IPR

Mode of acquiring ownership Encourage inflow of foreign investments which could bring about economic and technological progress and development for our country

RA 165 patent law PD 49 copyright law RA 166 trademark law NCC 520 to 521 RPC 188 and 189

 (section 4)IPR consists of:

(C) and related rights Trademarks and service marks Geographical markings

 Mark a tool used to distinguish the goods and services of one enterprise from those of the others Trademark can be a word or grp of words sign, symbol logo, shapes and colors; refers to marks used to identify goods Servicemark used to identify marks used for services Trade name name or designation identifying an enterprise Collective mark any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark

Importance of trademark
Marketing tool that makes the public remember the goods and services for its quality and other characteristics that make the product or services bearing the mark positively distinct Is the face of the goodwill created in the product Once known to the minds it becomes psychologically attached to it, they trust that product, develop loyalty and continue to patronize

 Once established it can become the most valuable business asset of an enterprise HOW
owner can generate income by licensing the use of the mark to third parties thru franchising agreements Enables the TM owner to expands its line of products, as the brand is now famous, trusted and patronized by the public

How to protect your mark

Registration gives the trademark owner the exclusive right to use the mark and ti orevent others from using the same or similar marks on identical or related goods and services The right to a trademark is granted to the one who 1st filed the trademark and registered it with the IPO (office) Before applying for trademark, research must be conducted in the database to determine if there are identical or similar marks; to prevent unnecessary costs and future conflicts with marks that are already registered

Where is the trademark protection valid?

IPO protects the mark only in the PHL In other countries owner must file trademark application for registration in the countries where he wants his mark protected

Strength of trademarks (4 categories of distinctiveness)

Arbitrary and fanciful strongest, inherently distinctive Suggestive medium, suggest something about the product/service Descriptive weak, describe the goods/impt characteristics, unless it has acquired a 2ndary meaning, not even allowed for registration Generic cannot be registred as a mark

What mark may be registered?

The mark must be capable of distinguishing the goods or services from those of others Them mark should satisfy the requirements for registrability under sec123.1 of the IPC

A mark cannot be registered if

immoral, deceptive, scandalous consist of flags or insignia or coat of arms of the phil or other nations or any simulation thereof Generic or customary or usual to the trade or goods descriptive Misleading marks that are likely to mislead Consist of a shape required by technical factors, or by nature of the goods, or consists of color alone UNLESS defined by a given form e.g. Coca cola bottle, not trademark because it may be part of the public Contrary to public order or morality Consists of a name, portrait or signature of a living person or deceased phil president EXC: if he consents Identical or confusingly similar to registered marks owned by another or marks well known internationally in the phils whether or not registered in the phils or a translation thereof
In determining whether a mark is internationally well known and in the phil, knowledge of the relevant sector of the public, rather than that of the public at large or in general including those obtained as a result of the marks promotion

TM registration: renewal or maintenance (sec 145-146

Valid for 10 yrs from date of issuance of certificate of registration Provided the registrant files with the IPO an affidavit of use/non use within 1 yr following the 5th anniversary of the effective date of the registration or renewal registration Registration is renewable at the end of the 1-th yr term as long as the owner of the mark continues to use it in commerce Registrant must also use the mark for an uninterrupted period of 3 yrs. Otherwise it is presumed abandoned

Importance of TM registration
Prima facie evidence of
Validity of the registration Registrants valid ownership of the mark registrants exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate

RM is presumed b y law to be a valid TM Presumption that the mark has not been abandoned thru non use Constructive notice that is infringers cannot claim that they were unaware of a registered TM. Good faith is not a defense in infringement cases Enhanced remedies for infringement, including the possibility of damages and criminal penalties Right to have the phil. Customs prevent others from using

Rights of the owner of a registered mark

Sec 147 rights conferred
The owner of a registered mark shall have the exclusive right to prevent all third parties no having the owners 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 Where 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

Exclusive right of the owner of a well know mark which is registered in the phil shall extend to goods and services which are not similar to those in respect of which the mark is registered
Provided that use of that mark in r/t those goods or services would indicate a connection between those goods or services and the owner of the registered mark Provided further that the interests of the owner of the registered mark are likely to be damaged by such use

How to determine if a mark is well known

Duration, extent, and geographical spread of the marks use, promotion, advertising and publicity Market share in the Philippines and other countries Degree of inherent or acquired distinction of mark Reputation acquired by the mark Extent of registration worldwide Extent of exclusivity of use of the mark worldwide Commercial value attributed to the mark world wide Record of successful protection of its TM rights Outcome of litigations re: Issue of the mark being famous Absence of identical or similar marks

Remedies available to the owner in case his trademark is copied or used by others without his authority
Administrative action
File a petition for cancellation of any registration of a mark identical or confusingly similar to his mark with bureau of legal affairs of the IPO File a petition with the phil bureau of customs to prevent others from importing goods bearing infringing marks

Civil action
Trademark infringement Unfair competition Actions concerning trademark license contracts Importation of merchandise or goods bearing marks or trade names False designation of origin; false description or representation Cancellation of the registration of a collective mark

Criminal action

Remedies, sanctions in civil actions

Search and seizure under IPR Damages
Reasonable profit which the complaining party would have made had the defendant not infringed his rights Profit which the defendant actually made out of infringement Reasonable percentage based upon the amount of gross sales of the defendant or the value of the services if damages cannot be readily ascertained Doubled, if actual intent to mislead the public or to defraud the complainant shown

Injunction
Preliminary and permanent

Impounding & destruction of infringing materials

Fake goods, labels, prints, packages, wrappers, ads

Cancellation of trademark registration of defendant, if any

By itself, go to IPO

Damages; notice requirement

Sec. 158 in any suit for infringement, the owner of the registered mark shall not be entitled to recover profits or damages, UNLESS the acts hhave been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words registered mark or the letter r within a circle or if the defendant had otherwise Without notice of TM registration no recovery of damages How notice is given
Registered mark is displayed with the mark R within a circle is displayed with mark Defendant had actual notice of registration Thru demand letter, actual knowledge of ownership

Criminal action
Trademark infringement Unfair competition False designation Independent of the civil and administrative sanctions:
Imprisonment from 2 years to 5 years; and FINE 50k -200k

Remedies shall be limited as follows

A registered mark shall have no effect against any person who in good faith before 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 or business in which the mark is used Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled as against such infringer only to an injunction future printing Where the infringement complained of is contained in or is part of paid advertisement in a newspaper, magazine, or other similar periodical or in an electronic communication