2ND LONG EXAM WITH ANSWERS

COPYRIGHT AND IP LAWS- ATTY. NEL EDIZA

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– START READING HERE –
I.
a. What is trademark infringement?
b. Lovely set up a carenderia name “Cooking Ina Mo”. Your neighbor Carlo Angelo sets
up “Cooking ng Ina Mo Rin.” Is there a trademark infringement?
c. What are the elements of an action for unfair competition? [15%]
ANSWERS:
a. The use without consent of the trademark owner of any a) reproduction, b) counterfeit, c)
copy or d) colorable imitation of any registered mark or tradename in connection with the sale,
offering for sale, or advertising of any goods, business or services on or in connection with
which such use is likely to cause confusion or mistake or to deceive purchasers or others as
to the source or origin of such goods or services, or identity of such business; or reproduce,
counterfeit, copy or colorably imitate any such mark or tradename and apply such
reproduction, counterfeit, copy or colorable limitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be used upon or in connection with such
goods, business or services (Esso Standard Eastern v. CA, G.R. No. L‐29971, Aug. 31, 1982).
b. No there is no trademark infringement as Cooking ng Ina mo does not cause/create
confusion. The advertising of the business will not create deception fot purchasers as to the
identity of such business. At the outset, both are different businesses with distinct names.
c. Elements of an action for unfair competition are:
1. Confusing similarity in the general appearance of the goods; and
Note: 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.
2. Intent to deceive the public and defraud a competitor.
Note: The intent to deceive and defraud may be inferred from the similarity in appearance of
the goods as offered for sale to the public. Actual fraudulent intent need not be shown.
(McDonald’s Corporation v. L.C. Big Mak Burger, Inc., et al., G.R. No. 143993, Aug. 18, 2004)
II.
CHEN, Inc., a Taiwanese company, is a manufacturer of tires with the mark Light Year.
From 2009 to 2014, Clark Enterprises, a Philippine-registered corporation, imported
tires from CHEN, Inc. under several sales contracts and sold them herein the
Philippines. In 2015, CHEN, Inc. filed a trademark application with the Intellectual
Property Office (IPO) for the mark Light Year to be used for tires. The IPO issued CHEN,
Inc. a certificate of registration (COR) for said mark. Clark Enterprises sought the
cancellation of the COR and claimed it had a better right to register the mark Light Year.
CHEN, Inc. asserted that it was the owner of the mark and Clark Enterprises was a mere
distributor. Clark Enterprises argued that there was no evidence on record that the tires
it imported from CHEN, Inc. bore the mark Light Year and Clark Enterprises was able to
prove that it was the first to use the mark here in the Philippines. Decide the case. [10%]

ANSWER: While RA 8293 removed the previous requirement of proof of actual use prior to
the filing of an application for registration of a mark, proof of prior and continuous use is

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necessary to establish ownership of trademark. Such ownership of the trademark confers the
right to register the trademark. Since Chen owns the trademark as evidenced by its actual and
continuous use prior to the Clark Enterprises, then it is the one entitled to the registration of
the trademark. The fact that Clark was the first one to use the mark here in the Philippines will
not matter. Chen’s prior actual use of the trademark even in another country bars Clark from
applying for the registration of the same trademark. Also, a mere distributor does not own the
trademark to the goods he distributes and his right over the trademark cannot prevail over the
owner (E.Y Industrial Sales v. Shien Dar Electricity and Machinery, GR no. 184850, Oct. 20,
2010; Ecole de Cuisine Manille v. Renaud Cointreau, GR 185830, June 5, 2013).
III.

The NBI found that SG Inc. is engaged in the reproduction and distribution of
counterfeit "playstation games" and thus applied with the Manila RTC warrants to
search respondent's premises in Cavite. RTC granted such warrants and thus, the NBI
served the search warrants on the subject premises. SG Inc. questioned the validity of
the warrants due to wrong venue since the RTC of Manila had no jurisdiction to issue
a search warrant enforceable in Cavite. Is the contention of SG Inc. correct? [5%]

A: No, unfair competition is a transitory or continuing offense under Section 168 of Republic
Act No. 8293. As such, petitioner may apply for a search warrant in any court where any
element of the alleged offense was committed, including any of the courts within Metro Manila
and may be validly enforced in Cavite. (Sony Computer Entertainment Inc. v. Supergreen Inc.
G.R. No. 161823, Mar. 22, 2007)

III.
Philippine Refining Co. (PRC) first used the trademark “CAMIA” on its products consisting
of vegetable and animal fats such as lard, butter and cooking oil. It caused its registration with
the Philippine Patent Office in 1949.

In the 1960s, Ng Sam, herein respondent, filed an application with the Philippine Patent Office
for registration of the identical trademark “CAMIA” for his product ham. An opposition was
filed by the PRC alleging that the use of the trademark “CAMIA” by the respondent would
cause confusion or mistake or would deceive purchasers. The Director of Patent rendered a
decision allowing the registration of the trademark in question in favor of the respondent Ng
Sam.

