code as a means for Internet search engines to identify and categorize the contents of the website

Retailers, Retailers, for example, have purchased keywords so that their banner advertisements are displayed whenever certain trademarked trademarked products are the object of a search In Playboy Enterprises Inc. v. Netscape Communications Corporation, C.D. Calif., No. SA CV 99-320 AHS (Eex) (June 24, 1999), the Court denied preliminary relief stating that the 'Playboy' and 'Playmate' keywords sold by the defendant were used by searchers as common or generic words, not the marks Pop-Up Advertisements Pop-up ads are used as marketing tools designed to capture consumers' attention, and are based on software designed to track users' online activity and then deliver targeted advertising based on their preferences


In American case of Washington Post Newsweek Interactive Co. v. Gator Corp., Civil Action No.02-909-A, July 16, 2002, the Court issued a preliminary injunction that prohibited the defendant from enabling third-party advertising to appear on a user's computer screen while the user was viewing websites owned or affiliated with the plaintiffs, who were online news companies. The Court found that the software violated the plaintiffs' trademarks by causing pop-up advertising to appear in proximity to them.

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IPL- Prof Amador's Presentation

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