RESOURCES - DECISIONS RENDERED BY DIRECTOR GENERAL FRANCISCO

Subject Index

ABANDONMENT


In order that there be an abandonment, the disuse must be permanent and not ephemeral, must be intentional and voluntary, and not involuntary or even compulsory. There must be a thorough going discontinuance of any trademark use of the mark in question.  An uninterrupted period of two years will be deemed as proof of intention of the applicant to abandon the registration. (M.G. Industries Corporation vs. Fuji Zipper Mfg., Inc., p. 23)




APPELLATE JURISDICTION

1.

Only decisions or final orders of a Bureau Director are appealable to the Director General.  (Kodiak Group, Inc. vs. Rufino Tan, p. 384)

2.

Cases brought before the Office of the Director General by appeal must be perfected in the form and manner prescribed by the existing rules and regulations.  The notice of appeal is not the proper mode of appeal required by the IPO Uniform Rules on Appeal.  (Fishwealth Canning Corporation vs. Henry N. Kawson and the Bureau of Trademarks, Intellectual Property Office, p. 554)





APPLICATION FOR REGISTRATION

1.

The right to register trademark is based on ownership.  When the applicant is not the owner of the trademark being applied for, he has no right to apply for the registration of the same. (Estate of Crisanta Y. Gabriel vs. Lorenzo B. Almoradie, p. 91)

2.

An application for the registration of trademark undergoes a quasi-judicial procedure.  It is prosecuted ex parte by the applicant, that is, the proceedings are like a lawsuit in which there is a plaintiff (the applicant) but no defendant, the court itself (the Examiner) acting as the adverse party.  The IPO represented by the Examiner, is not supposed to look after the interest of an applicant.  The law imposes that duty upon the applicant himself.  The Examiner is charged with the protection of the interests of the public and hence must be vigilant to see that no registration issues for a mark contrary to law and the Regulations. (Chan Kok Bin vs. Le Saunda Licensing Ltd., p. 119)

3.

An application for the grant of patent undergoes a quasi-judicial procedure consisting of formality, search and substantive examinations.  During the formality examination, the examiner advises the applicant on the formal defects or deficiencies of his application and invites the latter to make his application conform to formal requirements. This is to enable any person skilled in the art to understand and perform the claimed invention so that such invention may contribute to the growth and development of the technology. Thereafter, the prior art search is performed wherein the examiner searches all available patent documents and other publications in whatever form and format to which the application may relate, or which may contain prior art. The objective is to ensure that the claimed invention applied for is new and does not form part of a prior art, i.e., it has not theretofore been subject of any patent application, registration or publication. Finally, the substantive examination is conducted to determine the full compliance of the application with all the requirements of patentability, namely, that the claimed invention [1] is new, [2] is capable of industrial application, and [3] involves an inventive step. (Hoo-Kyun Choi, Et Al Merck & Co., Inc., vs. Hon. Director Epifanio M. Evasco, Director of Patents, p. 466)





CANCELLATION


1.

While a registration may be cancelled because of failure to file on time the required affidavit of use, it does not follow that the registrant has lost, ipso facto, its prior right over the mark. Hence, cancellation due to non-filing on time of affidavit of use is not fatal to the right to ownership over the mark when there is no clear intention or fact of abandonment. (M.G. Industries Corporation vs. Fuji Zipper Mfg., Inc. p. 23)

2.

A corporation is entitled to the cancellation of a mark, which is confusingly similar to its corporate name. (Estate of Crisanta Y. Gabriel vs. Lorenzo B. Almoradie, p. 91)

3.

The Bureau of Legal Affairs may cancel the patent or trademark registration where it finds evidence independent of the petitioner’s submission. (Mclaren International Ltd. vs. Empresas La Moderna S.A. De C.V., p. 205)





CERTIFICATE OF REGISTRATION


1.

A certificate of trademark registration serves as a prima facie evidence of the validity of the registration and in the absence of evidence to the contrary, the validity of the certificate of registration must be upheld as with the ownership of the mark and exclusive right to use it. (Chan Kok Bin Vs. Le Saunda Licensing Ltd., p. 119)

2.

