Intellectual Property (IP) jurisprudence in the Philippines is still relatively young compared to other countries. However, a growing body of significant case law is steadily shaping the field of IP in the country.
This article will analyze recent and notable trademark infringement cases and their applications in today’s legal landscape.
Importance of Understanding Trademark Infringement Cases
Trademark infringement cases in the Philippines are crucial in shaping what we understand as brand integrity and fair competition. The influx of trademark infringement cases in the Philippines shows that unauthorized use of trademarks continually affects the reputation and trust that businesses have built with their customers.
In a competitive age where infringement is on the rise, navigating our way through trademark infringement cases is essential to keeping Philippine law relevant and responsive to IP challenges that confront us today.
3 Recent Jurisprudence on Trademark Infringement and their Applications
Building on the premise that jurisprudence on trademarks continues to grow, the three (3) significant cases discussed below will give you a head start on the trajectory of IP rights in the Philippines. These are:
1. Gloria Maris Shark’s Fin Restaurant, Inc. v. Pacifico Q. Lim, (2024)1
Following this trademark dispute that started in 2009, the Supreme Court (SC), in May 2024, ruled in favor of Gloria Maris in a case against Pacifico Lim, one of the incorporators of the fine dining Chinese restaurant, who had registered the trademark under his name instead of the company’s. The issue centered on whether Lim’s registration of the subject marks was made in bad faith.
The Court ruled in the affirmative, emphasizing that bad faith in the context of trademark registration means that the registrant has knowledge of prior creation and use of another by an identical or similar mark.
Concerning trademark infringement, note that registration done in bad faith confers no right to file an action for infringement as it is necessary for the acquisition over the mark.
2. Cymar International, Inc. v. Farling Industrial Co., Ltd. (2022)2
The case involves consolidated petitions arising from a series of trademark disputes between Farling Industrial Company, Ltd. (Farling), a Taiwanese baby product manufacturer, and its Philippine distributor, Cymar International, Inc. (Cymar). After a dispute over marketing expenses, Cymar registered five variations of Farling’s FARLIN trademark in the Philippines. Farling filed a cancellation suit, winning favorable rulings from both IPOPHL and the appellate court, with the Supreme Court ultimately ruling in Farling’s favor.
The Court reiterated that a ruling on the cancellation of registration of a trademark would leave a party to a suit without any cause of action for trademark infringement. Cancellation of registration of a trademark would deprive the registrant of protection from infringement from the moment judgment of cancellation became final.
3. Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks (2022)3
In this consolidated petition, the Court is confronted with whether Tanduay Distillers, Inc. is liable for trademark infringement in a complaint filed by Ginebra San Miguel concerning the trademark “GINEBRA”.
In resolving the issue, the Court applied the dominancy test. This test assesses whether the infringer has introduced only minor changes to an already registered mark and then relies on these slight variations to argue against identity or confusing similarity, thereby denying infringement. In this case, the Court found "GINEBRA" to be the dominant feature of the marks, indicating Tanduay’s intent to use "GINEBRA" as a distinctive identifier rather than a generic or descriptive term. As a result, the element of confusion was established.
Conclusion
Building a conclusion from the foregoing points to one realization: Key issues like trademark ownership, registration, and protection for distinctive marks highlight the courts' commitment to aligning with the legal standards under IP laws. This evolving jurisprudence strengthens the IP landscape, encouraging fair competition among businesses and trust among consumers.
Want to know more about trademark infringement cases? Book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 Gloria Maris Shark’s Fin Restaurant, Inc. v. Pacifico Q. Lim, G.R. No. 264919-21, (May 20, 2024)
2 Cymar International, Inc. v. Farling Industrial Co., Ltd., G.R. Nos. 177974, 206121,219072 and 228802, August 17, 2022
3 Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks, et. al., G.R. Nos. 196372, 210224, 216104, and 219632, August 9, 2022.
