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Prior Registration Not Required for Trade Name Infringement
The Supreme Court recently reiterated its 2009 ruling that the local prior registration of a trade name is not a requisite for its owner to hold an unauthorized user liable for infringement. In its decision in Coffee Partners, Inc. vs.
San Francisco Coffee and Roastery, Inc. (G.R. No. 169504), which was promulgated earlier this year, the Court emphasized that, unlike in the case of trademark infringement which requires the prior registration with the Intellectual Property Office of the trademark or service mark being enforced, all that is required in a case of trade name infringement is that the trade name being enforced was previously used in trade or commerce in the Philippines.
The foregoing doctrine finds basis under Section 165.2 of the Intellectual Property Code, which provides that, 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; and that any subsequent use of a trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, that is likely to mislead the public, is deemed unlawful.
In Prosource International, Inc. vs. Horphag Research Management SA (G.R. No. 180073), which was promulgated late last year, the Court laid down the elements of infringement of an unregistered trade name:
(1) the trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;
(2) the infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or 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;
(3) 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
(4) the use of the mark or trade name is without the consent of the trade name owner or the assignee thereof.
The Court clarified that it is the likelihood of confusion that is the gravamen of infringement and that in determining likelihood of confusion, the dominancy test and the holistic test may be applied. The dominancy test focuses on the similarity of the prevalent features of the competing marks that might cause confusion and deception. In contrast, the holistic test entails a consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity.
SyCip Salazar Hernandez & Gatmaitan
SSHG Law Centre,
105 Paseo de Roxas
Makati City, Philippines
Trunkline No. (632) 982-3500; (632) 982-3600; and (632) 982-3700
Fax No. (63 2) 817-3145/817-3896
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