TRADEMARK

PRESENTATION
TRADEMARK
"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
Visible sign
Non visible

Visible sign Non visible

Words Logos
Three Scents
Letters
Numerals dimensional Sounds
Figures/Pictures Objects Touch
Shapes Combinatios Taste
Colors
What is
Trademark?
A “trademark” is an easily
recognizable symbol, phrase, or
word that denotes a specific
product. It legally differentiates a
product or service from all others of
its kind and recognizes the source
company's ownership of the brand.

A trademark is a type of intellectual

property that helps to protect your
brand by distinguishing it from
competitors. It is used to protect
the name, logo, or slogan associated
with a product or service from being
used by others without permission.
Collective mark
A collective mark is a
trademark that a group
of people use to identify
their products or
services. It's a type of
intellectual property (IP)
tool that can help a
group increase its
reputation and sales.
TRADEMARK vs.
TRADE NAME

TRADEMARK TRADE NAME

Identifies or Identifies or
distinguishes distinguishes
the goods or the business or
services enterprises
Requirements for a
mark to be registered

A visible sign and

Capable of distinguishing
one’s goods and services
from another
HOW RIGHTS ARE
ACQUIURED:

The rights in a mark shall be

acquired through registrations.
Trademarks, service marks, and
other marks of ownership are
registered with the Intellectual
Property Office of the
Philippines (IPOPHL or IPO).
The exclusive rights of a trademark owner include:
Use the trademark: The trademark owner has the right to use
the trademark for their goods or services.
Prevent others from using it: The trademark owner can
prevent others from using the trademark without their
consent.
Take legal action: The trademark owner can sue infringers for
damages.
Benefits of trademark registration
Legal protection: Trademark registration provides legal
protection against counterfeiting and infringement.
Brand recognition: A registered trademark can increase brand
recognition and consumer confidence.
Revenue: The trademark owner can license the trademark to
others for a fee. ex. co-branding
NON-REGISTRABLE
MARKS
Non-registrable
trademarks are marks
that cannot be
registered with the
Intellectual Property
Office of the Philippines
(IPOPHL).
NON-REGISTRABLE
MARKS
Deceptive marks: Marks that are
misleading or confusing
Similar marks: Marks that are identical to
or similar to a previously registered mark
Well-known marks: Marks that are similar
to a well-known mark
Generic marks: Marks that are generic or
descriptive
Immoral marks: Marks that are
scandalous, obscene, or contrary to public
morality
NON-REGISTRABLE
MARKS
Personal marks: Names, signatures, or
portraits of living people without their
consent
Religious marks: Marks that include religious
imagery
Political marks: Marks that include political
imagery
Illegal marks: Marks that include illegal
imagery
DOCTRINE OF SECONDARY
MEANING

The doctrine of secondary meaning

is a legal principle that allows a
word or phrase to be used as a
trademark if it has become
associated with a specific product
or service. This can happen when a
word or phrase is used exclusively
over a long period of time.
 DURATION OF PROTECTION
AND RIGHTS
The right to a trademark in the Philippines is
valid for 10 years from the registration date and
can be renewed for successive 10-year periods.
Renewal
The renewal application must be filed within six
months before the expiration date.
A renewal six months after the expiration date is
allowed, but additional fees may apply.
The registrar of trademarks will send a letter
reminding you of the expiration of your
trademark six months before it expires.
Declaration of Actual Use
A declaration of actual use shall be filed:

1. Within 3 years from the filing date of application;

Extendible for another 6 months; Otherwise, it shall be
deemed an abandonment of the application.
2. AND another DAU within 1 year from 5th anniversary of
the registration of the mark; Otherwise, the mark shall be
removed from the Registration by the Office.
3. And within 1 year from the date of renewal of the
trademark registration.

Effect of non-compliance: Otherwise, the application will be

deemed abandoned or the registration canceled.
TRADEMARK INFRINGEMENT
Trademark infringement is
defined as the unauthorized use
of a trademark or service mark.
This use can be in connection
with goods or services and may
lead to confusion, deception, or
a misunderstanding about the
actual company a product or
service came from.
COLORABLE
IMITATION A colorable imitation is a
mark that is so similar to a
registered trademark that
it could be mistaken for
the original. Colorable
imitations are illegal
because they can deceive
consumers and cause
confusion.
TEST OF
TRADEMARK
INFRINGEMENT DOMINANCY TEST

Compares the visual, aural, and

connotative aspects of the
trademarks
Focuses on the most similar
features of the trademarks
Considers the visual and aural
impressions the trademarks create
in the public mind
Generally favors established
international brands
HOLISTIC TEST