Trademark protection extends only to goods, business or services related to those specified in the certificate. (Il Ponte Finanziaria S.P.A.. vs. Morris T. Lim, p. 372)

3.

The credence placed on a Certificate of Registration of a trademark or its weight as evidence of validity, ownership and exclusive use, is qualified.  It is not conclusive but can and may be rebutted by controverting evidence. (Farling Industrial Co. Ltd., vs. Cymar International, Inc., p. 360)

4.

A certificate of registration of a mark confer upon its owner the exclusive rights to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations stated therein.  (Southern Philippines Packaging Corp. And Rotex Industries, Inc. vs. Rotex, Inc., p. 443)





COMPULSORY LICENSING


1.

The legislative intent in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the quantity of the patented product, but also to prevent the growth of monopolies. (United Laboratories, Inc. vs. Kazayuki Nakagawa, et al., p. 53)

2.

The grant of patent is a mere privilege bestowed upon by the State and is in no way, an absolute right. Because it is a privilege, it is regulated by the government and subject to such conditions as the law and public policy may dictate.  (United Laboratories, Inc. vs. Kazayuki Nakagawa, et al., p. 53)





DESCRIPTIVE MARK


1.

To find out if a mark is descriptive, there must be a determination whether or not the mark has a descriptive meaning in the language of the country wherein the protection is sought. The descriptive meaning of the mark should be clear, direct and unequivocal in the eyes of the relevant public. (Clintock Limited vs. Destileria Limtuaco & Co., Inc., p. 138)

2.

A term is descriptive, if, as understood in its normal and natural sense, it forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is, or if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods, or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination (Peerless Products Mfg. Corp. vs. Procter and Gamble Phils. Inc., p. 264)





GENERIC MARK


The mark of a product is said to be generic when it tells the buyer what the product is or when the same is the actual name of the product. (Clintock Limited vs. Destileria Limtuaco & Co., Inc., p. 138)





INFRINGEMENT AND UNFAIR COMPETITION


1.

Appropriation by another of the dominant part of a corporate name is an infringement.  (Estate of Crisanta Y. Gabriel vs. Lorenzo B. Almoradie, p. 91)

2.

To determine whether a trademark has been infringed, we must consider the mark as a whole and not as dissected.  (Societe Des Produits Nestle S.A. vs. Twin Oaks Food Corporation, p. 153)

3.

There is infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity. (Max Mara Fashion Group SRL. vs. Perfecto Tiu, p. 319)

4.

Unfair competition means the act of any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of one having established such goodwill, or who shall commit any acts calculated to produce said result.  In unfair competition, fraudulent intent is essential. (San Francisco Coffee & Roastery, Inc., vs. Coffee Partners, Inc., p. 423)

5.

The law on trademark and tradename is based on the principle of business integrity and common justice.  This law, both in letter and spirit, is laid upon the premise that, while it encourages fair trade in every way and aims to foster, and not to hamper, competition, no one, especially a trader, is justified in damaging or jeopardizing another’s business by fraud, deceit, trickery or unfair methods of any sort. (San Francisco Coffee & Roastery, Inc., vs. Coffee Partners, Inc., p. 423)

6.

Trademark infringement is a form of unfair competition. (Oakley, Inc.  vs. Willie A. Lao, p. 407)

7.

A boundless choice of words, phrases, symbols are available to one who wishes a trademark sufficient unto itself to distinguish his product from those of others. When, however, there is no reasonable explanation for the defendant’s choice of such a mark though the field of his selection was so broad, the inference is inevitable that it was chosen deliberately to deceive. (The Limited Store, Inc. vs. X-Tasy Garments, Inc., p. 539)





LACHES


The equitable principles of laches and estoppel, and acquiescence may be considered and applied in opposition proceedings and in all other inter partes proceedings. (Petition Opposing the Registration of Trademark PILATES,  p. 38)





LIKELIHOOD OF CONFUSION


1.

