which may not be diminished by the expedient act of utilizing a person to obtain goods from the supplier to defeat the very purpose for which the exclusive distributorship was conceptualized at the expense of the exclusive distributor. Also, the House of Mayfair in England was duped into believing that the goods ordered through FNF Trading was to be shipped to Nigeria only but the goods were actually sold in the Philippines.
Q. What does this case have to do with IP rights? (actual question asked by Negre)
A. IP rights, like exclusive distributorship, are proprietary rights which a party may protect.
Q. Co. A based in Singapore has exclusive distribution with Co. B in RP for product “D.” Can Co. B prevent Co. C from bringing the product to the Philippines?
A. Yes.
Q. What if C is not aware of the exclusive distributorship?
A. From the case, it seems that intent is required. (but answer changes later) Q. What if the product is a life-saving drug imported by the government?
A. The government may probably import it by exerting its police power.
Q. Where do you draw the line?
A. Maybe for life-saving drugs, or important technologies like fast growing rice palay. If not, government will be depriving persons of proprietary rights (property) without due process.
Q. What does TRIPS and WTO provide on parallel importation?
A. Once the product is distributed, he can no longer control resale because the right is limited to the first distribution.
Q. So should B have been able to prevent importation, since after the first sale, there is no more right to control sale? Won’t there be a monopoly if this is the case?
A. Yes, it does seem that way, because only the government, in the exercise of police power, can deprive persons of property rights without due process.
S
EC
. 161. A
UTHORITY TO
D
ETERMINE
R
IGHT TO
R
EGISTRATION
. - I
N ANY ACTION INVOLVING A REGISTERED MARK
,
THE
COURT MAY DETERMINE THE RIGHT TO REGISTRATION
,
ORDER THE CANCELLATION OF A REGISTRATION
,
IN WHOLE OR IN
PART
,
AND OTHERWISE RECTIFY THE REGISTER WITH RESPECT TO THE REGISTRATION OF ANY PARTY TO THE ACTION IN THE
EXERCISE OF THIS
. J
UDGMENT AND ORDERS SHALL BE CERTIFIED BY THE COURT TO THE
D
IRECTOR
,
WHO SHALL MAKE
APPROPRIATE ENTRY UPON THE RECORDS OF THE
B
UREAU
,
AND SHALL BE CONTROLLED THEREBY
.
S
EC
. 162. A
CTION FOR
F
ALSE OR
F
RAUDULENT
D
ECLARATION
. - A
NY PERSON WHO SHALL PROCURE REGISTRATION IN THE
O
FFICE OF A MARK BY A FALSE OR FRAUDULENT DECLARATION OR REPRESENTATION
,
WHETHER ORAL OR IN WRITING
,
OR BY
ANY FALSE MEANS
,
SHALL BE LIABLE IN A CIVIL ACTION BY ANY PERSON INJURED THEREBY FOR ANY DAMAGES SUSTAINED IN
CONSEQUENCE THEREOF
.
S
EC
. 163. J
URISDICTION OF
C
OURT
. - A
LL ACTIONS UNDER
S
ECTIONS
150, 155, 164,
AND
166
TO
169
SHALL BE BROUGHT
BEFORE THE PROPER COURTS WITH APPROPRIATE JURISDICTION UNDER EXISTING LAWS
.
S
EC
. 164. N
OTICE OF
F
ILING
S
UIT
G
IVEN TO THE
D
IRECTOR
. - I
T SHALL BE THE DUTY OF THE CLERKS OF SUCH COURTS
WITHIN ONE
(1)
MONTH AFTER THE FILING OF ANY ACTION
,
SUIT
,
OR PROCEEDING INVOLVING A MARK REGISTERED UNDER
THE PROVISIONS OF THIS
A
CT
,
TO NOTIFY THE
D
IRECTOR IN WRITING SETTING FORTH
:
THE NAMES AND ADDRESSES OF THE
LITIGANTS AND DESIGNATING THE NUMBER OF THE REGISTRATION OR REGISTRATIONS AND WITHIN ONE
(1)
MONTH AFTER
THE JUDGMENT IS ENTERED OR AN APPEAL IS TAKEN
,
THE CLERK OF COURT SHALL GIVE NOTICE THEREOF TO THE
O
FFICE
,
AND
THE LATTER SHALL ENDORSE THE SAME UPON THE FILEWRAPPER OF THE SAID REGISTRATION OR REGISTRATIONS AND
INCORPORATE THE SAME AS A PART OF THE CONTENTS OF SAID FILEWRAPPER
. (
N
)
S
EC
. 165. T
RADE
N
AMES OR
B
USINESS
N
AMES
.
