Published 8 April 2019, The Daily Tribune

A trademark distinguishes a product or service from all others of the same class. As an effective tool to help the public remember the quality of goods and services of a certain company, product or brand, once a trademark becomes known and reaches a certain level of good will with the public, products and services associated with the trademark will certainly be patronized.

For this reason, those who created and grew these images/marks are fiercely protective of their marks. This protection spells the boon or bane of a company’s product movement, profitability and public image.

But how does this protection work?

Republic Act 8293, otherwise known as the Intellectual Property Code, defines a trademark as “any visible sign capable of distinguishing goods.” Much like other types of properties, trademark, as an intellectual property, is the subject of certain rights and remedies afforded by the law to its owner.

A trademark can be protected through registration with the Intellectual Property Office (IPO). Registration gives the trademark owner the exclusive right to use the mark and to prevent others from using the same or similar marks on identical or related goods and services.

Registration of the trademark is vital because the certificate of registration of a mark is considered an evidence of its ownership and of the registrant’s exclusive right to use the mark in connection with the goods or services and those that are related thereto specified in the certificate.

The owner of a registered mark has the exclusive right to prevent others from infringing on the trademark, i.e., using identical or similar signs or containers for identical or similar goods or services in which the registered owner is engaged. The test is whether the goods or services in which the identical or similar mark is used would result in a likelihood of confusion.

The following are the elements of trademark infringement:
1. The trademark being infringed is registered in the IPO;
2. The trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer;
3. The infringing mark is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark 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 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. The use or application of the infringing mark is without the consent of the trademark owner or the assignee thereof.

At times, when trademark is infringed, another illegal act is at the same time committed.

Unfair competition is the passing off (or palming off) or attempting to pass off upon the public of the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public. The essential elements of unfair competition are (1) confusing similarity in the general appearance of the goods; and (2) intent to deceive the public and defraud a competitor.

Passing off (or palming off) takes place where the defendant, by imitative devices on the general appearance of the goods, misleads prospective purchasers into buying his merchandise under the impression that they are buying that of his competitors. Thus, the defendant gives his goods the general appearance of the goods of his competitor with the intention of deceiving the public that the goods are those of his competitor.

Thus, a trademark infringer may be liable for both trademark infringement and unfair competition.

The remedies of the registered owner in case of trademark infringement and unfair competition are to recover damages either for the reasonable profit which the registered owner would have made, had the defendant not infringed his rights, or the profit which the registered owner actually made out of the infringement.

If the damages cannot be readily ascertained, the court may award a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with the trademark in question. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled.

On application of the complainant, the court may also impound during the pendency of the action, sales invoices and other documents evidencing sales. The registered owner may also be granted injunction. In proper cases, the court may order that goods found to be infringing be destroyed.

Thus, originality is still key. Apart from distinguishing one’s services and products from existing ones, it also saves one from the expenses and dangers of a lawsuit for trademark infringement and unfair competition.

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