TRADEMARK A "Suggestive" mark suggests a quality or characteristic of the

product or service, but requires imagination, though or perception to

connect the mark with the product and service. Marks in this category
1. TRADEMARK- any visible sign capable of distinguishing are inherently distinctive, but it is often difficult to predict whether
goods/services of an enterprise; it also includes a stamped or marked certain wording will be considered suggestive or descriptive.
container of goods. Suggestive marks have a broader scope of protection than
descriptive marks.

PATENT- a statutory grant which confers to an inventor or his Arbitrary

legal successor, in return for the disclosure of the invention to the An "Arbitrary" mark has a common meaning that has no relation to
public, the right for a limited period of time to exclude others from the product or service on which it is used. It is a known word used in
making, using, selling or importing the invention within the territory of an unexpected or uncommon way. Marks in this category are also
the country that grants the patent. inherently distinctive, and are afforded a broad scope of protection.
2. Types of marks
Fanciful
Generic
A "Fanciful" or "coined" mark is made up, and has no meaning. It is a
A "Generic" word is the common name of the product or service. completely invented word. Marks in this category are inherently
Generic words or phrases are so descriptive that they are incapable distinctive. Because of their distinctiveness, fanciful marks generally
of ever functioning as a mark. are afforded the broadest scope of protection against 3rd party use.

Descriptive 3. Declaration of Actual Use

A "Descriptive" word (or words) merely describes an ingredient, Prior or actual use of a trademark is not required before
quality, characteristic function, feature, purpose or use of the product registration. However, there must be actual use after registration
or service. Also in this category are laudatory terms, geographic Prior or actual use of a trademark is not required before registration.
designations, and surnames. A descriptive word is not "inherently However, there must be actual use after registration.
distinctive" and is therefore not protectable as a mark from the outset.
However, such wording may acquire distinctiveness (also known as The applicant shall file a declaration of actual use of the mark
"secondary meaning") over time through use and promotion, and with evidence within three (3) years from the filing date. Otherwise,
thereby become protectable as a mark. Even once protected, the application shall be refused or the mark shall be removed from
descriptive marks are generally afforded the narrowest scope of the Register by the Director (Sec. 124).
protection against 3rd party use.

Suggestive NOTE: The ownership of a trademark is acquired by its registration

and its actual use by the manufacturer or distributor of the goods
made available to the purchasing public The ownership of a is whether the use of the mark is likely to cause confusion or deceive
trademark is acquired by its registration and its actual use by the purchasers (Diaz vs. People, 691 SCRA 139, G.R. No. 180677
manufacturer or distributor of the goods made available to the February 18, 2013).
purchasing public. Sec. 122 of RA 8293 provides that the rights in a
mark shall be acquired by means of its valid registration with the IPO.
A certificate of registration of a mark, once issued constitutes prima Holistic Test – The holistic test considers the entirety of the marks,
facie evidence of the validity of the registration, of the registrant’s including labels and packaging, in determining confusing similarity.
ownership of the mark, and of the registrant’s exclusive right to use The focus is not only on the predominant words but also on the
the same in connection with the goods or services and those that are features appearing on the labels (Diaz vs. People, 691 SCRA 139,
related thereto specified in the certificate G.R. No. 180677 February 18, 2013).

4. DOCTRINE OF SECONDARY MEANING 6. TRADEMARK INFRINGEMT VS UNFAIR COMPETITION

∗ While a generic, indicative or descriptive mark will, as a general
rule, be denied registration, there is a circumstance that will allow it
to be registered, this is the doctrine of secondary meaning which has Distinctions between infringement of trademark and unfair
been defined as, when a mark has become distinctive of the competition:
applicant's goods in commerce and, and in the mind of the public,
indicates a single source to consumers, it may be registered.
• Infringement of trademark is the unauthorized use of
Requisites: trademark, whereas unfair competition is the passing off of one’s
A. Long, continuous and uninterrupted use of mark for a period of goods as those of another;
at least 5 years • In infringement fraudulent intent is unnecessary, whereas in
B. The consumers learn to associate the mark to the product and unfair competition fraudulent intent is necessary; and
the manufacturer thereof. • In infringement the prior registration of the trademark is a
prerequisite to the action, whereas in unfair competition registration is
not necessary.
5. 2 TESTS FOR CONSUSION
ELEMENTS OF TRADEMARK INFRINGEMENT
Dominancy Test – The dominancy test focuses on the similarity
of the main, prevalent or essential features of the competing 1. Use of the Mark in trade/commerce
trademarks that might cause confusion. Infringement takes place 2. Without authority
when the competing trademark contains the essential features of
another. Imitation or an effort to imitate is unnecessary. The question 3. Which causes the likelihood of confusion.
(There must be a trademark registration, otherwise the case may be
of Unfair Competition)
Prior Art- is anything which was made available to the public
anywhere in the world before the filing date of patent application; or a
patent application that has been published prior to the filing date.
ELEMENTS OF UNFAIR COMPETITION
1. Confusing Similarity in the general appearance of the goods;
Re PUBLIC DISCLOSURE: an invention once disclosed already
2. Intent to deceive the public and defraud the competitor.
provides benefit to the public. Anyone can exploit and use it. If
NOVELTY is not required, anyone can have monopoly to something
which is already in the public domain.
7. GENERIC/DESCIPTIVE NATURE OF MARK AS A DEFENSE

