Trademark Hand-outs 1. Rights conferred to an owner of a registered mark Sec. 147 a.

. exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar sign or containers for goods or services which are identical or similar in respect of which the trademark is registered where such use would result in likelihood of confusion. b. exclusive right of the owner of a well-known mark 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 the interests of the owner of the registered mark are likely to be damaged by such use. II. REMEDIES TO VIOLATION OF TRADEMARK RIGHTS: 1. Administrative a. Opposition to registration b. Cancellation of Certificate of Registration- Bureau of Legal Affairs c. Administrative complaints for trademark infringement -take note of the prescriptive period of four (4) years under Sec. 1 Rule 2 of the Rules and Regulations on Administrative complaints involving Intellectual Property Violations (IPV) Section 1. Complaint, When and to Whom Filed all administrative complaints for violation of IP Code of IP Laws shall be commenced by filing a verified complaint with the Bureau within four (4) years from the date of commission of violation or if the date be unknown, from the date of discovery of the violation. A complaint is verified by an affidavit that the affiant has read the pleading and that the allegations therein are true and correct of his knowledge and belief. 2. Civil -civil action for infringement of trademark with recovery of damages; Injunction; TRO 3. Criminal (Sec. 170) - trademark infringement; unfair competition; false designation of origin - imprisonment: 2-5 years -fine: Php 50,000 to Php 200,000 A. OPPOSITION TO REGISTRATION Sec. 134 Elements: 1. filed by oppositor any person who believes he would be damaged by the registration of a mark. 2. opposition must be in writing and verified 3. filed after first publication of a trademark sought to be registered in accordance with Sec. 133 4. must be filed within 30 days of first publication B. CANCELLATION OF TRADEMARK CERTIFICATE Sec 151 Note: A certificate of registration is valid for 10 years Elements: a. filed by any person who believes he is or will be damaged by the registration of the mark b. filed via written petition within five (5) years from the date of registration of the mark c. filed with the Bureau of Legal Affairs

GROUNDS FOR SEEKING CANCELLATION Se. 151 (b) c.1 mark becomes the generic name for the goods or services c.2 abandonment c.3 registration was obtained fraudulently c.4 misrepresentation c.5 non use of trademark -failure to use the mark within the Philippines without legitimate reasons -failure to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer (Sec. 151c) - failure to file a Declaration of Actual Use (DAU) within one (1) years from fifth anniversary of the date of registration of mark Sec. 145 C. Infringement of Trademark Sec. 155 Any person who without consent of the owner of the registered mark: 1. Uses in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusions, or to cause mistake, or to deceive or 2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feauture thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive. Mcdonalds Corp vs. L.C. Big Mak: To establish trademark infringement, the following elements must be shown: (1) The validity of plaintiffs mark (2) The plaintiffs ownership of the mark; and (3) The use of the mark or its colorable imitation by the alleged infringer results in likelihood of confusion. Of these, it is the element of likelihood of confusion that is the gravamen of trademark infringement. Remedies against trademark infringement (Sec. 156, 157) a. b. c. d. e. Recovery of damages Double damages where actual intent to mislead the public or defraud the complaint is shown Injunctions Impound sales invoices and other documents Destruction of infringing materials (Sec. 157)

D. Unfair Competition (Sec. 168) - may be availed of even if trademark is not registered - keywords here is deception; passing off ones goods for that of another Sec. 168 (1) Person complained of 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 likely influence purchasers to believe that the goods offered are those of the complaining party;

(2) Person complained of shall have clothed the goods with such appearance for the purpose of deceiving the public and defrauding the complaining party of his legitimate trade. Mcdonalds Corp vs. L.C. Big Mak: The essential elements of an action for unfair competition are: (1) Confusing similarity in the general appearance of the goods; and (2) Intent to deceive the public and defraud a competitor The confusing similarity may or may not result from similarity in the marks but may result from other external factors in the packaging or presentation of the goods. The intent to deceive and defraud may be inferred from the similarity of the appearance of the goods as offered for sale to the public. Actual fraudulent intent need not be shown. E. False Designation of Origin; False Description or Representation (Sec 169)

