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Protecting intellectual property rights in the Philippines

Twenty five years ago, the Intellectual Property Code of the Philippines (IP Code), or Republic Act 8293, authored by the late Senator Raul S. Roco, was signed into law in June 6, 1997 and took effect on January 1, 1998.

The term “intellectual property rights” consists of (a) copyright and related rights; (b) trademarks and service marks; (c) geographic indications; (d) industrial designs; (e) patents; (f) layout-designs (topographies) of integrated circuits; and (g) protection of undisclosed information.

As industries and technology evolve, intellectual property continues to play a prominent role.

The law has adopted certain changes aimed at streamlining administrative procedures of registration and enhancing the enforcement of intellectual property rights in the country. One of its salient feature is the shift from the “first-to-invent/use” to “first-to-file” system.  

The IP Code lays down the remedies available to the IP owner in case of a violation of his rights through administrative, civil and criminal sanctions against violators.

The law aimed to protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in the law. Nobody else can copy or reuse that creation without the owner’s permission.

It consolidated existing laws in line with the Philippines’s adherence to the Paris Convention for the Protection of Industrial Property Rights, the Berne Convention for the Protection of Literary and Artistic Works, the Patent Cooperation Treaty, the TRIPS Agreement and the WIPO Copyright Treaty, among others.

One of the persons who actively worked for the enactment of the IP Code was Atty. Ignacio Sapalo, who was then the director of the Bureau of Patents, Trademarks and Technology Transfer (BPTTT), now the Intellectual Property Office of the Philippines (IPOPHL). He is currently the managing partner of Sapalo Velez Bundang and Bulilan (SVBB) law offices.

Established on August 1, 1976, SVBB law offices became one of the front-running law firms in the country engaged in intellectual property prosecution, maintenance, licensing, and enforcement.

One of the cases SVBB handled involved coffee trademarks in the case ofSociete des Produits Nestle, S.A. v. CFC  (GR 112012  April 4, 2001)where the Supreme Courtapplied the dominancy test and not the totality or holistic test.

The Supreme Court held that the term “MASTER” has acquired a certain connotation to mean the coffee products MASTER ROAST and MASTER BLEND produced by Nestlé. As such, the use by CFC of the term “MASTER” in the trademark for its coffee product FLAVOR MASTER is likely to cause confusion or mistake or even to deceive the ordinary purchasers.

The totality or holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks.

The Supreme Court explained that the application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item.

The Dominancy Test considers the dominant features in the competing marks in determining whether they are confusingly similar. Courts give greater weight to the similarity of the appearance of the product arising from the adoption of the dominant features of the registered mark, disregarding minor differences.

In the recent case of Kolin Electronics Co. Inc. (KECI) v. Kolin Philippines International Inc. (KPII) (GR 228165, February 9, 2021), the Supreme Court emphasized the abandonment of the “holistic test” and the adoption of the “dominancy test” in evaluating trademark resemblance.

 “The court hereby makes it crystal clear that the use of the holistic test in determining the resemblance of marks has been abandoned,” the Court said when it rejected the “kolin”trademark application filed by KPII for its television and DVD players.

Applying the dominancy test, KPII’s kolin mark resembles KECI’s KOLINmark because the word “KOLIN” is the prevalent feature of both marks. Phonetically or aurally, the marks are exactly the same.

The Supreme Court explained that between the dominancy test and the holistic or totality test, only the former has been incorporated in the IP Code.

Atty. Dennis R. Gorecho is a junior partner of the Sapalo Velez Bundang Bulilan law offices. He is also an officer of the Intellectual Property Association of the Philippines. For comments, e-mail info@sapalovelez.com, or call 0917-5025808 or 0908-8665786.

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