-165.1. A
NAME OR DESIGNATION MAY NOT BE USED AS A TRADE NAME IF BY ITS NATURE OR THE USE TO WHICH SUCH
NAME OR DESIGNATION MAY BE PUT
,
IT IS CONTRARY TO PUBLIC ORDER OR MORALS AND IF
,
IN PARTICULAR
,
IT IS LIABLE
TO DECEIVE TRADE CIRCLES OR THE PUBLIC AS TO THE NATURE OF THE ENTERPRISE IDENTIFIED BY THAT NAME
.
165.2. (
A
) N
OTWITHSTANDING ANY LAWS OR REGULATIONS PROVIDING FOR ANY OBLIGATION TO REGISTER TRADE
NAMES
,
SUCH NAMES SHALL BE PROTECTED
,
EVEN PRIOR TO OR WITHOUT REGISTRATION
,
AGAINST ANY UNLAWFUL ACT
COMMITTED BY THIRD PARTIES
.
(
B
) I
N PARTICULAR
,
ANY SUBSEQUENT USE OF THE TRADE NAME BY A THIRD PARTY
,
WHETHER AS A TRADE NAME
OR A MARK OR COLLECTIVE MARK
,
OR ANY SUCH USE OF A SIMILAR TRADE NAME OR MARK
,
LIKELY TO MISLEAD
THE PUBLIC
,
SHALL BE DEEMED UNLAWFUL
.
165.3. T
HE REMEDIES PROVIDED FOR IN
S
ECTIONS
153
TO
156
AND
S
ECTIONS
166
AND
167
SHALL APPLY MUTATIS
MUTANDIS
.
165.4. A
NY CHANGE IN THE OWNERSHIP OF A TRADE NAME SHALL BE MADE WITH THE TRANSFER OF THE ENTERPRISE OR
PART THEREOF IDENTIFIED BY THAT NAME
. T
HE PROVISIONS OF
S
UBSECTIONS
149.2
TO
149.4
SHALL APPLY MUTATIS
MUTANDIS
.
S
EC
. 166. G
OODS
B
EARING
I
NFRINGING
M
ARKS OR
T
RADE
N
AMES
. - N
O ARTICLE OF IMPORTED MERCHANDISE WHICH SHALL
COPY OR SIMULATE THE NAME OF ANY DOMESTIC PRODUCT
,
OR MANUFACTURER
,
OR DEALER
,
OR WHICH SHALL COPY OR
SIMULATE A MARK REGISTERED IN ACCORDANCE WITH THE PROVISIONS OF THIS
A
CT
,
OR SHALL BEAR A MARK OR TRADE NAME
CALCULATED TO INDUCE THE PUBLIC TO BELIEVE THAT THE ARTICLE IS MANUFACTURED IN THE
P
HILIPPINES
,
OR THAT IT IS
MANUFACTURED IN ANY FOREIGN COUNTRY OR LOCALITY OTHER THAN THE COUNTRY OR LOCALITY WHERE IT IS IN FACT
MANUFACTURED
,
SHALL BE ADMITTED TO ENTRY AT ANY CUSTOMHOUSE OF THE
P
HILIPPINES
. I
N ORDER TO AID THE OFFICERS
OF THE CUSTOMS SERVICE IN ENFORCING THIS PROHIBITION
,
ANY PERSON WHO IS ENTITLED TO THE BENEFITS OF THIS
A
CT
,
MAY REQUIRE THAT HIS NAME AND RESIDENCE
,
AND THE NAME OF THE LOCALITY IN WHICH HIS GOODS ARE MANUFACTURED
,
A COPY OF THE CERTIFICATE OF REGISTRATION OF HIS MARK OR TRADE NAME
,
TO BE RECORDED IN BOOKS WHICH SHALL BE
KEPT FOR THIS PURPOSE IN THE
B
UREAU OF
C
USTOMS
,
UNDER SUCH REGULATIONS AS THE
C
OLLECTOR OF
C
USTOMS WITH THE