MAGUAN VS CA 146 SCRA 107 FACTS: Petitioner is doing business under the firm name and style of SWAN MANUFACTURING" while private respondent is likewise doing business under the firm name and style of "SUSANA LUCHAN POWDER PUFF MANUFACTURING. And holder petitioner informed private respondent that the powder puffs the latter is manufacturing and selling to various enterprises particularly those in the cosmetics industry, resemble Identical or substantially Identical powder puffs of which the former is a patent holder under Registration Certification Nos. Extension UM-109, Extension UM-110 and Utility Model No. 1184; petitioner explained such production and sale constitute infringement of said patents and therefore its immediate discontinuance is demanded, otherwise it will be compelled to take judicial action Private respondent replied stating that her products are different and countered that petitioner's patents are void because the utility models applied for were not new and patentable and the person to whom the patents were issued was not the true and actual author nor were her rights derived from such author.Petitioner filed a complaint for damages with injunction and preliminary injunction against private respondent with the then Court of First Instance of Rizal The trial court issued an Order granting the preliminary injunction prayed for by petitioner.Consequently, the corresponding writ was subsequently issued.In challenging these Orders private respondent filed a petition for certiorari with the respondent court but was denied. Hence this petition. ISSUE: (1) Whether or not in an action for infringement the Court a quo had jurisdiction to determine the invalidity of the patents at issue which invalidity was still pending consideration in the patent office. (2) Whether or not the Court a quo committed grave abuse of discretion in the issuance of a writ of preliminary injunction. (3) Whether or not certiorari is the proper remedy. HELD: 1) The first issue has been laid to rest in a number of cases where the Court ruled that "When a patent is so enforced, the questions of invention, novelty or prior use, and each of them, are open to judicial examination." Under the present Patent Law, there is even less reason to doubt that the trial court has jurisdiction to declare the patents in question invalid. A patentee shall have the exclusive right to make, use and sell the patented article or product and the making, using, or selling by any person without the authorization of the patentee constitutes infringement of the patent (Sec. 37, R.A. 165). Any patentee whose rights have been infringed upon may bring an action before the proper CFI now (RTC) and to secure an injunction for the protection of his rights. 2) The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the plaintiff introduces the patent in evidence, and the same is in due form, there is created a prima facie presumption of its correctness and validity. The decision of the Commissioner (now Director) of Patent in granting the patent is presumed to be correct. The burden of going forward with the evidence (burden of evidence) then shifts to the defendant to overcome by competent evidence this legal presumption. The question then in the instant case is whether or not the evidence introduced by private respondent herein is sufficient to overcome said presumption. After a careful review of the evidence consisting of 64 exhibits and oral testimonies of five witnesses presented by private respondents before the Court of First Instance before the Order of preliminary injunction was issued as well as those presented by the petitioner, respondent Court of Appeals was satisfied that there is a prima facie showing of a fair question of invalidity of petitioner's patents on the ground of lack of novelty. As pointed out by said appellate court said evidence appeared not to have been considered

at all by the court a quo for alleged lack of jurisdiction, on the mistaken notion that such question in within the exclusive jurisdiction of the patent office. It has been repeatedly held that an invention must possess the essential elements of novelty , originality and precedence and for the patentee to be entitled to protection, the invention must be new to the world. Accordingly, a single instance of public use of the invention by a patentee for more than two years (now for more than one year only under Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to, the validity of the patent when issued. It will be noted that the validity of petitioner'spatents is in question for want of novelty. Private respondent contends that powder puffs Identical inappearance with that covered by petitioner's patents existed and were publicly known and used as early as 1963 long before petitioner was issued the patents in question. As correctly observed by respondent Court of Appeals, "since sufficient proofs have been introduced in evidence showing a fair question of the invalidity of the patents issued for such models, it is but right that the evidence be looked into, evaluated and determined on the merits so that the matter of whether the patents issued were in fact valid or not may be resolved." All these notwithstanding, the trial court nonetheless issued the writ of preliminary injunction which under the circumstances should be denied. For failure to determine first the validity of the patents before aforesaid issuance of the writ, the trial court failed to satisfy the two requisites necessary if an injunction is to issue, namely: the existence of the right to be protected and the violation of said right. (Buayan Cattle Co.,ught to beUnder the above established principles, it appears obvious that the trial court committed a grave abuse of discretion which makes certiorari the appropriate remedy. As found by respondent Court of Appeals, the injunctive order of the trial court is of so general a tenor that petitioner may be totally barred from the sale of any kind of powder puff. Under the circumstances, respondent appellate court is of the view that ordinary appeal is obviously inadequate.