List of Marks Published for Opposition

      On 20 April 2004, the IPO released Volume VI, Issue Nos. 16 & 17 of the IPO Gazette, which contain the list of marks published for opposition. This list, which our Firm is offering as a service to our clients free of charge, may be viewed at
IPO Official Gazette Vol. 6, No. 16 (April 20, 2004)  and
IPO Official Gazette Vol. 7, No. 17 (April 20, 2004), respectively.

      Interested parties have up to thirty (30) days from the date of release of the IPO Gazette to file their opposition to the marks published therein. In the event of expiration of the period for filing an opposition or the denial of the oppositions filed, the IPO issues a Notice of Issuance to the applicant. Certificates of Registration of the published marks are then issued by the IPO upon payment by the applicant of the required fee.

      In almost all trademark and trade dress litigation in the Philippines, cases invariably turn on the issue of whether or not consumers are likely to confuse the defendant’s trademark or trade dress with that of the plaintiff.  Whether or not the adoption of a trademark or trade dress by a junior user is likely to cause confusion among consumers has been held by courts to be a question of fact to be determined according to particular and sometimes peculiar circumstances of each case.  Accordingly, courts have applied various tests in determining whether or not confusion is likely, with such factors as similarities in sound, dominant features and/or overall appearance taking center stage in the majority of decisions. 

      Unfortunately, unlike in foreign jurisdictions, survey evidence in trademark cases to prove actual consumer behavior and preferences has yet to gain widespread acceptance in the Philippines. Commonly perceived by many in the legal community to be hearsay, as the respondents are generally not available to be cross-examined, the admissibility of survey evidence has yet to be tested before Philippine courts. 

      Some experts believe that survey evidence may nonetheless be admitted under the doctrine of independently relevant statements. Under the said doctrine, evidence may be presented as to the statements made by a person, the respondents in a survey for example, if the fact that such statements were made would indicate a person’s mental state or condition. That is, independent of whether the statements made or the opinions held by the respondents are true or not, such statements are nevertheless relevant and therefore admissible since they tend to prove that such statements were in fact made and that they reflect the mental state or condition of the said respondents. With the issue of admissibility thus set aside, experts posit that litigants should be able to move on to more relevant and substantial issues, such as the validity of the survey techniques used and the weight to be accorded to the survey results. 

      Few can deny that, as an economical and systematic method for gathering information on a large number of representative individuals or social units, the value of a properly conducted survey in trademark cases cannot be underestimated.  A test case involving survey evidence in trademark cases is therefore strongly urged to challenge existing doctrines and to contribute towards the development of Philippine jurisprudence.

            On 23 September 2002, the Bureau of Customs (“BOC”) promulgated Administrative Order No. 06-2002 (“Order”) to improve existing border control measures against the importation of counterfeit goods or products.  Said Order took effect on 30 October 2002, or thirty (30) days after it was published on 30 September 2002. 

            Under said Order, the importation of the following goods is prohibited, and therefore subject to seizure and detention: 

•         Goods which copy or simulate any registered trademark or trade name without the authorization or consent of the registrant or its duly authorized agent; 

•         Goods which copy or simulate any well-known mark without the authorization or consent of the owner or its duly authorized agent; 

•        Goods which are judicially determined to be unfairly competing with products bearing marks, whether registered or not; 

•        Goods which constitute a piratical copy or likeness of any work on which a copyright subsists, regardless of whether said work is published or unpublished; 

•        Goods which present themselves as a substantial simulation of any machine, article, product, or substance duly patented under the Intellectual Property Code, without the authorization or consent of the patentee or its duly authorized agent; 

•        Goods which use a false or misleading description, symbol, or label that is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of the imported goods with another person's goods; and 

•        Goods which misrepresent their nature, characteristics, qualities, or geographic origin. 

      The Order also establishes a Registry where intellectual property owners can record their trademarks and patents as well as copyrighted works.  It is on the basis of such recordation that the BOC can monitor and inspect, on its own initiative, suspected imports to determine whether they are liable to seizure and forfeiture. 

      However, rights holders who have not recorded their trademarks, copyright and patents with the BOC may still request the BOC to issue alert or hold orders against any importation suspected of containing infringing goods. The Order provides for the issuance of alert or hold orders, as well as for the conduct of seizure proceedings. 

      Finally, the Order provides for the eventual creation of an Intellectual Property Unit (“IPU”), the function of which is to effectively implement border control measures for the protection and enforcement of intellectual property rights. The IPU is tasked with processing all applications for recordation of intellectual property rights, as well as receiving and acting on requests for issuances of alert or hold orders. The IPU likewise has investigative and prosecutorial powers, and serves as the liaison of the BOC for the IPO, other agencies of government concerned with intellectual property enforcement, and the private sector. 

      Pending the establishment of the IPU, the BOC created an interim IPU under Special Order No. 24-2002 dated 27 September 2002. 

      The full text of the Order can be obtained by sending an e-mail request to: <ip-department@cvclaw.com>

      The Philippine Supreme Court ruled that well-known retailer Shoemart, Inc. (“SM”) was not liable for either unfair competition or trademark and copyright infringement in a suit filed against it by Pearl & Dean (Phil.), Incorporated (“Pearl & Dean”) over its use of poster advertising light boxes similar to those manufactured by Pearl & Dean, as well as the name “Poster Ads”. [Pearl & Dean v. SM and North Edsa Marketing, G.R. No. 148222, 15 August 2003] 

      Pearl & Dean had previously entered into a contract with SM for the lease and installation of Pearl & Dean “Poster Ads” light boxes in SM Makati, which was later rescinded on grounds of non-performance. Two years later, SM contracted with a sub-contractor of Pearl & Dean for the fabrication and construction of poster advertising light boxes, which were eventually installed in the SM Megamall and SM North Edsa malls and leased out by SM under the name “Poster Ads”. Pearl & Dean sued SM for trademark and copyright infringement and unfair competition. 

      Reversing the lower court’s ruling, the Supreme Court ruled in favor of SM, pointing out that Pearl & Dean’s trademark registration for “Poster Ads” was limited to stationeries only and did not cover advertising light boxes in view of any convincing proof that the term “Poster Ads” had already acquired a secondary meaning in Philippine jurisdiction. The Supreme Court also stated that SM is not liable for copyright infringement since Pearl & Dean’s copyright is limited to the technical drawings only and does not cover the light boxes. The Supreme Court likewise ruled out unfair competition, pointing out that the term “Poster Ads” was generic and that there was no evidence that Pearl & Dean’s use of the term “Poster Ads” was distinctive or well-known.

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