Infringement of Trademark and Tradename

Infringement of trademark or tradename is defined in Section 155.1 and 155.2.    As held in the case of Prosource International, Inc. v. Horphag Research Management SA (605 SCRA 523, 2009), the Court identified the elements of infringement under the Intellectual Property Code:

(1)        The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered.

(2)        The trademark or tradename is reproduced, counterfeited, copied or colorably imitated by the infringer;

(3)        The infringing mark or tradename is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or tradename is applied to labels,  signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services.

(4)        The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and

(5)        It is without the consent of the trademark or trade name owner or the assignee thereof.  (as cited in Intellectual Property Law, 2012 Edition by Denis B.  Funa).

In other words, only a registrant of a mark can file a case for infringement.   In infringement of a trademark, fraudulent intent is unnecessary (Del Monte Corp. et al v. Court of Appeals et al. 181 SCRA 410, 1990).

However, as held in the case of Coffee Partners Inc. vs. San Francisco Coffee and Roastery Inc. G.R. No. 169504, March 3, 2010 Second Division,   a trade name need not be registered with the Intellectual Property Office before an infringement suit may be filed by its owner against the owner of an infringing trademark. All that is required is that the trade name is previously used in trade or commerce in the Philippines.  Republic Act 8293, which took effect on 1 January 1998, has dispensed with the registration requirement. Section 165.2 of R.A. 8293 categorically states that trade names shall be protected, even prior to or without registration with the Intellectual Property Office, against any unlawful act including any subsequent use of the trade name by a third party, whether as a trade name or a trademark likely to mislead the public. Thus:

        Sec. 165.2 (a) notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties.

In McDonald’s Corporation et al. v. L.C. Big Mak Burger, Inc. et al (437 SCRA 10, 2004, Citing A& H Sportswear Co. v. Victoria’s Secret Stores, Inc. 167 F. Supp. 2d. 770 (2001), the Court gave a more concise enumeration of the elements of infringement:  (1) the validity of plaintiff’s mark; (2) the plaintiff’s ownership of the mark, and (3) the use of the mark or its colorable imitation by the alleged infringer results in “likelihood of confusion.”