9. 3 REQUIREMENTS FOR PATENTABILITY

FAIR USE DEFENSE
It creates a defense to trademark infringement, provided: the 1. Novelty- sec. 21. It must form part of a prior art. Nothing must
name or term is descriptive of and used fairly only to describe the precede it exactly the same.
goods/services or their geographic origin. The defense is available
only in actions involving descriptive terms and only when the term is 2. Inventive Step (inventiveness)- sec. 26
used in the descriptive sense rather than its trademark sense.
If having regard to prior art it is not obvious to a person skilled in
It prevents a trademark registrant from appropriating a descriptive the art.
term for its own use to the exclusion of others, who may be prevented
thereby from accurately describing their own goods. (NEW KIDS ON Person skilled in the art must have access to prior art. He must be
THE BLOCK vs. NEW AMERICA PUBLISHING) able to asses whether the invention is obvious or not obvious.

______________________________________________________
PERSON SKILLED IN THE ART- A fictitious person presumed to
have knowledge or access to prior art relation to an invention.
PATENT
Novelty is a factual question. The question of obviousness ia a legal
8. NOVELTY REQUIREMENT question.
Patent examiner decides. he would put himself into the shoes of a
The thing sought to be patented must not from part of a prior art. person skilled in the art.
Nothing must precede it exactly the same.
Judge of a case can decide on the issue of obviousness. He can put Function-means-result approach (two elements that are not
himself into the shoes of the person skilled in the art. similar may be equivalent for having the same function, could be
used in the same means, and produce the same results.
3. Industrial applicability-
Must be something workable, can be applied in any field.
GODINES vs. COURT OF APPEALS [G.R. No. 97343.
September 13, 1993]
10. REMEDIES OF INVENTOR
Tests have been established to determine infringement.
SECTION 68. Remedies of the True and Actual Inventor. — If a These are (a) literal infringement; and (b) the doctrine of
person, who was deprived of the patent without his consent or equivalents. In using literal infringement as a test, ". . . resort
through fraud is declared by final court order or decision to be the true must be had, in the first instance, to the words of the claim. If
and actual inventor; accused matter clearly falls within the claim, infringement is made
out and that is the end of it." To determine whether the particular
A. The court shall order for his substitution as patentee; or
item falls within the literal meaning of the patent claims, the Court
B. At the option of the true inventor, the court shall cancel the must juxtapose the claims of the patent and the accused product
patent; within the overall context of the claims and specifications, to
determine whether there is exact identity of all material elements.
In either instance, actual and other damages in favor of the true Recognizing that the logical fallback position of one in the place
inventor, if warranted by the circumstances, may be awarded. of defendant is to aver that his product is different from the
11. CLAIM- is the protection you want to avail. Each claim is an patented one, courts have adopted the doctrine of equivalents
invention by itself. Infringing just one claim is already a patent which recognizes that minor modifications in a patented invention
infringement. are sufficient to put the item beyond the scope of literal
infringement.
Thus, according to this doctrine, "(a)n infringement also
12. DOCTRINE OF EQUIVALENCE occurs when a device appropriates a prior invention by
Patent infringement incorporating its innovative concept and, albeit with some
modification and change, performs substantially the same
1. Literal infringement function in substantially the same way to achieve
One to one correspondence to claims and the infringing substantially the same result." The reason for the doctrine of
product. equivalents is that to permit the imitation of a patented
2. Infringement by equivalence (DOCTRINE OF invention which does not copy any literal detail would be to
EQUIVALENCE)- some elements may not be similar. convert the protection of the patent grant into a hollow and
useless thing. Such imitation would leave room for — indeed
encourage — the unscrupulous copyist to make unimportant
 and insubstantial changes and substitutions in the patent
which, though adding nothing, would be enough to take the
copied matter outside the claim, and hence outside the reach
of the law.

13. PUBLICATION (sec. 44)

Mandatory publication
Upon publication the applicant already acquires an inchoate right
since the work is already publicized. If someone copies the invention
pending patent application, one cannot yet sue. But upon the grant of
patent, and within 4 yrs from the commission of infringement, one can
already sue.