Was the Director of Patent correct?Answer with legal basis. [5%]

ANSWER:

Yes, DOP was correct in allowing the registration of the trademark. The mere fact that one
person has adopted and used a trademark on his goods does not prevent the adoption and
use of the same trademark by others on articles of a different description. The registration of
a trademark which so resembles another already registered or in use should be denied, where
to allow such registration could likely result ina confusion, mistake or deception to the
consumers.

Where no confusion is likely to arise, as in this case, registration of a similar or even identical
mark may be allowed. The trademark “CAMIA” is used by the petitioner on wide range of
products such as lard, butter, cooking oil, soaps, etc. Respondent desires to use the same

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on his product ham. Although such products belong to the same category, this alone
cannot serve as the decisive factor in the resolution of whether or not they are related
goods. Emphasis should be on the similarity of the products involved and not on the
arbitrary classification or general description of their properties or characteristics.
PRC’s products are ordinary day to day household items whereas ham is not
necessarily so. Thus, the goods of the parties are not of a character which purchasers would
be likely to attribute to a common origin. The Court further holds that the business of the
parties are non-competitive and their products so unrelated that the use of identical
trademarks is not likely to give rise to confusion, much less cause damage to petitioner.
[PHILIPPINE REFINING CO., INC VS. NG SAM and THE DIRECTOR OF PATENTS G.R.
No. L-26676. July 30, 1982]

IV.
Acoje Mining Co., filed an application for registration of the trademark Lotus to be used on
its soy sauce product. On the other hand, Philippine Refining Co., (PRC), another domestic
corporation, was also using the same trademark Lotus on its edible oil. The Chief of the
trademark examiner rejected the application of Acoje due to its confusing similarity with that
of the trademark already registered in favour of the PRC. The Director of Patents upheld the
view of the trademark examiner on the ground that while there is a difference between soy
sauce and edible oil and there were dissimilarities in the trademarks, still the close relationship
of the products, soy sauce and edible oil, is such that purchasers would be misled into
believing that they have a common source. Hence, this present petition for review.
Can Acoje Mining Co., may register for the purpose of advertising its product, soy
sauce, the trademark Lotus? [5%]
ANSWER:
Yes. The determinative factor in a contest involving registration of trademark is not whether
the challenging mark would actually cause confusion or deception of the purchasers but
whether the use of the mark would likely cause confusion or mistake on the part of the buying
public. The law does not require that the competing trademarks must be so identical as
to produce actual error or mistake; it would be sufficient, for purposes of the law, that
the similarity between the two labels, is such that there is a possibility or likelihood of
the purchaser of the older brand mistaking the newer brand for it.

In the present case, there is quite difference between soy sauce and edible oil. If one is in the
market for the former, he is not likely to purchase the latter just because of the trademark
Lotus. There is no denying that the possibility of confusion is remote considering the difference
in the type used, the coloring, the petitioner’s trade markbeing in yellow and red while that of
the PRC being in green and yellow, and the much smaller size of petitioner’s trademark
[ACOJE MINING CO., INC., VS. THE DIRECTOR OF PATENTS,G.R. No. L-28744 April 29,
1971]
.
V.
Petitioner's claims: "Barbizon" products have been sold in the Philippines since 1970.
Petitioner developed this market by working long hours and spending considerable sums of
money on advertisements and promotion of the trademark and its products. Almost 30 years
later, private respondent, a foreign corporation usurps the trademark and invades petitioner's
market. Justice and fairness dictate that private respondent be prevented from appropriating

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what is not its own. Legally, at the same time, private respondent is barred from questioning
petitioner's ownership of the trademark because of res judicata in view of IPC No. 686.
Respondent's claims: The Opposer's goods bearing the trademark BARBIZON have been
used in many countries, including the Philippines, for at least 40 years and has enjoyed
international reputation and good will for their quality. Their trademarks qualify as well-known
trademarks entitled to protection under Article 6bis of the Convention of Paris for the
Protection of Industrial Property.
Can a treaty affords protection to a foreign corporation against a Philippine applicant
for the registration of a similar trademark?[10%]

ASNWER:
Yes. The World Trade Organization (WTO) is a common institutional framework for the
conduct of trade relations among its members in matters related to the multilateral and
plurilateral trade agreements annexed to the WTO Agreement, one of which is the
Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs.

