Who are liable for trademark infringement under Philippine law?
Under the IP Code, any person who commits the following acts without the consent of the owner of the registered mark is liable for trademark infringement:
a. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive
b. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply b. such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.
What are the remedies available to a trademark owner in case there is infringement?
In case of trademark infringement, the registered owner may file any of the following cases:
(a) Civil action to recover from the infringer damages sustained plus attorney’s fees and expenses of litigation, and to secure an injunction for the protection of his rights, provided, no damages may be recovered for acts committed more than four (4) years before the execution of the action for infringement.
(b) Criminal case for infringement;
(c) Administrative case before (i) the Department of Trade and Industry pursuant to Department Administrative Order 01, Series of 2000, implementing E.O. 913 and Ministry Order No. 69; or (ii) the Bureau of Legal Affairs of the IPO where the total damages claimed is not less than Php 200,000.00. Provisional remedies may be granted in accordance with the Rules of Court. No damages may be recovered for acts committed more than four (4) years before the execution of the action for infringement.