Regarding the
use of competing trademarks in a sponsored sporting event in FIBA, in which the
event was, sponsored then by Brand A and in such manner the competing Brand B
who is then a non-sponsor brand who gives out tickets to such event in which
the real sponsor of that FIBA event is Brand A.
Because being the main sponsor of such event, Brand A, who is the
recipient of such tickets, they expect that people who shall participate or
watch the said event should wear the brand for the exposure of their products.
As correctly
phrased by us the public, the basic issue presented for our consideration is
WHETHER OR NOT BRAND B IS OF SUCH CHARACTER THAT IS CALCULATED TO DECEIVE OR
CONFUSE THE PUBLIC TO THE INJURY OF BRAND A, to which the brand who sponsored
the event belongs.
Let us then make
certain distinctions, and analyze as to the meaning of TRADEMARK AND TRADENAME.
Under Sec. 121 (3)
of the Intellectual Property Code of the Philippines, it states that:
TRADENAME means
the name or designation identifying or distinguishing an enterprise.
Trade name is
any individual name or surname, firm name, device or word used by
manufacturers, individualists, merchants and others to identify their
businesses, vocations, or occupations.
As the Trade
name refers to the business and its goodwill...., the Trademark refers to the
goods, the ownership of a trademark or trade name is a property right which the
owner is entitled to protect “since there is damage to him from confusion or
reputation or goodwill in the mind of the public as well as from confusion of
goods “. The modern trend is to give emphasis to the unfairness of the acts and
to classify and treat the issue as fraud.
Since Brand A
and Brand B are both engaged in similar business, the dominant facts is that
Brand A is the primary sponsor of the event and Brand B has no right to
appropriate the same for use on its products which are similar to those being
sponsored by Brand A.
Brand A had no
idea why Brand B chose to give out tickets to the event in which they are then
the major sponsor. And the record
discloses no reasonable explanation for the Brand B’s contention of giving out
such tickets on that event. Such
unexplained use by them lends itself open to suspicion of fraudulent motive to
trade upon Brand A’s reputation.
A boundless
choice of words, phrases, symbols, advertising techniques, and marketing
strategies is available to one who wishes a trademark sufficient unto itself to
distinguish his product from those of others. When, however, there is no reasonable
explanation for Brand B’s choice of such mark through the field for his
selection was so broad, the inference is inevitable that it was a chosen
deliberately to deceive.
The fact that
brand A, who is the legitimate trader as well as the sponsorship of the FIBA
event evidencing of Brand A’s product in the Philippines, give evidence to
Brand A’s claim that it has earned a business reputation and goodwill in this
country.
The best proof
that the company of Brand B in the market in the country and that there was
actual use for protracted period of Brand A’s trademark or part thereof through
sales and sponsorship.
The most
convincing proof of use of a mark in commerce is testimony of such witnesses,
as customers, patrons for the commercial use during such period. Brand B’s witness, having affirmed her lack
of business connections with Brand A, has testified as such patrons, supporting
strongly Brand A’s move for trademark pre-exemption.
Any sale made by
legitimate trader from his store is a commercial act of business to the general
public, not only to limited individuals.
It is a matter of public knowledge that all brands of goods filters into
the market, indiscriminately sold by jobbers dealers and merchants not
necessarily with the knowledge or consent of the manufacturer.
Such actual sale
of goods in the local market establishes trademark use which serves as a basis
for any action aimed at trademark pre-exemption. It is corollary logical that Brand A is
licensed to do business; it means that its goods are being sold and earned a
reputation or goodwill as regards to its products.
Since it was an
event, there should be a better determination with regards to not to confuse
the viewing public of the event to the prejudice of Brand A.
The
determinative factor in ascertaining whether or not marks are confusingly
similar to each other “is not whether the challenged mark on the tickets would
actually cause confusion or mistake on the part of the buying public.” It would be sufficient, for purposes of the law
that the similarity between the two companies on their tickets or advertising
scheme is such that there is possibility or likelihood of the purchaser of the
sponsoring company mistaking the new brand for it. Even if not of the details just mentioned
were identical, with general appearance alone of the 2 companies, any ordinary,
or even perhaps, even is not too perceptive and discriminating could be
deceived.
Such actions of
Brand B are not tenable and for my own opinion, the action in general
contention of both companies Brand B and Brand A, in which would evidently
create a likelihood of confusion among the purchasing and viewing public of the
FIBA. But even assuming arguendo that
the trademark is already known unlike that of Brand B, the likelihood of
confusion would still subsists, not on the purchaser’s perception of the goods
but on the origins thereof. By giving
out the tickets on that occasion are likely to be mistaken as having been
co-produced by Brand B.
The risk of
damage is not limited to a possible confusion on the sponsoring company but
also includes confusion of reputation of the public could reasonably assume
that the goods of the parties originated from the same source.
The Brand A have
the exclusive right to prevent all 3rd persons not having the
owner’s consent from using in the course of trade identical or similar signs or
containers for goods or services which are identical or similar to those in
respect of which he trademark is registered where such use would result in a
likelihood of confusion. Because of the
use of an identical sign for identical goods or services, a likelihood of
confusion shall be presumed.
The company of
Brand A is not here seeking to enforce any legal or control rights arising from
or growing out of, any business which it has transacted in the Philippine
islands. The sale purpose of the action:
Is to protect
its reputation, its corporate name, its goodwill whenever that reputation,
corporate name, its goodwill whenever that reputation, corporate name or
goodwill have, though the natural development of its trade, established
themselves. And it contends that its
rights to the use of its corporate and trade name.
