All about infringement in a business

1. Infringement

2. Infringement
Any person who shall use, without the consent of the registrant of a
trademark, any reproduction, counterfeit, copy or colorable imitation of
the registered mark in connection with the sale, offering for sale or
advertising of any goods, business or services on or in connection with
which such use is likely to cause confusion or mistake or to deceive
purchasers. Imitations to labels, signs, prints, packages, wrappers or
advertisements shall be liable to a civil action by the registrant for any or
all of the remedies herein provided (Sec 22, Republic Act No. 166)

3. Infringement – What it Constitutes
1. Extent of similarity essential- while it is true that the degree of
resemblance between names or devices which is sufficient to warrant
interference of a court of equity is capable of exact definition , and that
each case must depend, for its correct solution on its own peculiar
facts and circumstances, yet it may be stated generally that the
similarity must be such as is likely to mislead purchasers of ordinary
caution and prudence. Or in other words the ordinary buyer, into belief
that the goods or wares are those of the business rival, in which case
injunctive relief will be afforded. If therefore is not necessary but the
similarity be such as to deceive persons have the two articles side by
side; nor is it essential that the purchaser has been actually deceived,
a manifest liability to deception being sufficient.

4. 2. Intention- there is authority to the effect that fraudulent intent is necessary to
constitute unfair competition by the use of names in such manner as to convey to
the trade the impression that the goods of one manufacturer are those of another,
and it has been declared that such circumstances must be made out as will show
wrongful intent in fact or justify that inference from the consequences of the act
complained of. On principle, however, it would seem that there should be no
distinction between a case of unfair competition and one of the infringement of a
trademark. Even though there has been an innocent simulation of another’s
goods, wares or trade name, such as to mislead the public to the injury of a
competitor, yet it would seem at least that when attention of defendant has been
called to the fact that has refused to avoid the simulation so as to prevent the
injury complained of, a case is then presented justifying the interposition of a court
of equity. Even though an imitation is unintentional yet if it is colorable, its use will
be enjoined and in no case it is necessary to show by direct evidence the
existence of an intention to defraud.

5. 3. Essentials to relief- the existence of a valid trade mark is
not essential to a right of action for unfair competition.
Irrespective thereof, persons have no right to dress their
goods up in such manner as to deceive an intending
purchaser and induce him to believe he is buying those of
another, and they may be restrained from so doing. To entitle
a person to such relief, a proprietary interest in the terms or
symbols used is held not essential, it being sufficient if he has
an interest in the goodwill of the business or in the other
property threatened.

6. 4. Certificate of Registration Prima Facie Evidence of
Validity- a certificate of registration of a mark or trade
name shall be prima facie evidence of the validity of the
registration, the registrant’s ownership of the mark or trade
name, and of the registrant’s exclusive right to use the
same in connection with the goods, business or services
specified in the certificate, subject t any conditions and
limitations therein stated.

7. 5. Rights and remedies- many person entitled to the exclusive use of a
registered mark or trade name may recover damages in:
a. Civil action from any person in infringes his rights, and the measure of
damages suffered shall be either the reasonable profit which the
complaining party would have made, has not the defendant actually
made out of the infringement, or in the event such measure of damages
cannot be readily a certain with reasonable certainty, then the court
may award as damages a reasonable percentage base on the amount
of gross sales of the defendant of 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.
b. Injunction- the complaining party, upon proper showing, may also be
granted injunction. (Sec. 23, R.A No. 166). An injunction is an order
requiring a person to refrain from a particular act.

8. Defenses in Unfair Competition

9. Be lawfuly
Defenses in Unfair Competition
The following defenses maybe set up by the dependant in an action for
unfair competition or infringement of trade mark or trade name.
1. That the trade mark cannot be lawfully appropriated; that is, that said
trade mark related only to the name, quality, or description of the
merchandise or geographical place of its production or origin.
2. There can be no trademark in the color of a label, nor in the method
of wrapping goods, nor the size or shape of the bottle, box or
package containing the goods.
3. That the trademark or trade name has not duly registered in
accordance with Act No. 666 (Sec. 4, as amended by act 3332, Sec.
1);

10. 4. That the plaintiff’s trade mark or trade name is used in
an unlawful business or is against public policy; or that the
plaintiff is himself an imitator with respect to the business
or profession carried on by him.
5. That different goods are involved in the use of such
trademark or trade name. for instance, there is no unfair
competition if one kind of goods say coffee, bears the
trademark “STAR” and ham also bears the same
trademark.