APPROVAL OF THE
S
ECRETARY OF
F
INANCE SHALL PRESCRIBE
,
AND MAY FURNISH TO THE SAID
B
UREAU FACSIMILES OF HIS
NAME
,
THE NAME OF THE LOCALITY IN WHICH HIS GOODS ARE MANUFACTURED
,
OR HIS REGISTERED MARK OR TRADE NAME
,
AND THEREUPON THE
C
OLLECTOR OF
C
USTOMS SHALL CAUSE ONE
(1)
OR MORE COPIES OF THE SAME TO BE TRANSMITTED TO
EACH COLLECTOR OR TO OTHER PROPER OFFICER OF THE
B
UREAU OF
C
USTOMS
. (S
EC
. 35, R. A. N
O
. 166)
"
Q. Can the customs seize the goods?
A. It appears under this section that all they can do is to prevent entry. But under Art. 9 of the Paris Convention,
“All goods unlawfully bearing a trademark or trade name shall be seized on importation into those countries of the Union where such mark or trade name is entitled to legal protection.” Note that under the Paris convention, authorities shall not be bound to effect seizure. If the legislation of a country does not permit seizure on importation, it shall be replaced by prohibition of importation or by seizure on inside the country.
S
EC
. 167. C
OLLECTIVE
M
ARKS
. -
167.1. S
UBJECT TO
S
UBSECTIONS
167.2
AND
167.3, S
ECTIONS
122
TO
164
AND
166
SHALL APPLY TO COLLECTIVE
MARKS
,
EXCEPT THAT REFERENCES THEREIN TO
"
MARK
"
SHALL BE READ AS COLLECTIVE MARK
."
167.2 (
A
) A
N APPLICATION FOR REGISTRATION OF A COLLECTIVE MARK SHALL DESIGNATE THE MARK AS A COLLECTIVE
MARK AND SHALL BE ACCOMPANIED BY A COPY OF THE AGREEMENT
,
IF ANY
,
GOVERNING THE USE OF THE COLLECTIVE
MARK
.
(
B
) T
HE REGISTERED OWNER OF A COLLECTIVE MARK SHALL NOTIFY THE
D
IRECTOR OF ANY CHANGES MADE IN
RESPECT OF THE AGREEMENT REFERRED TO IN PARAGRAPH
(
A
).
167.3. I
N ADDITION TO THE GROUNDS PROVIDED IN
S
ECTION
149,
THE
C
OURT SHALL CANCEL THE REGISTRATION OF A
COLLECTIVE MARK IF THE PERSON REQUESTING THE CANCELLATION PROVES THAT ONLY THE REGISTERED OWNER USES
THE MARK
,
OR THAT HE USES OR PERMITS ITS USE IN CONTRAVENTION OF THE AGREEMENTS REFERRED TO IN
S
UBSECTION
166.2
OR THAT HE USES OR PERMITS ITS USE IN A MANNER LIABLE TO DECEIVE TRADE CIRCLES OR THE
PUBLIC AS TO THE ORIGIN OR ANY OTHER COMMON CHARACTERISTICS OF THE GOODS OR SERVICES CONCERNED
.
167.4. T
HE REGISTRATION OF A COLLECTIVE MARK
,
OR AN APPLICATION THEREFOR SHALL NOT BE THE SUBJECT OF A
LICENSE CONTRACT
.
