|
|
|||
|
IP Views Trademarks and Unfair Competition: Doctrine of Secondary Meaning
Revisited When can a generic phrase or word be allowed to be used as a trademark? Is trademark infringement or unfair competition committed when a generic mark is subsequently used by an entity other than the first user? The Law Section 123 (h) of Republic Act No. 8293 or the Intellectual Property Code ("IP Code") disallows the registration of "signs that are generic for the goods or services that they seek to identify." However, this rule admits of an exception as when the mark or sign has obtained what jurisprudence term as "secondary meaning." The doctrine of secondary meaning means that a word or phrase originally incapable of exclusive appropriation with reference to an article in the market has, through its long and exclusive use by one entity has effectively been distinguished and identified as that representing the user and its products. The Case Pearl & Dean, Inc. (P&D) is a corporation engaged in the manufacture of advertising display units called light boxes. The light boxes were derived from technical drawings, which were registered with the National Library. P&D obtained a copyright certificate for the drawings, which were classified under category "O" of the Intellectual Property Decree (P.D. 49). The category pertains to "prints, pictorial illustrations, advertising copies, labels, tags, and box wraps." The light boxes were marketed under the trademark "Poster Ads" which was duly registered before the Bureau of Patents, Trademarks and Technology Transfer (BPTTT). P&D negotiated with Shoemart, Inc. (SM) for the lease and installation of its light boxes in two mall branches. For some reason, SM rescinded its contract with P&D. Later, SM contracted with several entities for the construction of light boxes for its chain of stores. In time, P&D discovered that SM installed light boxes in several of its stores; the light boxes are similar to those that P&D manufactures. P&D also found out that SM used the trademark "Poster Ads" in marketing its own version of the light boxes. Eventually, P&D demanded SM to refrain from using the subject light boxes, to remove them from its establishments and to refrain from using the trademark "Poster Ads". Not satisfied with SM's response to its demands, P&D sued SM for infringement of trademark and copyright, unfair competition and damages. The trial court ruled in favor of P&D and found SM to have infringed P&D's copyright and trademark "Poster Ads". On appeal, however, the Court of Appeals reversed the trial court's ruling and declared that SM did not infringe P&D's copyright. The Supreme Court sustained the Court of Appeals decision that there was no copyright infringement, trademark infringement and unfair competition committed against P&D. The Ruling The High Court explained that the phrase "Poster Ads" is a mere contraction of the term "poster advertising", which it considered as generic owing to its use in the field of poster advertising. As such, it is difficult to associate the trademark exclusively with P&D. Essentially, P&D's light boxes carrying the trademark "Poster Ads" could not be distinguished from the light boxes of SM carrying the same mark. Further, the court pointed out the inapplicability of the doctrine of secondary meaning in deciding that SM did not commit unfair competition. While generic terms can obtain a secondary meaning through long and exclusive use, this was unfortunately not the case with respect to the use of the trademark "Poster Ads" by P&D. The Court observed that there is no evidence that P&D's use of "Poster Ads" was distinctive or well-known for it to have acquired a secondary meaning. In fact, the Court noted the admission of P&D's expert witness that "it (referring to "Poster Ads") was difficult to identify it with any company." |
|
||||||||||||||||
| Copyright 2012 | All Rights Reserved | Bengzon, Negre, Untalan: Intellectual Property Attorneys | By MyGuaranteedSEO.com |