XVI. What is patent infringement; literal infringement test vs.

doctrine of equivalents or function-way-result equation/triple identity test; prosecution history estoppel as an exception to doctrine of equivalents- Sec. 76. Cases: Festo vs. Shoketsu Kinzou Kogyo Kabushiki. US case decided on May 28, 2002 (prosecution history estoppel) Godines v. Court of Appeals, 226 SCRA 338 (literal infringement test and doctrine of equivalents) Smith Kline Beckam Corp. vs. CA 409 SCRA 33 (doctrine of equivalents) Bar. 1993, 1985, 1977 remedies of patent holder Trademarks I. History of trademarks Case: Mirpuri vs. CA II. Rationale for Protection of Trademarks Case: Societe Des Produits Nestle S.A. vs. CA, 256 SCRA 207 III. Functions of Trademark In Philippine jurisprudence, the function of a trademark is: 1. to point out distinctly the origin or ownership of the goods to which it is affixed; 2. 2 to secure him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; 3. to assure the public that they are procuring the genuine article; 4. to prevent fraud and imposition, and 5. to protect the manufacturer against substitution and sale of an inferior and different article as his product. Modern authorities on trademark law view trademarks as performing three distinct functions: 1. they indicate origin or ownership 2. they guarantee that an article has a certain standard of quality 3. they advertise the articles they symbolize. IV. Distinguish trademark from label V. What may not be registered; doctrine of dilution; doctrine of secondary meaning or doctrine of distinctiveness- Sec. 123 123.1. A mark cannot be registered if it:

(a) Consists of IMMORAL, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (b) Consists of the FLAG OR COAT OF ARMS or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; (c) Consists of a name, portrait or signature identifying a particular living individual EXCEPT BY HIS WRITTEN CONSENT, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; (there must be written consent!) (d) Is IDENTICAL with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) The SAME goods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or CAUSE CONFUSION (e) Is IDENTICAL with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, WHETHER OR NOT IT IS REGISTERED HERE, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is

applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use; (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify; (i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (l) Consists of color alone, unless defined by a given form; or (m) Is contrary to public order or morality. Doctrine of dilutionDoctrine of secondary meaning or doctrine of distinctiveness- Also called the doctrine of distinctiveness of trademarks and name, the doctrine of secondary meaning is a doctrine wherein a long time exclusive and continuous use of a mark name which is unregistrable for being geographical, descriptive or a surname, such that the mark or name has lost its primary meaning and it becomes associated in the public mind with particular goods, entitles the user to have said name or mark registered. The doctrine of secondary meaning originates in the field of trademark law. Its application has, however, been extended to corporate name since the right to use a corporate name to the exclusion of others is based upon the same principle which underlines the right to use a particular trademark or tradename. .

Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to this article that, in that trade and to the group of purchasing public, the word or phrase has come to mean that the article was his produce. This circumstance has been referred to as the distinctiveness into which the name or phrase has evolved through the substantial and exclusive use of the same for a considerable period of time. Consequently, the same doctrine or principle cannot be made to apply where the evidence did not prove that the business has continued for so long a time that it has become of consequence and acquired a good will of considerable value such that its articles and produce have acquired a well-known reputation, and confusion will result by the use of the disputed name. (Lyceum vs. CA 219 SCRA 610) The fact alone that an institution had been using the word lyceum for a long period of time did not amount to mean that the said word had acquired secondary meaning in its favor because the petitioner failed to prove that it had been using the same word all by itself to the exclusion of others. More so, when there was no evidence presented to prove that confusion will surely arise if the same word were to be used by other educational institutions. An institution is not entitled to a legally enforceable exclusive right to use the word lyceum in its corporate name and that other institutions may use Lyceum as part of their own corporate names. To determine whether a given corporate name is identical or confusingly or deceptively similar with another entitys corporate name, it is not enough to ascertain the presence of Lyceum or Liceo in both names. One must evaluate corporate names in their entirety and when the name of petitioner is juxtaposed with the names of private respondents, they are not reasonably regarded as identical or confusingly or deceptively similar with each other.