Trademarks 2: Infringement, Unfair Competition, Remedies (Intellectual Property Law Philippines)

The video introduces the topic of trademark violations, specifically infringement and unfair competition, and their corresponding remedies under the Intellectual Property Code of the Philippines (Republic Act No. 8293 as amended). It emphasizes that this discussion will be supported by Supreme Court cases, including UFC Philippines versus Barrio Fiesta.

A trademark is defined as a distinctive identifier for goods or services. Ownership is acquired through registration and actual use. Registration provides prima facie evidence of validity and exclusive right to use, but a declaration of actual use is required within three years. Actual use is paramount, evidenced by sales invoices or customer testimonies, not just advertisements. The owner has the exclusive right to prevent third parties from using similar or identical marks that could cause confusion.

Infringement occurs when a registered mark is used in commerce without the owner's consent, leading to confusion. The law outlines two ways infringement can be committed: 1) using a reproduction, counterfeit, copy, or colorable imitation of a registered mark in commerce that causes confusion; and 2) applying such an imitation to labels or packaging for commercial use that causes confusion. Actual sale of infringing goods is not necessary to prove infringement.

To establish trademark infringement, three elements must be shown: validity of the trademark, ownership, and likelihood of confusion caused by the alleged infringer's use of the mark or its colorable imitation. "Colorable imitation" refers to a close resemblance calculated to deceive ordinary purchasers. Two types of confusion are discussed: confusion of goods (purchasing one product believing it's another) and confusion of business (believing two products originate from or are connected to the same source).

Jurisprudence employs two tests for similarity and likelihood of confusion: the Dominancy Test and the Holistic Test. The Dominancy Test focuses on the main or essential features of marks, prioritizing visual and oral impressions, and giving less weight to factors like price or sales outlets. The Holistic Test considers the mark as a whole. The Supreme Court has explicitly rejected the Holistic Test in favor of the Dominancy Test, which is now incorporated into the Intellectual Property Code (Section 155.2).

Several cases are cited to illustrate the Dominancy Test. Examples include "Lion Pass" being confusingly similar to "Salon Pass" due to pronunciation, and "Dynaflex" to "Duraflex" due to pronunciation, appearance, and packaging. The video also discusses cases where registration was allowed due to glaring dissimilarities, like "Al-Akkta" vs. "Alaska" and "Atosin" vs. "Pertusin." The class of purchasers also plays a role, with casual buyers of everyday items being more prone to confusion than discerning buyers of expensive goods.

The 2016 UFC vs. Barrio Fiesta case is highlighted, where the mark "Papa" for lechon sauce was denied registration due to confusion with UFC's "Papa" ketchup. This decision relied on the Dominancy Test, similar to how "stylized letter S" of Inter-Pacific infringed on Sketchers' mark and "Big Mac" by LC Big Mac Burger infringed on McDonald's. The court emphasizes that even if other words are present, the dominant feature can still cause confusion, especially with common household products.

Remedies for infringement include action for damages, impoundment or destruction of infringing goods, double damages (if intent to mislead is proven), injunctions, and criminal or administrative sanctions. To recover damages, it must be shown that infringing acts were committed with knowledge, which is presumed if the mark is displayed with 'registered mark' or '®' symbol, or if the defendant had actual notice. Limitations exist, such as protection for good faith prior users and restricted remedies against innocent printers/publishers.

Unfair competition involves using deception or bad faith to pass off one's goods or services as those of another, especially when the other party has established goodwill. Examples include giving goods the general appearance of another's brand through packaging or devices, or using artifice to falsely imply that one's services originate from another's established reputation. It also covers making false statements to discredit a competitor's goods or services.

The elements of unfair competition are: 1) confusing similarity in the general appearance of goods (not necessarily the marks themselves), and 2) intent to deceive the public and defraud a competitor. The intent can be inferred from the similarity of the appearance as offered for sale. The test is whether the goods are intentionally presented in a way likely to deceive an ordinary purchaser exercising ordinary care. Proof of actual or probable fraud is essential.

The 2014 case of Cow vs. Young illustrates unfair competition, where Cow was found guilty of conspiring to sell counterfeit Greenstone products packaged identically to the original, thereby deceiving the public. The remedies for unfair competition are the same as for infringement. The video then distinguishes infringement from unfair competition: infringement involves unauthorized use of a mark (requires registration, no fraudulent intent needed), while unfair competition involves passing off one's goods as another's (no prior registration required, but fraudulent intent is necessary, and marks can refer to different goods).

Section 169 of the Intellectual Property Code addresses false designation of origin, false description, or misrepresentation. This allows a civil action for damages and injunction against anyone who uses false designations of origin, misleading descriptions, or misrepresentations concerning goods or services, if it's likely to cause confusion or deceive as to affiliation, origin, sponsorship, or approval, or misrepresents nature, characteristics, qualities, or geographic origin in commercial advertising.