Proof of actual confusion need not be shown.  It suffices that confusion is probably likely to occur. (Estate of Crisanta Y. Gabriel vs. Lorenzo B. Almoradie, p. 91)

2.

In the history of trademark cases in the Philippines, particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another, no set rules can be deduced.  Each case must be decided on its own merits.  The crucial determining factor is whether or not a trademark meets the criterion of distinctiveness. (Fruit of the Loom, Inc. vs. Vicenta Villanueva, p. 190)

3.

In determining whether marks are confusingly or deceptively similar or whether colorable imitation exists, jurisprudence had prescribed two kinds of tests – the Dominancy Test and the Holistic Test. The test of dominancy focuses on the similarity of the prevalent features of the competing trademarks, which might cause confusion or deception and thus constitute infringement. On the other hand, the holistic test requires that the entirety of the marks in question considered in determining confusing similarity.  The aforementioned tests are not to supersede each other but that they apply to a specific case in point. (Fruit of the Loom, Inc. vs. Vicenta Villanueva, p. 190)

4.

Whether the mark or label of one competitor resembles another is to be determined by an inspection of the points of difference and resemblance, as a whole, and not merely the points of resemblance.  (L.A. Gear, Inc. vs. Benito S. Cua, p. 245)

5.

Whether or not a trademark causes confusion and is likely to deceive the public is a question of fact which is to be resolved by applying the test of dominancy, meaning, if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result, then infringement takes place; that duplication or imitation is not necessary, a similarity in the dominant features of the trademarks would be sufficient. (Max Mara Fashion Group SRL. vs. Perfecto Tiu, p. 319)

6.

The likelihood of confusion of goods or business is a relative concept, to be determined only according to the particular, and sometimes peculiar, circumstances of each case and the complexities attendant to an accurate assessment of likelihood of such confusion requires that the entire panoply of elements constituting the relevant factual landscape be comprehensively examined. (San Francisco Coffee & Roastery, Inc., vs. Coffee Partners, Inc., p. 423)





NATURE OF PATENT EXAMINATION


An application undergoes a quasi-judicial procedure (Rule 1300, Invention Regulations) consisting of formality examination, search and substantive examination. During the formality examination, the examiner advises the applicant on the formal defects or deficiencies of his application and invites the applicant to make his application conform to the formal requirements. The main purpose of this procedure is to enable any person skilled in the art to understand and perform the claimed invention. In this way, an invention may contribute to the growth and development of the technology. Once the formal requirements are complied with, the prior art search is performed. During this stage, the examiner searches all available patent documents and other publications in whatever form and format to which the applicationmay relate or which may contain the prior art (Sections 23 and 24, IP Code; taken from Section 9, R.A. No. 165) The main objective of this procedure is to ensure that the claimed invention applied for is new and does not form part of the prior art i.e., it has not therefore been the subject of any patent application or registration or any other publication. The final stage of the patenting process is the substantive examination. During this stage, the application is examined to determine its full compliance with all the requirements of patentability, namely, that the claimed invention: (1) is new, (2) is industrially applicable, and (3) involves inventive step. The main objective of this procedure is to ensure that only strong patents are granted. Failure to meet any one of these three criteria results in the refusal or rejection of the application.

This obligation to grant only strong patents must necessarily be carried out by the IP Office not only on account of our laws but in order to give our patent holders an opportunity to compete in trade and commerce without fear that their patents can be cancelled in any infringement suit which they may file against those who may be minded to use their patents without authorization. On fear of belaboring the point, the IP Office must carry out this obligation to the best of its ability and available resources so that patents registered in the Philippines have the chance to be granted in, and earn the respect of, other territories. This obligation is likewise part of our country’s commitments in various multilateral and bilateral obligations. (Francisco F. Villasenor Ex-Parte Case No. BOP 2000,  “Coconut Tree Climbing Device”, p. 1)





NEW TRIAL


1.

