cip july 24 lecture

7/28/2019 CIP JUly 24 Lecture

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Confusing Similarity

Confusion of Business

A question of colourable imitation by the junior user.

Purpose: Although dissimilar goods,

(1) it is based on equality.

(2) For natural expansion.

(3) From a trusted manufacturer. Destroy the confidence or

reputation of the registered trademark or first user.

(4) Products are non-competing; determine what is the product

attached to a manufacturer on the basis on brand name.

Goods are related when:

1. When they belong to the same class of have the same descriptive properties.On different product line e.g. stocking and shoes. But not to totally different

products.

2. When they possess the same physical attributes or essential characteristics.3. Whether they serve same purpose or are sold in groceries or flow thru the same

channel or trade

4. Where the junior users goods are not too different or remote from any that///

Exception: If the mark is well-known.

There is confusion of originate. (a) Interest of owner would likely be damaged.

Likehood of Confusion of TM, how determined?

It is not the reproduction or imitation, it is the likehood of confusion to the public.


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Administrative Remedies

Inter Partes Proceedings

Kinds

1. Opposition Proceedings2. Cancellation Proceeeding3. Administrative Complaint for Dameaged

Jurisdiction: Bureau of Legal Affairs

Degree of Proof: Substantial Evidence

Petition For Opposition

Who may oppose? A. A registrant of a mark or trade name or an assignee

B. Prior user of the mark on the Phil.

C. Foreign national or juridical persons WON engaged in

business in the Phil. (well-known marks) can prosecuted in the

Phil. It can tru an agent in cases of court notices.

Grounds: 1. The opposed mark consists of compromises a mark which:

A. So resembles a mark or trade name registered in the Phil.B. Previously used in the Phil by another and not abandoned

Issues to resolve:

1. WON the marks involved is confusingly similar?

2. If they are confusingly similar, Who among the parties is entitled to the

exclusive use of mark?

30 days from the puclication.


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Petition for Cancellation. Sec. 151

Period to File:

A. 5 years from registrationif the mark is confusingly similar to that of an owner who claims to be is damaged by such

registration and to have a superior right thereto.

B. At anytime and after 5 years :If the registered becomes generic name

If marked had been abandoned

If the registration is obtained fraudulently or contrary to the provisions of law.

If the RM is being used by or twith the permission of the registrany so as tp misrepresent

the source of the goods or services in connection with the mark used.

If the RO w/o legitimate reason fails to use the mark w/in the Phil. To cause it to be used

in the Phil by virtue of a licanse during an uninterrupted period of 3 years or longer.

Sec. 149 of the IPL can be transferred to another, shall be null and void if it mislead the

buyer. Transfer of marks must be together with the goodwill.

Assignment in Gross. Totally prohibited. The transfer of brandname is also the transfer of

goodwill.

Other Grounds:

1. Grounds for opposition to a trademark application.2. Failure to file a declaration of actual use as required.


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Is the doctrine of res judicata applicable in an admin case decision?

Yes. The fundamental principle of RJ applies to all cases and proceedinds in whatever form

they maybe, including appropriate cases to proceedinds for cancellation of TM before thebureau.

cip july 24 lecture

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