Trademark Law

You now may file an international trademark registration application for 85 countries right here in the Philippines. The Intellectual Property Office of the Philippines (IPOPHIL) as of July 25, 2012 is part of the Madrid Protocol. This is an international registration system under World Intellectual Property Organization (WIPO) wherein one single trademark application can be filed for several countries such as the U.S., European Union, China, Japan and even North Korea.

The undersigned is one many legal professionals that attended the Madrid Protocol Training conducted by the IPOPHIL. See official LIST.

Latest News from the Web

Thrilla is San Jose

In what sure is to be the trial of the century for intellectual property law, Apple and Samsung are fighting over the touch screen tablet. Whoever wins get to rename the next iPhone or Galaxy. See LINK

I wonder what Madonna has to say about this…..

Richard Branson, the billionaire owner of many “Virgin” brands has filed a lawsuit against a clothing denim line claiming rights over the “Virgin” name. I shall not say more.  See LINK

They must rolling in their graves

The great grandsons of the Gucci founder have been barred by the same company from using their surname in competing products. Does anyone know if Louis Vuitton have any grandchildren? See LINK

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The material in this online newsletter has been drafted and edited by Atty. Roderick Vera and is for informational purposes only. The material above does not constitute nor become legal advice. Please consult with an attorney for legal advice before relying on any information found on this newsletter. For any questions, inquiries or comments, please see the contact information above.

Intellectual Property Law Updates May 28, 2012

Trademark Law

Latest jurisprudence

Fredco Manufacturing Corp. vs. Harvard University, Cambridge, G.R. No. 185917, June 1, 2011

Harvard Jeans Case

• Even prior registered local trademarks under R.A. 166 (old trademark law), which allowed “squatting” Philippine trademarks (Shangri-La case) to prevail over international trademarks can now be cancelled.
• Trademarks registered under R.A. 166 shall be deemed to have been registered under R.A. 8293 (IP Code of 1998). This means that all the requisites and/or provisions not present in R.A. 166 but present in R.A. 8293 can be invoked for cancellation.
• Even international trademarks not registered in the Philippines have protection under the Paris Convention (IP Treaty)

Latest News from the Web

This is it! And you thought this would never happen

Competing porn sites are now suing for infringement. I dare not say anymore. Site for online article HERE.

 The “G’s” have it.

Gucci has won a trademark infringement case over Guess. There are not enough “Gs” to share in this world. Site for online article HERE.

Downloading illegally or “file sharing” is still BAD!

The United States Supreme Court refused to hear an appeal by a former Boston University student (represented by a Harvard Law Professor) who is set to pay $675,000 (30 songs @$22.5K each) in damages for using Kazaa. Let this be a lesson to all of you. Site for online article HERE.

Google can keep their Android

Google partially won against Oracle after the later sued the former on patent infringement. Oracle claims that the Andriod system is based on the Java technology which was bought by Oracle. 300 million smartphones can’t be wrong. Site for online article HERE.

TV really isn’t free

An online service that sends FREE tv signal to subscribers over the internet is being sued for ILLEGAL FREE PUBLIC PERFORMANCE. Yes, I didn’t know that ILLEGAL and FREE can be used in the same sentence. Site for online article HERE.

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The material in this online newsletter has been drafted and edited by Atty. Roderick Vera for informational purposes only and does not constitute nor become legal advice. Please consult with an attorney for legal advice before relying on any information found on this newsletter. For any questions, inquiries or comments, please see the contact information above.
 

IP Updates March 1, 2011

Trademark Law

Latest jurisprudence

E.Y Industrial Sales, Inc. v. Shen Dar Electricity and Machinery, G.R. No. 184850, October 20, 2010

• A registered trademark owner’s certificate of registration may be cancelled even that trademark owner is the complainant in a petition for cancellation of an adverse trademark. You can fall on your sword, so to speak.
• A Declaration of Actual Use (requirement for trademark registration) although notorized, hence a public document, must be accompanied by proof of actual use as of the date claimed. The trademark owner must, therefore, present evidence of such actual use.
• An earlier valid trademark registration may still be cancelled upon proof of prior and continuous use by rival trademark applicant.
• Evidence of prior and continuous use of the mark or trade name by another can overcome the presumptive ownership of the registrant and may very well entitle the former to be declared owner in an appropriate case. When the applicant is not the owner of the trademark being applied for, he has no right to apply for registration of the same

Latest News from the Web

Hopefully, you were not on the list

Just because your name is John Doe and you “downloaded” the latest Hustler video doesn’t entitle you to be joined as defendant in common with other porn connoisseurs. http://bit.ly/gypBnA

Pick up line in a song can’t be used by a woman

Britney Spears (she is back somehow) is being sued by a couple of cowboys from Nashville. The cowboys claim that the former teenager pop star used their song title without permission. http://bit.ly/fjkKXL

Being “single” is exclusive for Facebook

In an effort to monopolize your relationship status, Facebook is trying to cancel three U.S. patents on “human relationships registering system.” http://bit.ly/gTK8GU

You can sue without your pants on!