A motion for new trial is a remedy that is not provided in the IPO Uniform Rules on Appeal. (Chan Kok Bin Vs. Le Saunda Licensing Ltd.,     p. 119)

2.

While the IPO Uniform Rules on Appeal proscribes the filing of a motion for reconsideration of the decision or order of the Director General, said rules are silent, however, with respect to motions for new trial.  (Mattel, Inc. vs. Jimmy A. Uy, p. 386)





OPPOSITION


1.

The reglementary four months period from the date of release for circulation of the IPO Gazette for the filing of Verified Notice of Opposition is mandatory and jurisdictional. (Anheuser-Busch Co., Inc. vs. John Labatt Limited, p. 179)

2.

The Regulations on Inter Partes Proceedings is explicit that if the petitioner/opposer does not appear at the time and place designated in the Notice of Pre-trial Conference or Notice of Hearing or in a subsequent order, or failed to prosecute his case for an unreasonable length of time, or fail to comply with these Regulations or any order of the Bureau, the petition or notice of opposition, as the case may be, shall be dismissed for failure to prosecute and judgment rendered in favor of the respondent.  (Anheuser-Busch Co., Inc. vs. John Labatt Limited, p. 179)





PETITION FOR REVIVAL


The Rules and Regulations on Inventions (patent applications) are intended to streamline the administrative procedures in granting patents.  The reglementary periods fixed in the said Rules and Regulations are essential for the effective and orderly administration and disposition of patent applications.  The failures to keep deadlines and periods because of inexcusable negligence needlessly multiply paper work and consume valuable time and attention.  The party, causing and guilty of such negligence, must bear the consequences. (Carini, Duncia et al., and E. I. Dupont De Nemours and Company vs. Director of the Bureau of Patents, p. 350)





PRESUMPTION OF REGULARITY


The determination made by the examiner and the Bureau of Trademarks regarding the registrability of the mark PILATES, enjoys the protective mantle of a presumption of regularity.  Precisely, when the law imposes certain duties and obligations it will be presumed that such duties and obligations have been performed unless it is expressly made to appear in the contrary.  (Petition Opposing the Registration of Trademark PILATES, p. 38)      





PRIORITY RIGHT (TRADEMARK)


The recognition and benefit of a priority right would arise only if the applicant files an application in the Philippines within six (6) months from the filing date of the earliest foreign application. (Taiwan Kolin Co., Ltd. vs. Kolin Electronics Co., Inc., p. 486)





RELATED GOODS


1.

Chocolates and confectionery products are goods not falling within the zone of potential or natural and logical expansion of the Appellant’s business covering dolls and related accessories. (Mattel, Inc., vs. Jimmy A. Uy, p. 297)

2.

Whether trademark infringement exists depends for the most part upon whether or not the goods are so related that the public may be, or is actually, deceived and misled that these came from the same maker or manufacturer. (Hunt-Wesson, Inc., vs. Arabela V. Arcinue, p. 277)

3.

Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores. (Oakley, Inc.  vs. Willie A. Lao, p. 407)

4.

Belonging to the same class of goods 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. (Southern Philippines Packaging Corp. and Rotex Industries, Inc. vs. Rotex, Inc., p. 443)

5.

Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores. Thus, biscuits were held related to milk because they are both food products. Soap and perfume, lipstick and nail polish are similarly related because they are common household items nowadays.  (The Limited Store, Inc. vs. X-Tasy Garments, Inc., p. 539)





RIGHT OF PATENTEE


When he requests the State for the grant of a patent, an applicant makes a full disclosure of the claimed invention. In exchange, when the State decides to grant a patent, the State gives and guarantees to the patentee a bundle of rights to the exclusion of all other parties within the territory during the term of the patent. Under R.A. 165, these exclusive rights are the right to make, use and sell the patented machine, article or product, and to use the patented process for the purpose of industry or commerce; and, such making, using or selling by any person without the authorization of the patentee constitutes infringement of the patent (Section 37, R.A. 165) The IP Code grants these rights plus the right to offer for sale or import the patented product, and to offer for sale, import, or deal in any product obtained directly or indirectly from the patented process (Section 71, IP Code) Francisco F. Villasenor Ex-Parte Case No. BOP 2000,  “Coconut Tree Climbing Device”, p. 1)





TRADEMARK


1.