Considers the entire marks,

including their labels and
packaging
Considers the trademarks as they
appear on the products they are
attached to
Generally favors local imitations
TEST OF
TRADEMARK
INFRINGEMENT
The dominancy test and the holistic test are both
used to determine if two trademarks are similar
enough to cause confusion, which could lead to
trademark infringement. The dominancy test
focuses on the most similar features of the
trademarks, while the holistic test considers the
entire marks.
The Philippine Supreme Court uses both the
dominancy test and the holistic test to determine
if trademarks are similar enough to cause
confusion.
 Likelihood of
confusion
Likelihood of confusion is a legal concept that refers to
the possibility that consumers might be confused about
the origin of goods or services. It's used in trademark
law to determine if one trademark is too similar to
another.

What is likelihood of confusion?

Consumers might believe that two brands are

related, even if they're not
Consumers might believe that one company is
sponsoring or approving another company's
products or services
Consumers might buy the wrong product or service
because of similar trademarks
UNFAIR
COMPETITION
Unfair competition is a
business practice that is
illegal or deceptive and harms
consumers or other
businesses. It is a form of
business tort that aims to
prevent unfair practices from
creating an advantage for a
business.
In the Philippines, unfair competition is defined as conduct that
is intended to deceive the public and gain an advantage over
competitors. This can include: &
Misrepresenting goods: Selling goods that look like another
manufacturer's goods, or making false statements about the
goods
Misrepresenting services: Falsely claiming to offer services
from another business
Discrediting a competitor: Making false allegations or
interfering with a competitor's business
Using trade secrets: Discovering a competitor's trade secrets
Bribery: Bribing a competitor's employees
Coercion: Using physical force or undue harassment to sell
goods or services
Other examples of unfair competition include:
Using deceptive packaging, Using deceptive words or devices on the
packaging, Using deceptive marks, and Using deceptive advertising.

The elements of unfair competition are:

A confusing similarity in the appearance of the goods
Intent to deceive the public
Intent to defraud a competitor

TRADEMARK INFRINGEMENT UNFAIR COMPETITION

Registration of the mark is necessary No registration necessary

No fraudulent intent is required Fraudulent intent is necessary

Likelihood of confusion Passing-off element

UNFAIR
COMPETITION
A person found guilty in a
criminal case for trademark
infringement, unfair
competition, and/or false
designation will be imprisoned
for a term of two (2) to five
(5) years, and will be ordered
to pay a fine ranging from Php
50,000 to Php 200,000.
Related Case

DEL MONTE CORPORATION and PHILIPPINE

PACKING CORPORATION, petitioners,
vs.
COURT OF APPEALS and SUNSHINE SAUCE
MANUFACTURING INDUSTRIES,
respondents.

Bito, Misa & Lozada for petitioners.

Reynaldo F. Singson for private respondent.
The Background
The case of Del Monte Corporation v.
Court of Appeals revolves around a
dispute between two well-known food
corporations: Del Monte Corporation and
Sunshine Sauce Company. Del Monte is a
globally recognized brand in the food
industry, famous for its canned fruits,
vegetables, and other food products. On
the other hand, Sunshine Sauce Company
was producing and selling soy sauce
under the brand name “Del Monte.”
The Issue
The primary issue in this case was trademark
infringement. Del Monte Corporation alleged
that Sunshine Sauce Company’s use of the “Del
Monte” brand name for soy sauce created
confusion among consumers. The crucial point
of contention was whether Sunshine Sauce
Company’s use of the “Del Monte” name was
likely to cause confusion or deceive consumers
into believing there was a connection between
their soy sauce and Del Monte Corporation’s
well-established line of products.
Legal Analysis and Ruling
The court’s decision hinged on the likelihood of
confusion. In its ruling, the Supreme Court of the
Philippines emphasized the importance of protecting well-
known trademarks from dilution and misuse. The court
applied the two-prong test: similarity of the trademarks
and likelihood of confusion among consumers.