Members to this Agreement have agreed to adhere to minimum standards of protection set by
several Conventions, including the Paris Convention. The Philippines and the US have
acceded to the WTO Agreement. Conformably, the State must reaffirm its commitment to the
global community and take part in evolving a new international economic order at the dawn of
the new millennium. The petition is denied [PRIBHDAS J. MIRPURI vs. COURT OF
APPEALS, DIRECTOR OF PATENTS and the BARBIZON CORPORATION G.R.NO.
114508, November 19, 1999]

VI.
Jinggy went to Kluwer University (KU) in Germany for his doctorate degree (Ph.D.). He
completed his degree with the highest honors in the shortest time. When he came back,
he decided to set-up his own graduate school in his hometown in Zamboanga. After
seeking free legal advice from his high-flying lawyer-friends, he learned that the
Philippines follows the territoriality principle in trademark law, i.e., trademark rights are
acquired through valid registration in accordance with the law. Forthwith, Jinggy
named his school the Kluwer Graduate School of Business of Mindanao and
immediately secured registration with the Bureau of Trademarks. KU did not like the
unauthorized use of its name by its top alumnus no less. KU sought your help. What
advice can you give KU? [10%]
ANSWER: I will advice KU to seek for the cancellation of the Kluwer Graduate School of
Business of Mindanao with the Bureau of Trademarks. Jinggy’s registration of the mark
“Kluwer” should not have been allowed because the law prohibits the registration of the mark
“which may disparage or falsely suggests a connection with persons, living or dead,
institutions, beliefs”. Moreover, the Philippines is a signatory to the Paris Convention for the
Protection of Intellectual Property (Paris Convention), it is obligated to assure nationals of
countries of the Paris Convention that they are afforded an effective protection against
violation of their intellectual property rights in the Philippines. Thus, under the Philippine law,
a trade name of a national of a State that is a party to the Paris Convention, whether or not
the trade name forms part of a trademark, is protected “without the obligation of filing or
registration”.
VII.
Define the following [2% EACH]:

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A) TRADEMARK - 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. 121.1)
B) SERVICEMARK - A service mark is similar to a trademark but it is used in the sale or
advertising of services to identify and distinguish the services of one company from
those of others.
C) CONFUSION OF GOODS – a purchaser purchased a product in the belief that he/ she
is purchasing that of the other.
D) CONFUSION OF BUSINESS – exists when though the goods or services of the
parties are different, the defendant’s product is such as might reasonably be assumed
to originate with the plaintiff, and the public would then be deceived either into that
belief or into the belief that there is connection between the plaintiff and defendant
when in fact such does not exist. (Sterling Products International, Incorporated v.
Farbenfabriken Bayer Aktiengesellschaft, et al,) EN BANC, [G.R. No. L-19906. April 30,
1969.]
E) DOMINANCY TEST – usually applied where the marks involved are composite marks,
or consists of two or more features. The test of dominancy is now explicitly
incorporated into law in Section 155.1 of the Intellectual Property Code which defines
infringement as the “colorable imitation of a registered mark xxx or a dominant feature
thereof. (The particular feature that stands out is being compared with the mark of the
junior user). This was used in the following cases : 2 Mc Donalds cases, Asia Brewery
vs. CA, SMC, EN BANC, [G.R. No. 103543. July 5, 1993.] Societe Des Produits Nestlé,
S.A. v. Court of Appeals, [G.R. No. 112012, 4 April 2001]
F) HOLISTIC TEST – this test is applied in the case of Del Monte Corp., et al vs. Court
of Appeals and Sunshine Sauce Manufacturing Industries[G.R. No. 78325. January 25,
1990.]when it held that :
xxxxxxx to determine whether a trademark has been infringed, we must consider the
mark as a whole and not as dissected. If the buyer is deceived, it is attributable to the
marks as a totality, not usually to any part of it. The court therefore should be guided
by its first impression, for a buyer acts quickly and is governed by a casual glance,
xxxxxxx
This test was rejected in the case of Societe Des Produits Nestlé, S.A. v. Court of
Appeals, [G.R. No. 112012, 4 April 2001]
VIII.
What is the distinction between trademark infringement and unfair competition? [10%]
ANSWER: The distinctions between infringement and unfair competition are the following:
1. Infringement of trademark is the unauthorized use of a trademark, whereas unfair
competition is the passing off of one's goods as those of another.
2. In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition
fraudulent intent is essential.

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3. In infringement of trademark the prior registration of the trademark is a prerequisite to the
action, whereas in unfair competition registration is not necessary (Del Monte Corp. vs. CA,
G.R. No. L-78325, January 25, 1990).
IX.
SMB sued ABI for trademark infringement and unfair competition because the Pale bottle
looks like the Beer na Beer steinie bottle.

Rule with legal basis [10%].

ANSWER:

Denied. There is hardly any dispute that the

dominant feature of SMC's trademark is the
name of the product: SAN MIGUEL PALE
PILSEN, written in white Gothic letters with
elaborate serifs at the beginning and end of
the letters "S" and "M" on an amber
background across the upper portion of the
rectangular design.

