The rise in trademark infringement cases in the Philippines stems from the challenge of balancing between intellectual rights protection and promoting fair competition. The Intellectual Property Code of the Philippines (IP Code)1 protects trademark owners from infringement, but legal defenses are also available to those accused of such.
This article will guide you in understanding the defences against trademark infringement grounded on legal and jurisprudential basis.
3 Defences Against Trademark Infringement
By examining the following legal defences against infringement, you will gain insights into how Philippine courts assess infringement claims and balance trademark rights. Before reading further, it is noteworthy that to identify the prevailing party in infringement disputes and establish whether trademark infringement occurred, courts must first resolve the issue of how each party acquired ownership of their respective marks. Thus, the following discussions will be grounded on how defences against infringement are connected with ownership and registration.
1. Prior use in good faith.
The provisions on trademark under the IP Code limited the remedies given to the owner of a right infringed. Section 159.1 of the IP Code, for example, provides that:
A registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise (omission supplied).2
Read as a whole, Section 159.1 of the IP Code contemplates that a prior user in good faith may continue to use its mark even after the registration of the same mark by the first-to-file registrant in good faith, subject to the condition that any transfer or assignment of the mark by the prior user in good faith should be made together with the enterprise or business or with that part of his enterprise or business in which the mark is used.
In Zuneca Pharmaceutical v. Natrapharm, Inc., the Court ruled that Zuneca Pharmaceutical is not liable for trademark infringement since it is considered as a prior user in good faith, hence, the law does not restrict its rights to a trademark even if it is using a mark that was subsequently registered by another person.3
2. Invalidity of the registration.
Marks registered contrary to the provisions of the IP Code are invalid, and therefore, constitute a void registration. In consequence, there will be no infringement when the mark was registered in bad faith or when an unregistrable mark was mistakenly allowed to be registered.
One of the rights conferred by the IP Code to trademark owners is the right to prevent others from the use of the same mark.4 Such right comes from a valid registration. It follows then that when your registration is void, you cannot file an action for infringement and enforce your right to the exclusive use of the mark.
3. Absence of Confusion.
When an otherwise prudent purchaser is induced to purchase one product in the belief that he is purchasing another, confusion takes place.5 The essential element of infringement under R.A. No. 8293 is that the infringing mark is likely to cause confusion. It follows, therefore, that if the use or application of the infringing mark or trade name does not cause or is not likely to confuse which would deceive the public, there would be no infringement.
Hence, a 2017 case decided by the Intellectual Property Office (IPO) through its Director General emphasized that Jolliville is not confusingly similar to Jollibee’s registered trademark. Consequently, Jolliville Holdings is free to register its trademark and no infringement exists.
Conclusion
Recent case law demonstrates that Philippine courts continue to evaluate these defences carefully, considering the context and intent behind each application to make informed and fair rulings. This balanced approach not only protects trademark rights but also supports a dynamic legal framework that adapts to an evolving market landscape.
To know more about trademark infringement defences, book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for other Purposes, Republic Act No. 8293, §1(January 1, 1998) [hereinafter Intellectual Property Code of the Philippines].
2 Intellectual Property Code of the Philippines, §159.1.
3 Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, September 8, 2020.
4 IntellectualProperty Code of the Philippines, §147.
5 Mighty Corporation v. E & J Gallo,434 SCRA 473 [2004].