The court found that the similarity between Del Monte

Corporation’s brand and Sunshine Sauce Company’s
product name created a likelihood of confusion among
consumers. The reputation of Del Monte Corporation’s
trademark and its association with quality food products
played a crucial role in the court’s decision. The use of
the same name for a different food product could mislead
consumers and harm the reputation and goodwill of the
Del Monte brand.
Court Decision
WHEREFORE, the petition is GRANTED. The decision
of the Court of Appeals dated December 24, 1986
and the Resolution dated April 27,1987, are
REVERSED and SET ASIDE and a new judgment is
hereby rendered:
(1) Canceling the private respondent's Certificate of
Register No. SR-6310 and permanently enjoining the
private respondent from using a label similar to that
of the petitioners.
(2) Prohibiting the private respondent from using the
empty bottles of the petitioners as containers for its
own products.
(3) Ordering the private respondent to pay the
petitioners nominal damages in the amount of
Pl,000.00, and the costs of the suit.
SO ORDERED.
COPYRIGHT
PRESENTATION
COPYRIGHT
A right over literary and
artistic works which are
original intellectual
creations in the literary
and artistic domain
protected from the
moment of the creation.
Copyrightable works
Deravative Works
A. Dramatizations, translations,
adaptations, abridgement,
arrangement, and other alterations of
literary or artistic works;

B. Collection of literary, scholarly,

or artistic works and compilations of
data and other materials which are
original by reason of the selection or
coordination or arrangement of their
contents.
Copyrightable works
1. Literary and Artistic Works

a. Books, pamphlets, articles and other writings

b. Lectures, sermons, addresses, dissertations prepared for Oral
delivery, whether or not reduced in writing or other material form
c. Letters (shall belong to the writer)
d. Dramatic, choreographic works
e. Musical compositions
f. Works of Arts
g. Periodicals and Newspapers
h. Works relative to Geography, topography, architecture or science
i. Works of Applied art
j. Works of a Scientific or technical character
k. Photographic works
l. Audiovisual works and cinematographic works
Non-Copyrightable Works
1. Idea, procedure, system, method or operation,
concept, principle, discovery or mere data as such
2. News of the day and other items of press information
3. Any official text of a legislative, administrative or
legal nature, as well as any official translation
thereof
4. Pleadings
5. Decisions of courts and tribunals - this refers to
original decisions and not annotated decisions such
as the SCRA or SCAD of these already fall under the
classification of derivative works, hence
copyrightable
6. Any work of the government of the Philippines
7. TV programs, format of TV programs (Jaoquin v.
Drilon, G.R. No. 108964, Jan 28,1999
8. System of bookkeeping; and
9. Statues.
Ownership of Copyright
Type of Work Owner

Original Author

The co-authors shall be the original owners of the

copyright and in the absence of agreement, their
Joint Authorship rights shall be governed by the rules on co-
ownership.

The person who commissioned the work shall own

the work but the copyright thereto shall remain
Commissioned Work
with the creator, unless there is written stipulation
to the contrary.

Letters Writer
Ownership of Copyright
Type of Work Owner

When an author contributes to a collective work, his

Collective Work right to have his contribution attributed to him is
deemed waived unless he expressly reserves it.

The producer, the author of the scenario, the

Audiovisual Work composer of the music, the film director, and the
author of the work so adopted

Publisher shall be deemed to represents the authors

of articles and other writings published without the
names of the authors or under pseudonyms, unless
Anonymous and Pseudonym Work contrary appears, or the pseudonyms or adopted
name leaves no doubt as to the author’s identity, or
if the author of the anonymous works disclose his
identity.
Fair use of a
copyright work
The fair use of a copyright
work for criticism, comment,
news reporting, teaching
including limited number of
copies for the classroom use,
scholarship, research, and
similar purpose is not an
infringement of copyright.
Rights of Copyright Owners
1. Economic rights - The right to carry out, authorize
or prevent the following acts:

a. Reproduction of the work or substantial portion

thereof
b. Carry-out derivative work
c. First public distribution of the original and each
copy of the work by sale or other forms of transfer of
ownership
d. Rental right
e. Public display of the original or copy of the work;
f. Public performance of the work
g. Other communications to the public
Duration of Economic Rights
Type of Work Terms of Protection

During the life of the author and for fifty years after
General his death. This will likewise apply to posthumous
work.

The economic rights shall be protected during the

Joint Authorship life of the last surviving author and for fifty (50)
years after his death.

The protection shall be for fifty (50) years from

Photographic Works publication of the work and, if unpublished, fifty (50)
years from the making.

The protection shall be for a period of twenty-five

Works of applied art
(25) years from the date of making.
Duration of Economic Rights
Type of Work Owner

Fifty (50) years from the date on which the work was
first lawfully published: Provided, That where, before
the expiration of the said period, the author's identity
is revealed or is no longer in doubt, the general
Anonymous or Pseudonyms Work
terms of protection shall apply, as the case may be:
Provided, further, That such works if not published
before shall be protected for fifty (50) years counted
from the making of the work.