On the other hand, the dominant feature of

ABI's trademark is the name: BEER PALE PILSEN, with the word "Beer" written in large
amber letters, larger than any of the letters found in the SMC label.
Neither in sound, spelling or appearance can BEER PALE PILSEN be said to be
confusingly similar to SAN MIGUEL PALE PILSEN. No one who purchases BEER PALE
PILSEN can possibly be deceived that it is SAN MIGUEL PALE PILSEN. No evidence
whatsoever was presented by SMC proving otherwise.

The fact that the words pale pilsen are part of ABI's trademark does not constitute an
infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for "pale pilsen" are
generic words descriptive of the color ("pale"), of a type of beer ("pilsen"), which is a
light bohemian beer with a strong hops flavor that originated in the City of Pilsen in
Czechoslovakia and became famous in the Middle Ages. "Pilsen" is a "primarily
geographically descriptive word," (sa Pilsen, Bohemia, Czech Republic)

The use of ABI of the steinie bottle, similar but not identical to the SAN MIGUEL PALE PILSEN
bottle, is not unlawful. Moreover, the shape was never registered as a trademark.
With regard to the white label of both beer bottles, ABI explained that it used the color white
for its label because white presents the strongest contrast to the amber color of ABI's
bottle; it is also the most economical to use on labels, and the easiest to "bake" in the
furnace. No one can have a monopoly of the color amber for bottles, nor of white for
labels, nor of the rectangular shape which is the usual configuration of labels. Needless
to say, the shape of the bottle and of the label is unimportant. What is all important is the
name of the product written on the label of the bottle for that is how one beer may be
distinguished from the others.

The test of fraudulent simulation is to be found in the likelihood of the deception of

persons in some measure acquainted with an established design and desirous of
purchasing the commodity with which that design has been associated. The test is not
found in the deception, or possibility of the deception, of the person who knows nothing

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about the design which has been counterfeited, and who must be indifferent as between
that and the other.

The record does not bear out SMC's apprehension that BEER PALE PILSEN is being passed
off as SAN MIGUEL PALE PILSEN. This is unlikely to happen for consumers or buyers
of beer generally order their beer by brand. As pointed out by ABI's counsel, in
supermarkets and tiendas, beer is ordered by brand, and the customer surrenders his
empty replacement bottles or pays a deposit to guarantee the return of the empties. If
his empties are SAN MIGUEL PALE PILSEN, he will get SAN MIGUEL PALE PILSEN as
replacement.

In sari-sari stores, beer is also ordered from the tindera by brand. The same is true in
restaurants, pubs and beer gardens — beer is ordered from the waiters by brand. (Op. cit.
page 50.) Considering further that SAN MIGUEL PALE PILSEN has virtually monopolized the
domestic beer market for the past hundred years, those who have been drinking

No other beer but SAN MIGUEL PALE PILSEN these many years certainly know their beer
too well to be deceived by a newcomer in the market. If they gravitate to ABI's cheaper
beer, it will not be because they are confused or deceived, but because they find the
competing product to their taste. [Re: Asia Brewery Inc. vs CA and San Miguel
Corporation]

X.
S Development Corporation sued Shangrila Corporation for using the “S” logo and the
tradename “Shangrila.” The former claims that it was the first to register the logo and
the tradename in the Philippines and that it had been using the same in its restaurant
business.
Shangrila Corporation counters that it is an affiliate of an international organization
which has been using such logo and tradename “Shangrila” for over 20 years.
However, Shangrila Corporation registered the tradename and logo in the Philippines
only after the suit was filed.

a. Which of the two corporations has a better right to use the logo and the
tradename? Explain.
b. How does the international affiliation of Shangrila Corporation affect the outcome
of the dispute? Explain. [10%]

ANSWER:

a. S Corporation. Sec. 122 of the IPC provides that the rights in a trademark are acquired
through valid registration. Actual prior use in commerce in the Philippines has been
abolished as a condition for the registration of a trademark (Record of the Senate, Vol. II,
No. 29, 8 Oct.1996; Journal of the House of Representatives, No. 35. 12 Nov. 1996, 34).
b. Shangrila’s international affiliation shall result in a decision favorable to it. The Paris
Convention mandates that protection should be afforded to internationally known marks
as signatory to the Paris Convention, without regard as to whether the foreign corporation
is registered, licensed or doing business in the Philippines.

Shangrila’s separate personalities from their mother corporation cannot be an obstacle in

the enforcement of their rights as part of the Kuok Group of Companies and as official

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repository, manager and operator of the subject mark and logo. Besides, R.A. No. 166 did
not require the party seeking relief to be the owner of the mark but "any person who
believes that he is or will be damaged by the registration of a mark or trade name."
(Shangri-la International Hotel Management v. Developers Group of Companies, Inc. G.R.
No. 159938).
- NOTHING FOLLOWS -

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