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.
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.
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.
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.
The Intellectual Property Office of the Philippines is seeking designation as an international searching authority and international preliminary examining authority under the Patent Cooperation Treaty. The treaty allows patent applicants and inventors to file a single patent application in one IP office, resulting in protection in multiple countries. As a result, the Philippines is set to become a more attractive business destination and an even more reliable partner in patent protection.
The process of obtaining trademark registration is only the beginning. To ensure continued validity and protection, a trademark owner must use the registered mark in the Philippines and comply with other regulatory filings. For example, a declaration of actual use must be provided and contain information on where the goods or services are available, as well as photographs, labels or other physical manifestations of use in the Philippines.
San Miguel Brewery Inc and Iconic Beverages Inc recently filed an opposition against a trademark application for the mark ICE MOUNTAIN. San Miguel and Iconic Beverages argued that the ICE MOUNTAIN mark resembled its BLUE ICE device mark and contended that consumers would likely be confused. The Bureau of Legal Affairs saw no reason to deny the trademark application and held that the competing marks were not confusingly similar.
Starwood Hotel & Resorts Worldwide Inc filed an opposition against the application for trademark registration of the mark 'W' filed by W Land Holdings Inc for the latter's real estate business. The director general of the Intellectual Property Office stated that allowing the registration of W Land's mark would lead to confusion, despite the alleged dissimilarity between the goods and services offered by the parties.
In the Philippines, certain IP disputes are mandatorily referred to mediation. The Intellectual Property Office of the Philippines (IPOPHL) and the World Intellectual Property Organisation (WIPO) recently entered into a memorandum of understanding, giving parties to all mediation proceedings the option to refer the matter to WIPO mediation instead of IPOPHL mediation. IPOPHL has now published guidelines on this process.
Daiso Industries recently opposed a trademark application filed by Ma Olivia Tan for MYSMART ONE-SHOP DAISO, contending that it was confusingly similar to its mark DAISO. The Intellectual Property Office ruled for Daiso Industries, stating that it was highly likely that the public would mistake the marks as variations of each other.
The Philippines has been removed from the Office of the United States Trade Representative's Special 301 Watch List, after being on the list since 1994. Removal will have a positive effect on the Philippines' image as a country where IP rights are respected and IP laws are being implemented and followed.
The Technology Application and Promotion Institute and the Association of Patent Agent Qualifying Examinations Professionals Inc have entered into a memorandum of agreement regarding the drafting and prosecution of patent applications of Filipino inventors vetted by the Department of Science and Technology. The memorandum of agreement is expected to increase the number of quality local patent filings.
A seafarer was admitted to hospital two days after repatriation and died six months later. The seafarer's heirs filed a claim for death benefits. The labour arbiter dismissed the claim as the death occurred outside the employment term and there was no evidence that working conditions had brought about the illness. The Supreme Court held that for death benefits to be compensable, death must occur during the employment term.
Starwood Hotel & Resorts Worldwide Inc filed an opposition against the application for trademark registration of the mark 'W' filed by W Land Holdings Inc in the Philippines for the latter's real estate business. The director general of the Intellectual Property Office stated that allowing the registration of W Land's mark would lead to confusion, despite the alleged dissimilarity between the goods and services offered by the parties.
The Supreme Court recently ruled that a seafarer was not entitled to disability benefits after the seafarer had wilfully concealed pre-existing illnesses. The court held that the failure of the pre-employment medical examination to reveal the seafarer's undisclosed hypertension could not shield him from the consequences of wilful concealment of this information.
The Supreme Court has denied a seafarer's claim for disability benefits as the seafarer failed to submit himself to a post-employment medical examination within three working days of his arrival in the Philippines. The seafarer admitted that he had had his medical examination more than a month after his arrival and failed to prove that he had suffered any illness during the term of his employment.
The Supreme Court recently denied a seafarer's claim for disability benefits. The court ruled that it was undisputed that the seafarer was repatriated due to his contract ending and not for medical reasons. The court emphasised that the seafarer's repatriation for completion of his contract belied his submission that his claimed heart disease had been aggravated by his work onboard the vessel.
Following the abrupt termination of a number of seafarers due to the cessation of the employer's operations, it was agreed that the seafarers would receive 100% of their salaries, but the next day it was agreed that they would receive only 50%. The seafarers executed quitclaims. The Supreme Court considered the quitclaims valid, noting that all the seafarers executed them with a full understanding of their consequences.
A seafarer filed a complaint for payment of permanent total disability benefits. The Supreme Court noted that the seafarer had pre-empted the mandated procedure by filing a complaint based on his chosen physicians' opinions without referring the conflicting opinion to a third doctor for final determination, as was his duty. The Supreme Court dismissed the seafarer's complaint.
The Intellectual Property Office of the Philippines recently drafted proposed rules and regulations that aim to provide a system of registration for geographical indications. While no date has been set for the issue of the final version rules and regulations, its efforts must be applauded as a clear indication of its drive to strengthen IP rights protection.