Audio-visual works including those produced by

Fifty (50) years from date of publication and, if
process analogous to photography or any
unpublished, from the date of making.
process for making audio-visual recording

Twenty (20) years from the date the broadcast took

Commissioned Work place. The extended term shall be applied only to old
works with
Rights of Copyright Owners
2. Moral rights - For reasons of professionalism
and propriety, the author has right:

a. To require that the authorship of the works be

attributed to him (attribution right/paternity right)
b. To make any alterations of his work prior to, or
to withhold it from publication
c. To preserve integrity of work, object to any
distortion, mutilation or other modification which
would be prejudicial to his donor or reputation;
and
d. To restrain the use his name with respect to
any work not of his own creation or in a distorted
version of his
Term of Moral
Rights The moral rights of the
author shall last during
the lifetime of the
author and for fifty (50)
years after his death and
shall not be assignable
or subject to license
except the right of
attribution which shall
be in perpetuity.
Copyright
The use or production of
Infringement copyright-protected
material without the
permission of the copyright
holder. This includes
reproducing, distributing,
performing, or displaying
the work. It can also
include creating a
derivative work, such as fan
fiction
Direct
Infringement
refers to the unauthorized use,
replication, or distribution of
copyrighted material, patented
inventions, or trademarked
logos without the owner’s
permission. This is the most
straightforward form of
infringement, as it involves a
direct violation of someone’s
intellectual property rights.
Indirect
Infringement occurs when someone
contributes to or induces
another person to infringe on
someone’s intellectual property
rights. This can happen when a
person provides the means or
tools for someone else to carry
out an act of infringement, or
when they actively encourage
or facilitate the infringement.
Related Case

PACITA I. HABANA, ALICIA L. CINCO AND

JOVITA N. FERNANDO, PETITIONERS,
VS.
FELICIDAD C. ROBLES AND GOODWILL
TRADING CO., INC., RESPONDENTS.
Facts
Pacita Habana et al, are the authors and copyright
owner of College English for Today (CET), Books 1
and 2, and Workbook for College Freshman English
Felicidad Robles and Goodwill Trading Co. author
publisher and distributor seller of another published
work entitled Developing English Proficiency (DEP)
Books 1 and 2
Habana, during revising their published works, she
looked sound various bookstores to check on other
textbooks dealing with the same subject matter.
surprised to see that the book of Rotiles was
strikingly similar to the contents scheme of
presentation, illustrations and illustrative examples
in their own book, CET
Facts
Habana then made demands for damages
against respondents and also demanded
that they cease and desist from further
selling
Robles ignored the demand. Hence, Habana
filed a complaint for infringment.
Habana contends that, without securing
their permission, Robles, littled copied,
plagiarized and/or transposed certain
portions of their book CET
Goodwill's Contention

since it was not privy to the

misrepresentation, plagiarism,
incorporation and reproduction at
the portions of the book of Habana,
that Robles guaranteed Goodwill
that the materials utilized in the
manuscript were her own
Robles Contention
The book DEP is the product of her
independent researches, studies and
experiences, and was not a copy of any
existing valid copyrighted book.
DEP followed the scope and sequence or
syllabus which are common to all English
grammar writers as recommended by the
Association of Philippine Colleges of Arts
and Sciences (APCAS)
TC:
Dismissed the complaint.

CA:
Ruled in favor of Robles and Goodwill
similarity of the allegedly infringed work to
the authors or proprietors copyrighted work
does not of itself establish copyright
infringement, especially if the similarity
results from the fact that both works deal
with the same subject or have the same
common source, as in this case.
Issue
Whether or not Robles and Goodwill are liable
for infringment.
Ruling
A perusal of the records yields several pages of the
book DEP that are similar if not identical with the text
of CET. The court finds that respondent Robles act of
lifting from the book of pelilioners substantial portions
of discussions and examples, and her failure to
acknowledge the same in her book is an infringement
of petitioners' copyrights.
In the case at bar, the least that respondent
Robles could have done was to acknowledge
petitioners Habana et. al as the source of the
portions of DEP The final product of an author's
toil is her book. To allow another to copy the book
without appropriate acknowledgment is injury
enough
Fallo
WHEREFORE, the petition is hereby
GRANTED. The decision and resolution of the
Court of Appeals in CA-GR. CV No. 44053
are SET ASIDE. The case is ordered
remanded to the trial court for further
proceedings to receive evidence of the
parties to ascertain the damages caused and
sustained by petitioners and to rernider
decision in accordance with the evidence
submitted to it

S0 ORDERED.
THANK YOU