S
EC
. 168. U
NFAIR
C
OMPETITION
, R
IGHTS
, R
EGULATION AND
R
EMEDIES
. -
168.1. A
PERSON WHO HAS IDENTIFIED IN THE MIND OF THE PUBLIC THE GOODS HE MANUFACTURES OR DEALS IN
,
HIS
BUSINESS OR SERVICES FROM THOSE OF OTHERS
,
WHETHER OR NOT A REGISTERED MARK IS EMPLOYED
,
HAS A PROPERTY
RIGHT IN THE GOODWILL OF THE SAID GOODS
,
BUSINESS OR SERVICES SO IDENTIFIED
,
WHICH WILL BE PROTECTED IN
THE SAME MANNER AS OTHER PROPERTY RIGHTS
.
168.2. A
NY PERSON WHO SHALL EMPLOY DECEPTION OR ANY OTHER MEANS CONTRARY TO GOOD FAITH BY WHICH HE
SHALL PASS OFF THE GOODS MANUFACTURED BY HIM OR IN WHICH HE DEALS
,
OR HIS BUSINESS
,
OR SERVICES FOR THOSE
OF THE ONE HAVING ESTABLISHED SUCH GOODWILL
,
OR WHO SHALL COMMIT ANY ACTS CALCULATED TO PRODUCE SAID
RESULT
,
SHALL BE GUILTY OF UNFAIR COMPETITION
,
AND SHALL BE SUBJECT TO AN ACTION THEREFOR
.
168.3. I
N PARTICULAR
,
AND WITHOUT IN ANY WAY LIMITING THE SCOPE OF PROTECTION AGAINST UNFAIR
COMPETITION
,
THE FOLLOWING SHALL BE DEEMED GUILTY OF UNFAIR COMPETITION
:
(
A
) A
NY PERSON
,
WHO IS SELLING HIS GOODS AND GIVES THEM THE GENERAL APPEARANCE OF GOODS OF
ANOTHER MANUFACTURER OR DEALER
,
EITHER AS TO THE GOODS THEMSELVES OR IN THE WRAPPING OF THE
PACKAGES IN WHICH THEY ARE CONTAINED
,
OR THE DEVICES OR WORDS THEREON
,
OR IN ANY OTHER FEATURE
OF THEIR APPEARANCE
,
WHICH WOULD BE LIKELY TO INFLUENCE PURCHASERS TO BELIEVE THAT THE GOODS
OFFERED ARE THOSE OF A MANUFACTURER OR DEALER
,
OTHER THAN THE ACTUAL MANUFACTURER OR DEALER
,
OR
WHO OTHERWISE CLOTHES THE GOODS WITH SUCH APPEARANCE AS SHALL DECEIVE THE PUBLIC AND DEFRAUD
ANOTHER OF HIS LEGITIMATE TRADE
,
OR ANY SUBSEQUENT VENDOR OF SUCH GOODS OR ANY AGENT OF ANY
VENDOR ENGAGED IN SELLING SUCH GOODS WITH A LIKE PURPOSE
;
(
B
) A
NY PERSON WHO BY ANY ARTIFICE
,
OR DEVICE
,
OR WHO EMPLOYS ANY OTHER MEANS CALCULATED TO
INDUCE THE FALSE BELIEF THAT SUCH PERSON IS OFFERING THE SERVICES OF ANOTHER WHO HAS IDENTIFIED
SUCH SERVICES IN THE MIND OF THE PUBLIC
;
OR
(
C
) A
NY PERSON WHO SHALL MAKE ANY FALSE STATEMENT IN THE COURSE OF TRADE OR WHO SHALL COMMIT
ANY OTHER ACT CONTRARY TO GOOD FAITH OF A NATURE CALCULATED TO DISCREDIT THE GOODS
,
BUSINESS OR
SERVICES OF ANOTHER
.
168.4. T
HE REMEDIES PROVIDED BY
S
ECTIONS
156, 157
AND
161
SHALL APPLY MUTATIS MUTANDIS
. Q. What is unfair competition?
A. It is the passing off of one’s goods as those of another.
C
OMPANA
G
ENERAL DE
T
ABACOS V
. A
LHAMBRA
C
IGAR
Compania files case against Alhambra who sold cigarettes bearing the words “Alhambra
