Spot the not: Creating a hybrid test for trademark infringement

• Main Author: Alvaera, Roque Aldrich B.
• Format: text
• Language: English
• Published: Animo Repository 2013
• Subjects: Trademark infringement—Philippines; Intellectual Property Law
• Online Access: https://animorepository.dlsu.edu.ph/etd_masteral/6819
• Institution: De La Salle University

A trademark, as defined by Fr. Aquino, is anything which is adopted and used to identify the source or origin of goods and helps differentiate goods and services from each other. Thus, it has become a valuable marketing tool for it is the primary thing that separates one’s goods and services from its competitors. Given a trademark’s value, the law has provided ways of protecting its owners. Registration of trademarks allows the owner to acquire exclusive rights to the use of that mark and prevent others from using the same or similar marks on identical or related goods and services. Despite the protection provided by the law, trademark infringement is still widespread in the Philippines. In order to establish trademark infringement, the owner must show that a reasonably prudent consumer would likely be confused by the use of the same or a similar trademark on potentially competing products. Infringement is not limited to confusion of consumers as to source, but includes confusion of any kind with respect to consumers or potential consumers. Courts have even found a likelihood of confusion to exist where the public at large could be confused, even though the actual purchasers themselves are not confused. Infringement cases do not require that there be an actual imitation of the trademark. The controlling principle is what the law describes as “colorable imitation” which denotes a close or ingenious imitation as to be calculated to deceive ordinary persons. As a result, the courts have developed the two tests for infringement – the dominancy and the holistic tests. A review of jurisprudence has shown a conflicting application of both tests. This paper proposes a hybrid test which combines the features of the two established tests and creates a process which helps shape the kind of scrutiny necessary to accurately determine trademark infringement.