Businesses are recognizing the importance of protecting their brand’s reputation and goodwill in the competitive market. Without a mark that signifies ownership, an enterprise is vulnerable to infringement. In the Philippines, the Intellectual Property Code (IP Code)1 governs the guidelines for trademark protection and defines their limitations.
This article will give you a rundown on the basics of trademark infringement to protect your goods and services.
What is Trademark Infringement?
Justice Caguioa, citing Prosource International, Inc. v. Horphag Research Management SA, emphasized that to establish trademark infringement, the following elements must be proven:
(l)the trademark being infringed is registered in the IPO; (2) the trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer; (3) the infringing mark is used in connection with the sale, offering for sale, or advertising of any goods, business, or services; or the infringing mark is applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services; (4) the use or application of the infringing mark is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and (5) it is without the consent of the trademark owner or the assignee thereof.2
Essentially, if the competing trademark contains the dominant features of another enterprise, and confusion would likely result, there is infringement.
Trademark Infringement: Penalties and Remedies
The penalties that the courts will order, such as payment of damages, injunction, and destruction of goods for infringement are based on Sections 156 of the IP Code, viz:
SECTION 156. Actions, and Damages and Injunction for Infringement. ‑ 156.1. The owner of a registered mark may recover damages from any person who infringes his rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party.
When there is evidence of an actual intent to mislead the public or to defraud the complainant, the damages may be doubled subject to the court’s discretion.3
A plain reading of the above provisions reveals that these remedies may only be ordered by the court upon a finding of infringement. Consequently, it follows that the award of damages, issuance of an injunction, and the disposition and/or destruction of allegedly infringing goods could not be ordered by the court if a business has not committed any act constituting infringement.
In Zuneca Pharmaceutical v. Natrapharm, the Court ruled that Zuneca is not liable for trademark infringement, and therefore, not liable for damages, since a registered mark by Natrapharm has no effect against Zuneca who, in good faith, before the filing date, was using the mark for the purposes of its enterprise.4
Conclusion
Courts are empowered to order remedies against trademark infringement, but these are only applicable if infringement is proven. Hence, you must be equipped with the right knowledge about acts constituting infringement, so you may enforce your rights under the IP Code.
To know more about trademark infringement and how you can protect your enterprise from it, 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 Prosource International, Inc. v. Horphag Research Management SA, 620 Phil. 539 (2009).
3 Intellectual Property Code of the Philippines, §156.3.
4 Zuneca Pharmaceutical v. Natrapharm, G.R. No. 211850, September 8, 2020. See also Sec.159.1 of the IP Code.
