Trademark Applications assigned for examination by the Philippine Intellectual Property Office as of 30 November 2003

   As of 30 November 2003, trademark applications numbered 4-2003-0004936 and below, and which were filed not later than the first (1st) week of June 2003, have been assigned for examination by the IPO.

List of Marks Published for Opposition

   On 13 October 2003, the IPO released Volume VI, Issue No. 7 of the IPO Gazette, which contains 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 our website, at www.cvclaw.com.

   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.

   Domain names are names that translate into specific internet protocol (“IP”) addresses, which signal a computer’s presence on the internet and indicate its specific location. Each domain name is unique, with one name corresponding to only one computer.

   Domain names can function as trade names, trademarks or collective marks, depending on how they are used. When used to locate information about a particular company or enterprise, domain names function as trade names (e.g., “sanmiguel.com”). On the other hand, domain names function as trademarks when they are used to distinguish the goods or services of an enterprise from those of another (e.g., “7up.com”; “amazon.com”). Domain names function as collective marks when they are used to distinguish the origin, common characteristic or quality of goods and services from others of the same kind (e.g., “latondena.com”).

   Although the Philippine Intellectual Property Code (the “IP Code”) does not specifically refer to domain names, the Trademark Regulations have been amended to include domain names as service marks that may be afforded priority examination. Thus, under the IP Code, registered domain name owners have the exclusive right to prevent third parties who have not obtained their consent from using marks that are either identical or similar for goods or services which are identical or similar to those in respect of which the domain name is registered wherein such use would result in a likelihood of confusion. In the case of well-known domain names that are registered in the Philippines, such rights extend to goods and services which are not similar, with certain qualifications.

   In cases of unlawful use of their domain names by third parties, registered domain name owners can sue for infringement and damages under the IP Code. In such cases, the courts may grant an injunction to restrain the third party from further using the domain name involved, and even order the destruction of the infringing material.

   The Philippine Supreme Court upheld the registration of NSR Rubber Corporation (“NSR”) for its trademark CANON used for sandals (class 25) over the opposition of Canon Kabushiki Kaisha (“CKK”), owner of the registered mark CANON used for paints, toner and dye stuff (class 2). [Canon Kabushiki Kaisha v. Court of Appeals, 336 SCRA 266 (2000)].

   The Supreme Court held that a trademark owner cannot validly object to the use of the same trademark by another party for products which the trademark owner does not deal in. The Supreme Court pointed out the “world of difference” between CKK and NSR’s respective products, and noted that CKK had not ventured into the production of sandals, as indicated by its failure to list such products in its certificates of registration. The Supreme Court thus held that CKK, as a senior user, cannot and should not be allowed to feign that NSR, the junior user, has invaded the former’s exclusive domain, as a certificate of trademark registration only covers those goods specified in the certificate, subject to the conditions and limitations stated therein.

   The Supreme Court also pointed out that the guidelines issued by the then Ministry of Trade and Industry implementing Article 8 of the Paris Convention state that for an internationally well-known mark to be entitled to the protection extended by the Paris Convention, such mark must be used for the same or similar kinds of goods. CKK was not so entitled for failure to comply with this requirement.

   The Supreme Court held that the filing of the case for infringement of copyright by Wilson Ong Ching Kian Chung (“Chung”) against Lorenzo Tan (“Tan”) constitutes a bar to the subsequent filing of a case of annulment and cancellation of copyright certificate filed by Lorenzo Tan as the exclusive and sole distributor of vermicelli (sotanghon) for China National Cereal Oils & Foodstuffs Import and Export Corporations against Chung. [Ong Ching Kian Chuan v. China Nationals Cereals Oil and Foodstuffs Import and Export Corp. 333 SCRA 390 (2000)]

   Chung had filed a Complaint for Infringement of Copyright against Tan with the Quezon City Regional Trial Court for selling vermicelli (sotanghon) using Chung’s copyrighted cellophane wrapper with the two-dragons designed label. Tan in turn filed a Complaint for Annulment/Cancellation of Copyright Certificate No. 0-93-491 against Chung with the Manila Regional Trial Court, which restrained Chung from selling vermicelli products and using the copyrighted labels.

   Upon review, the Supreme Court found that although one case involved copyright infringement while the other case involved annulment and cancellation of copyright registration, both cases involved the same subject matter and prayed for the same reliefs. Thus, the Supreme Court set aside the decision of the Manila Regional Trial Court on the ground of multiplicity of suits and forum-shopping.

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