The famous Naked Cowboy of New York is suing CBS because a soap opera has used a “likeness” in a scene in one episode. http://bit.ly/fc6rVx

Anyone can use Betty Boop now!

The family of the creator of the Betty Boop character has lost its standing to sue any alleged infringement. Lesson learned: Document all transfers and licenses. http://on.wsj.com/eIaq8N

The genius of Philippine Trademarks

Filipino’s ingenuity goes both ways. We can think of smart ideas but sometimes they cross the line into infringement. But we can harness this genius in creating “marks” of our own. To illustrate, there are 4 types of trademarks in terms listed in the order of their strengths:

1) Arbitrary (made up, original) Ex. Exxon, Kodak

2) Suggestive (suggesting a product in the mind) Ex. Coppertone

3) Descriptive (trait emphasized) Ex. Quarter Pounder

4) Generic (natural inference). Ex. Mineral Water

Arbitrary trademarks bear no relationship to the products or services to which they are applied. Suggestive trademarks imply some particular characteristics of the good or service to which it applies and requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the good or service. A descriptive term identifies a characteristic or quality of the goods or services such as color, function, dimensions or ingredients. They are can only be protected if they have acquired secondary meaning in the minds of the consuming public. Lastly, generic terms are names of a particular genus or class of which an individual article or service is but a member.[1]

There are two cases which have recently caught the headlines. The word Ginebra has been considered “generic” in a legal battle between two liquor companies. The one who won sought to register and the losing company protested and sought to protect it’s own mark and claim confusing similarity. The IPO claimed that the word “ginebra” is generic and couldn’t have obtained secondary meaning in favor of the losing company. The standard in trademark disputes is that generic trademarks cannot be subject of registration or subject to cancellation. Why then did the IPO “approve” the trademark application if the word in question is generic? Think about it.

The other case is obviously a case of “riding” on the popularity of an arbitrary name. Harvard University went after a clothing company using the school name for a brand of jeans. This is clear cut. Trademark confusion creates a cause of action for the owner of the mark because it will cause confusion as to the origin of the goods. We all know that Harvard does not make jeans. If that be the case, I would go for further studies at Levi’s University.

In summary, it is best to consult a legal professional before making product names public. You wouldn’t want to be caught drinking a strong colorless alcoholic beverage without jeans.

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[1] Zatarains v. Oak Grove, U.S. Court of Appeals for the 5^th Circuit (698 F.2d 786, 1983).

Ideas are protected

Intellectual Property is a branch of law that hardly taught yet extensively exercised in everyday business transactions. Everything around you has been the subject of IP law whether in the past or in the present. Every soda you buy, every gadget you purchase and every movie or television show you have seen is under IP law.

There are three major branches of IP law: Copyrights, Patents and Trademarks. Each is distinct but can be combined in a single product. I will briefly give a layman’s explanation to each branch.

Copyright

Simply put, this is an expression of an idea in an artistic form. The popular examples are songs, movies, and paintings. The core of copyright is the mode of expression and the fixation in a medium. You can think of song or a great painting but unless it is placed in a medium for people to see or feel, it can not be subject to copyright protection. This is the branch that is the easiest to protect, has no discretion for the government for protection and has the longest period of protection.

Patents

This is an expression of an idea or an improvement of an idea placed or manifested in a useful article. The imperative ingredient in patent is that the idea has to have utility. If the idea has no use whatsoever, then it might fall under copyright. This is the hardest branch of intellectual property to qualify for because it involves discretion upon the government body granting the patents. It is the hardest to obtain but ironically, has the shortest span of protection.

Trademarks

This is an expression of an idea to mark goods or services in trade. It is attaching an identity to a product or service. The ultimate purpose of trademarks is to identify the origin of the product. Trademarks are also subject to government discretion as each one has to be distinct from one another.