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

February 17, 2011 Updates

Trademark Law

Trademark protection is virtually perpetual in the sense that the registration can be renewed every ten (10) years.

Sec. 146. Renewal

146.1. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request.

Latest News from the Web

When there is a Will, there is a TRO
The nasty fight between Willie Revillame and ABS-CBN got nastier when the losing network resorted to the judicial personalities. CLICK HERE

Copyright trolling maybe good business
There is a hidden practice of some scrupulous men of buying up copyrights of naïve owners and then suing those that use the work. Much like a user car salesman taking credit for a “new” car sale. CLICK HERE

Sony vs. LG. This isn’t a price war
The market for “smart phones” has led the mega companies to duke it out in the U.S. courts. They are trying to pick up the scraps left by the company named after a fruit. CLICK HERE

Four stripes and you are out!
A fourth stripe on a shoe was concluded to possible confuse the Italians between Adidas and the other “brand”. But what about the 5 stripe Kwiss? CLICK HERE

Ford beat Ferrari in F1!
The “F” really is worth a lot of money these days. While our censor prevent us from using “F” on air, Ford Motor Company has forced Ferarri in rethink on how they use the “F”. CLICK HERE

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Rod Vera is an attorney practicing intellectual property law. You may contact him at Phone: +63.2.829.3102; FAX: +63.2.820.1193; E-Mail: rpv@vera-iplaw.com

I have changed my blog site

Please visit my new blog site. http://veraiplaw.wordpress.com/

Roderick P. Vera, JD, LLM | Managing Partner
Tel. +63.2.829.1145 | Cell. +63.917.884.8372

Vera & Associates

78 Lourdes Street, Teoville | Parañaque, Philippines 1720
Law Firm website
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The bee has lost its sting

The bee has lost its sting.

Our appellate court has dismissed a case against an alleged infringer accused of using a hamburger name for a shoe brand minus one letter. According to the Inquirer Article, the CA found that using a registered trademark for another merchandise in an unrelated and totally non-competitive product is plausible.

As I have mentioned before in a previous blog entry, an arbitrary name such as what the local hamburger chain has, should be afforded the strongest protection. The uniqueness of one’s brand name is highly sought after by companies. Name recognition is a form of goodwill that can’t be bought.

In Philippines, we have made famous brand names as generics. Kodak and Colgate have become synonymous with any camera and toothpaste respectively. Using that culture trait, is quite advantageous here. Let me explain.

When we hear the phrase, “Mag Kodakan tayo”, it means it’s time for picture taking. When a sari-sari store hears the question, “Pabili ng Colgate”, toothpaste is being asked for. Any store clerk will inherently and without thinking will look for those brands instead of cheaper alternatives. These brand names have been ingrained in our instinct.

Now here comes the hamburger chain which started as an ice cream store in Chinatown. After three decades, it is now a superbrand. The whole idea of trademark is associating names or symbols to the origin of the goods or service. For example, when we say Corolla, we don’t think of Honda but of Toyota.

Going back to the hamburger chain, its brand name is a made up word that has nothing to do with food (well, maybe honey). It has been in the country so long that it has been recognized as a leader in the food industry. We know many brand names that neither describe nor indicate the service or the product it is named after. For example, a coffee company named after a celestial male deer. In this country of ours, mention that name, we all know its about the hamburgers.

In case this issue goes to appeal with the highest court of the land, we will finally have some jurisprudence to settle the issue of trademark confusion.

For questions regarding intellectual property, feel free to email me.