Trademark Law Flashcards
What are the three distinct functions of a trademark?
Under the case of Mirpuri v. CA, trademarks are viewed to perform three distinct functions:
(1) They indicate origin or ownership of the articles to which they are attached.
(2) They guarantee that those articles come up to a certain standard of quality.
(3) They advertise the articles they symbolize.
What are the five spectrum of distinctiveness? Explain each one briefly and provide examples.
1.) Generic - Consists of generic or commonly used words. It cannot be protected because it prevents other business owners from using the generic term if registered. Example, Noodles.
2.) Descriptive - Describes the mark or service offered by the business. Generally, mere descriptive terms illustrating the characteristics of your product or service cannot also be protected as a valid trademark. Exception to this is if the term acquires secondary meaning. Example of a descriptive mark is Digital Computers. With regards to secondary meaning, Sharp.
3.) Suggestive Marks - Makes a suggestion about the quality or the kind of product or service the entity deals with. It may be registered as a valid trademark due to the lack of latent depiction unlike descriptive marks. Example, Burger King.
4.) Arbitrary Marks - An arbitrary mark has no connection with the product or service of a business entity. Even though the term already exists and is commonly used, the entity using the mark is not attached to the term. Example, Apple.
5.) Fanciful Marks - Made up terms, are uncommon in usage and have no meaning. Example, Acer.
What is unfair competition? What are its elements?
Unfair competition is the passing off or attempting to pass off upon the public of the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public.
It’s elements are:
(1) Confusing similarity in the general appearance of goods.
(2) Intent to deceive the public and defraud a competitor.
Unfair competition is not hinged on whether a mark is registered or not. It looks at the packaging, marketing, advertisement, and products. If it looks similar, there is unfair competition.
What is the rule with regards to the filing dates of registration of trademark?
A registered mark or a mark with an earlier filling or priority date generally bars the future registration of – and the future acquisition of rights in an identical or a confusingly similar mark, in respect of the same or closely related goods or services, if the resemblance will likely deceive or cause confusion.
How is the rights to a mark acquired?
Through registration made validly in accordance with the provision of the Intellectual Property Code. Exception to this rule is the prior user in good faith.
How is a mark considered cannot be registered?
A mark cannot be registered if it is identical with a registered mark belonging to a different proprietor or a mark with an earlier filling or priority date, in respect of:
1. Same goods or services
2. Closely related goods or services
3. Nearly resembles such a mark as to be likely to deceive or cause confusion
What is trademark infringement? What are its elements?
Trademark infringement the unauthorized use in commerce of a registered trademark or a copy or colorable imitation thereof, which results in the likelihood of confusion among the consuming public.
The elements are the following:
1.) A registered trademark in the Philippines
2.) Plaintiff’s ownership of the said mark,
3.) Use of the trademark or imitation thereof by a third person, which results in likelihood or confusion.
What is a prior user in good faith? What is its implication?
A prior user in good faith is when a person, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise. Provided that his right may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise of business to which the mark is used.
This results in the co-existence of at least two entities – the unregistered prior user in good faith, on one hand; and the first-to-file registrant in good faith on the other – using identical or confusingly similar marks in the market at the same point in time, even if there exists the likelihood of confusion.
What is the doctrine of secondary meaning?
The doctrine of secondary meaning allows the registration of a descriptive mark by reason of the long and exclusive use of the trademark by the enterprise, which associated the trademark as the company’s product.
What is the difference between the dominancy test and the holistic test?
The dominancy test is focused on the similarity of the prevalent or dominant features of the competing marks that might cause confusion, mistake, and deception in the mind of the general public. In this test, duplication or imitation is not necessary. neither it is required that the mark sought to be registered suggests an effort to imitate.
The holistic test on the other hand, necessitates a consideration of the entirety of the marks as applied to the products, including the packaging and labels, in determining visual similarity. It focuses not only on predominant words, but on other features appearing on both labels to determine whether one is confusingly similar to the other.
What is the doctrine of foreign equivalence?
If a term is generic on a foreign country, it is treated to be generic on our jurisdiction. Ginebra v. Tanduay case.
What are the two kinds of confusion? Explain each briefly.
1.) Confusion of goods - Pertains to when a purchaser will be induced to purchase one product in the belief that he was purchasing the other.
2.) Confusion of business - Pertains to when a purchaser, in purchasing a product, will believe that he is buying the product manufactured or produced by a specific company, when in fact it is manufactured or produced by another company.
What are the remedies for intellectual property cases? Explain each briefly.
The remedies that can be availed by the aggrieved party in an intellectual property case are the following:
(1) Injunction
(2) The owner of a registered mark may recover damages from any person who infringes his rights. (Nominal, Exemplary)
(3) Criminal Penalty (For Trademark Infringement)
What is colorable imitation?
Colorable imitation is an essential element of infringement. It refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or trade name with that of the other mark or trade name in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article.
Can different company use the same name for a trademark?
In Mighty Corporation v. E&J Gallo Winery, even though both products use the same name as the trademark, they are not identical goods, and are also not closely related goods. The target markets are also different. Trademark Protection only applies to related goods, and goods that are likely to expand into. But not to goods that are so unrelated.