The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product. (Estate of Crisanta Y. Gabriel vs. Lorenzo B. Almoradie, p. 91)

2.

The ownership of a trademark or tradename is a property right, which the owner is entitled to protect since there is damage to him from confusion or reputation or goodwill in the mind of the public as well as from confusion of goods.  (Estate of Crisanta Y. Gabriel vs. Lorenzo B. Almoradie, p. 91)

3.

Modern authorities on trademark law also view trademarks as performing 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; and (3) they advertise the articles they symbolize.  (Peerless Products Mfg. Corp. vs. Procter And Gamble Phils. Inc., p. 264)

4.

The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered when such use would result in a likelihood of confusion.  In case of the use, of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. (Southern  Philippines Packaging Corp. and Rotex Industries, Inc. vs. Rotex, Inc., p. 443)

5.

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 unrelated articles of a different kind.  When a trademark is used by a party for a product in which the other party does not deal, the use of the same trademark on the latter’s product cannot be validly objected to.  (Southern  Philippines Packaging Corp. and Rotex Industries, Inc. vs. Rotex, Inc., p. 443)





TRADEMARK REGISTRATION


The right to register a trademark is based on ownership and that the term owner does not include the importer of the goods bearing the trademark, trade name, service mark, or other mark of ownership, unless such importer is actually the owner thereof in the country from which the goods are imported.  A local importer, however, may make application for the registration of a foreign trademark, trade name or service mark if he is duly authorized by the actual owner of the name or other mark of ownership. (Farling Industrial Co. Ltd., vs. Cymar International, Inc., p. 360)





TECHNOLOGY TRANSFER AGREEMENT


1.

Section 87 of the IP Code was intended to encourage the transfer and dissemination of technology and prevent or control practices and conditions that may, in particular cases, constitute an abuse of intellectual property rights and which have adverse effects on competition and trade. The prohibited clauses under Section 87 are designed to adhere to the policy of regulating the transfer, and promoting the dissemination, of technology sources.  (Applicants:  McGeorge Food Industries, Inc./ Golden Arches Development Corporation, p. 69)

2.

Section 87, particularly 87.9, of the IP Code is explicit in saying that provisions which restrict the use of technology supplied after the termination of the technology transfer arrangement except in cases of early termination of the technology transfer arrangement due to reasons attributable to the licensee and other clauses with equivalent effects shall be deemed prima facie to have adverse effect on competition and trade.  (Applicants:  McGeorge Food Industries, Inc./ Golden Arches Development Corporation, p. 69)

3.

There is an explicit provision of law, Section 87.9 of the IP Code, creating a presumption of restraint of trade and anti-competition. The IP Code put the burden of overcoming such presumption on the parties to the technology transfer arrangement. (Pre-Clearance of a Shop Franchise Agreement, p. 333)

4.

The primary purpose of the prohibitions espoused in Section 87.6 of the IP Code is to prevent technology transfers that have adverse effects on competition and trade.  The true spirit and purpose of Section 87.6 of the IP Code is to encourage the technology recipient to innovate on technologies that it receives from technology transfer arrangements by receiving remuneration or the fruit of its efforts and creativeness. As such, any provision that will waylay this objective is considered as a prohibition under Section 87.6.  (The Insular Life Assurance Co. Ltd. vs. Director of the Documentation Information and Technology Transfer Bureau, p. 456)





TREATIES


While it is true that the Philippines adheres to the Paris Convention and to the TRIPS Agreement, the conferment of trademark protection is not automatic as the same is subject to the national laws and guidelines set forth by a government member of said treaties. (Chan Kok Bin Vs. Le Saunda Licensing Ltd., p. 119)





WELL-KNOWN MARK


In determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark. (Taiwan Kolin Co., Ltd. vs. Kolin Electronics Co., Inc., p. 486)