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08 July 2019
Most Filipino consumers put a premium on foreign-branded consumer goods. Goods produced outside the Philippines are commonly perceived as being of better quality and, given their higher price point, are purchased by people who are more financially stable and consider themselves to have good taste. For this reason, some local business owners unlawfully attempt to ride on the popularity of foreign brands.
Such local business owners use trademarks or service marks that are worded similarly or look or sound similar to coveted foreign trademarks. The similarity usually improves sales by attracting consumers who may be unable to afford the genuine articles. However, Philippine law prohibits deception and protects the goodwill of foreign marks under the Intellectual Property Code (Republic Act 8293). This statute defines the following as acts of trademark infringement:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive[.](1)
The Philippines is also a signatory to the Paris Convention, which protects so-called 'well-known marks' even if they are not registered in a signatory country. Case law shows that a mark is well-known for protection purposes under the Paris Convention if it is well-known internationally and in the Philippines, as determined by the registering authority or local courts.(2)
Trademark infringement claims can be brought in lawsuits, criminal prosecutions and inter partes reviews. A civil lawsuit for trademark infringement is an action for an injunction against the future use of a mark and for the recovery of damages equivalent to the reasonable profit which the complaining party would have made had the defendant not infringed its mark.(3) Criminal prosecution for trademark infringement can lead to between two and five years' imprisonment and a fine.(4) Inter partes reviews may consist of an opposition to the registration of or a petition to cancel the registration of an infringing mark.(5)
For further information on this topic please contact Benjamin Z Lerma at Romulo Mabanta Buenaventura Sayoc & De Los Angeles by telephone (+63 2 848 0114) or email (email@example.com). The Romulo Mabanta Buenaventura Sayoc & De Los Angeles website can be accessed at www.romulo.com.
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Benjamin Z Lerma