|
Today,
it is hard to imagine doing business without a
trademark. Commonly referred to as a “brand,” a
trademark is any visible sign which can distinguish the
goods or services of a business.
Even the
Supreme Court recognizes that a trademark performs the
following functions in the marketplace: 1) indicates the
origin of the goods it represents; 2) guarantees that
the goods are of a certain standard of quality; and 3)
advertises the goods.
A strong
trademark can convince buyers to purchase without need
of actually seeing, tasting or feeling the goods they
buy, such as when purchasing online. The growth of a
business enterprise also relies partly, if not mostly,
on the ability to expand its product line and for its
products to earn reputation or goodwill.
The
important role of a trademark in modern commerce
requires its adequate and effective protection.
Trademark protection essentially lies in the prevention
of its infringement or of unfair competition. There is
trademark infringement when the likelihood of confusion
will result in the use of the mark or of its colorable
imitation by an alleged infringer.
On the
other hand, unfair competition is the fraudulent passing
off of one’s goods as that of another.
Doubts
and confusion, however, exist on whether a registered
trademark owner may prevent the use of her mark or of
its imitation on different or unrelated goods. This
quandary compromises not only the value of a trademark,
but also the viability of a business.
In
Faberge v. Court of Appeals, 215 SCRA 326 (1992),
decided by the Supreme Court under the old law on
trademarks (Republic Act 166), the Court limited the
scope of trademark protection to goods that are
specifically enumerated in the certificate of
registration. As such, it ruled that there could be no
infringement or unfair competition in the use of a
similar or identical trademark for related goods which
are not enumerated in the trademark owner’s certificate
of registration.
In this
case, the registered owner for “BRUT” and “BRUT 33 and
Device” for men’s toiletries opposed the application for
registration of the mark “BRUTE” for men’s briefs. Since
the marks were not registered for briefs, the
application was allowed.
Two
principal criticisms may be raised against the ruling in
the Faberge case. First, it preempts a trademark owner
from legitimately expanding its business with the
goodwill or reputation previously earned by its
trademark. Second, it requires trademark owners to
register for all goods to protect itself from dilution
or copying of their trademarks.
Another
objection, which is legal in nature, is that the Faberge
decision, rendered by a division of the Supreme Court,
effectively overturned the prevailing doctrines
enunciated by the decisions of the Supreme Court en
banc.
These en
banc decisions were the cases of Chua Che v. Philippine
Patent Office, 13 SCRA 67 (1965) and Sta. Ana v. Maliwat,
24 SCRA 108 (1968).
In these
cases, the Supreme Court held that a trademark owner may
obtain relief against a subsequent user of the same or
similar mark even though the goods are not related, as
confusion as to origin may arise.
Under
the Constitution, no doctrine or principle of law laid
down by the Supreme Court in a decision rendered en banc
or by a division may be modified or reversed except by
the Supreme Court sitting en banc.
The
Faberge, Che Chua and Sta. Ana cases were all decided
under Republic Act 166, the old trademark law, and
before the Republic Act 8293, or the Intellectual
Property Code of the
Philippines
(the IP Code). Nevertheless, the Faberge doctrine has
been unqualifiedly reiterated on cases decided after the
IP Code but involving facts arising during the
effectivity of the old trademark law.
This
unqualified reiteration might give the impression that
the Faberge doctrine remains to be a good law.
A closer
examination of the IP Code would reveal, however, that
the Faberge doctrine has been abandoned.
The
intent to extend broader trademark protection to
trademark owners is apparent in the IP Code as its
provisions do not restrict protection to goods
specifically enumerated in the trademark owner’s
certificate of registration.
Section
138 of the IP Code expressly provides that a certificate
of registration is prima facie evidence of “the
registrant’s exclusive right to use the same in
connection with the goods or services and those that are
related thereto specified in the certificate.”
This
intent is, likewise, apparent from Section 123 (d),
prohibiting the registration of marks identical with a
registered mark in respect of closely related goods or
services, or if it nearly resembles such a mark as to be
likely to deceive or cause confusion.
This is
bolstered by Section 147.1, which grants the owner of a
registered trademark the exclusive right to prevent the
use of identical or similar signs or container for goods
and services which are identical or similar to those in
respect of which the trademark is registered, where such
use would result in a likelihood of confusion.
Additionally, under Section 147.2 of the IP Code, the
exclusive trademark rights of an owner of an
internationally well-known mark registered in the
Philippines extend to “goods and services which are not
similar to those in respect to which the mark is
registered. . . .”
In
relation to this, Section 123 (f) of the IP Code
prohibits the registration of marks identical to a
registered internationally well-known mark even if the
goods and services sought to be covered by the
subsequent registration are not similar.
Ultimately, the courts have the power to determine the
extent of protection that may be accorded to trademark
owners. The extent of protection will depend on their
definition of “similar” or “related” goods and services.
It is submitted, however, that the ruling in Faberge
should no longer be held controlling and be deemed
abandoned under the IP Code.
With the
present market that knows no boundaries, a trademark
cannot be so limited to what has been stated in its
registration in one country or to what it presently
represents. Considering advancements in technology and
communication, it will not be surprising if a trademark
can earn reputation and goodwill faster than a
manufacturer can produce a new product line. As such, a
trademark owner deserves protection against the use of
her mark on different goods, if the goods are so related
that the public will likely be misled that they come
from the same manufacturer.
If
Faberge would be upheld despite the clear provisions of
the IP Code, trademark owners will be greatly
prejudiced. The owner of well-known marks used for
clothing, for example, may not be able to use her marks
on perfumes and cosmetics if her certificate of
registration did not include the latter goods.
This
would go against the trend in the fashion industry for
designers to expand to the perfume and cosmetics
business after their trademarks have acquired a
following in the clothing market.
Worse,
it encourages unscrupulous persons to hijack well-known
marks from their legitimate owners and use them on goods
that are not covered by the trademark owners’
certificate of registration.
The
Faberge doctrine does not reward trademark owners but
punishes them for their investment and successes. This
is why it should be deemed repealed by the IP Code.
|