Is a property
right, a right in recess which it may assert and protect against all the world,
in any of the courts, even in jurisdiction where it does not transact business
just the same as it may protect its tangible property, real or personal against
trespass or conversion.
Since it is
trade and not the mark that is to be protected, a trademark acknowledges no
territorial boundaries of municipalities or states or nations but extends to
every market where the sponsors’ goods have become known and identified by the
use of the mark.
The object of
the government is to accord a member extensive protection against infringement
and other types of unfair competition.
The pertinent
provision of RA No. 166 (Trademark Law) states that:
Sec. 22
Infringement, what constitutes – any person who shall use, without the consent
of the registrant; any reproduction, counterfeit, copy or colourable imitation
of any registered mark or trade name in connection with the sale, offering for
sale, or advertising of any goods, business or services on or in connection
with which such use is likely to cause confusion or mistake or to deceive
purchasers or others or to the source or origin of such goods or services or
identify of such business; or to reproduce, counterfeit, copy or colorable
imitation any such mark or trademark and apply such reproduction, counterfeit,
copy or colourable imitation to labels, signs, prints, packages, wrappers,
receptacles, or advertisements intended to be used upon or in connection with
such goods, business or services; shall be liable to a civil action by the
registrant for any or all of the remedies herein provided.
Practical
application, however, of the aforesaid provision is easier said than done. In the history of trademark cases in the
Philippines, particularly in ascertaining whether one trademark is confusingly
similar to or is colourable imitation of another, no set rules can be
deduced. Each case must be decided on
its own merits.
But likelihood of confusion is a relative concept; to be
determined only according to the particular, and sometimes peculiar,
circumstances of each case. It is unquestionably true that, as stated in Coburn
vs. Puritan Mills, Inc.: “In trademark cases,
even more than in other litigation, precedent must be studied in the light of
the facts of the particular case.”
Likewise,
it has been observed that:
In determining whether a particular name or mark is a “colorable
imitation” of another, no all-embracing rule seems possible in view of the
great number of factors which must necessarily be considered in resolving this
question of fact, such as the class of product or business to which the article
belongs; the product’s quality, quantity, or size, including its wrapper or
container; the dominant color, style, size, form, meaning of letters, words,
designs and emblems used; the nature of the package, wrapper or container; the
character of the product’s purchasers; location of the business; the likelihood
of deception or the mark or name’s tendency to confuse;
etc. 25
etc. 25
Proceeding to the task at hand, the essential element of
infringement is colorable imitation. This term has been defined as “such a
close or ingenious imitation as to be calculated to deceive ordinary
purchasers, or such resemblance of the infringing mark to the original as to
deceive an ordinary purchaser giving such attention as a purchaser usually
gives, and to cause him to purchase the one supposing it to be the other.”
Colorable imitation does not mean such similitude as amounts to
identity. Nor does it require that all the details be literally copied.
Colorable imitation refers to such similarity in form, content, words, sound,
meaning, special arrangement, or general appearance of the trademark or trade
name with that of the other mark or trade name in their over-all presentation
or in their essential, substantive and distinctive parts as would likely
mislead or confuse persons in the ordinary course of purchasing the genuine
article.
In determining whether colorable imitation exists, jurisprudence
has developed two kinds of tests — the Dominancy Test applied in Asia
Brewery, Inc. v. Court of Appeals and
other cases and the Holistic Test developed in Del
Monte Corporation v. Court of Appeals and its
proponent cases.
As its title implies, the test of dominancy focuses on the
similarity of the prevalent features of the competing trademarks which might
cause confusion or deception and thus constitutes infringement.
. . . If
the competing trademark contains the main or essential or dominant features of
another, and confusion and deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it necessary that the
infringing label should suggest an effort to imitate. On the other side of the
spectrum, the holistic test mandates that the entirety of the marks in question
must be considered in determining confusing similarity.
In determining whether the trademarks are confusingly similar, a
comparison of the words is not the only determinant factor. The trademarks in
their entirety as they appear in their respective labels or hang tags must also
be considered in relation to the goods to which they are attached. The
discerning eye of the observer must focus not only on the predominant words but
also on the other features appearing in both labels in order that he may draw
his conclusion whether one is confusingly similar to the other.
To arrive at a proper resolution of this case, it is important to
bear in mind the following distinctions between infringement of trademark and
unfair competition.
(1)
Infringement of trademark is the unauthorized use of a trademark, whereas
unfair competition is the passing off of one’s goods as those of another.
(2) In
infringement of trademark fraudulent intent is unnecessary whereas in unfair
competition fraudulent intent is essential.
(3) In
infringement of trademark the prior registration of the trademark is a
prerequisite to the action, whereas in unfair competition registration is not
necessary. 8
In this situation, these factors should always be considered in
determining whether two trademarks are confusingly similar, the two marks in
their entirety as they appear in the respective labels must be considered in
relation to the goods to which they are attached; the discerning eye of the
observer must focus not only on the predominant words but also on the other features
appearing on both labels.
On this situation it is so unjust for Brand B to give out such
tickets knowingly that they are within the vicinity of the FBA with being Brand
a as the major sponsor of such event.
Their rights have to respected and the government must lay a hand in
protecting such company from Infringement and Unfair Competition.
