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Two tests – problems in application
  • Intellectual Property
  • Philippines
  • 26 August 2019

The Supreme Court has repeatedly stated that there are no set rules to determine whether one trademark is confusingly similar to, or a colourable imitation of, another and that each case must be decided on its own merits. Nonetheless, over the years, the court has fashioned two tests (ie, the dominancy and holistic tests) to determine whether one mark infringes another. However, case law suggests that the court has applied these tests inconsistently and in contravention of the Intellectual Property Code.

Two tests – Supreme Court case law on determining trademark infringement
  • Intellectual Property
  • Philippines
  • 12 August 2019

The Supreme Court has repeatedly stated that there are no set rules to determine whether one trademark is confusingly similar to, or a colourable imitation of, another and that each case must be decided on its own merits. Nonetheless, over the years, the Supreme Court has fashioned two tests (ie, the dominancy and holistic tests) to determine whether a mark infringes another. This article reviews a number of landmark Supreme Court decisions that applied these tests.

Riding on popularity of foreign brands
  • Intellectual Property
  • Philippines
  • 08 July 2019

Goods produced outside the Philippines are commonly perceived as being of better quality and, given their higher price point, are purchased by those who are more financially capable and consider themselves to have good taste. For this reason, some local business owners unlawfully attempt to ride on the popularity of foreign brands. However, Philippine law prohibits deception and protects the goodwill of foreign marks under the Intellectual Property Code and the Paris Convention.

Supreme Court recognises internet bookings as sufficient use of 'W' trademark
  • Intellectual Property
  • Philippines
  • 19 March 2018

Starwood Hotel & Resorts Worldwide Inc filed an opposition against the application for registration of the mark 'W' filed by W Land Holdings Inc in the Philippines for the latter's real estate business. The Supreme Court recognised that despite the physical absence of use of the W trademark in the Philippines, online bookings via websites constituted sufficient use of the mark in the country. However, the court also noted that such use must be genuine.

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