How Do You Determine if a Trademark is infringing?

Businesses spend heavily to build strong brands—through marketing, packaging, distribution, and years of reputation-building. Without trademark protection, that investment is always at risk. Trademark registration with the Intellectual Property Office of the Philippines (IPOPHL) gives brand owners the legal tools to protect their identity, prevent copycats, and secure the financial returns they deserve.

Unfortunately, many start-ups and small enterprises overlook this. Some unintentionally infringe on existing trademarks due to lack of clearance searches, while others deliberately ride on the goodwill of established brands. Every day, new businesses enter the Philippine market with marks that could confuse consumers if not properly vetted.

So, how does IPOPHL determine if one trademark infringes another? The answer lies in the principle of “likelihood of confusion.”

Identifying Trademark Infringement: Likelihood of Confusion

Under the Philippine Intellectual Property Code (RA 8293), a trademark cannot be registered if it is identical or confusingly similar to a registered mark or a well-known mark owned by another. The test applied is whether an ordinary purchaser would likely be misled into buying one product, thinking it is associated with another.

IPOPHL examiners, the Bureau of Legal Affairs (BLA), and the courts assess several factors when deciding if marks are confusingly similar:

1. Strength of the Mark

• Stronger, distinctive marks (e.g., coined or arbitrary words like Kodak or Xerox) enjoy broader protection.
• Weaker, descriptive marks face limited protection unless they acquire “secondary meaning” through extensive use and recognition.

📌 Example: In the Philippine case McDonald’s Corp. v. L.C. Big Mak Burger, Inc. (G.R. No. 143993, Aug. 18, 2004), the Supreme Court ruled that “Big Mak” for hamburgers infringed on “Big Mac.” Even though “mak” was spelled differently, the similarity in sound, look, and product type created a likelihood of confusion.

2. Similarity of the Marks

Examiners look at sight, sound, and meaning:

• Minor spelling changes or adding prefixes/suffixes are often not enough to avoid infringement.
• Marks that create a similar overall impression may still be considered confusing.

📌 Example: IPOPHL rejected “Samsung Style” for appliances because of the strong association with “Samsung,” showing how dominant elements of a mark weigh heavily in similarity analysis.

3. Relatedness of Goods or Services

Even if two marks look alike, infringement only exists if the goods or services are related enough to confuse buyers.

• Example: “Lexus” for cars was not held to conflict with “Lexis” for legal databases, since consumers are unlikely to think the same company sells both.

4. Degree of Care of Consumers

• Ordinary shoppers buying everyday items (e.g., soap, snacks) are more prone to confusion.
• Professional buyers or those purchasing high-value goods (e.g., insurance, real estate) are expected to exercise greater care.

5. Intent of the Alleged Infringer

While intent is not strictly required, evidence that a competitor deliberately copied a mark strengthens the infringement claim.

6. Evidence of Actual Confusion

Proof that consumers were misled is not mandatory but can be persuasive. Surveys, affidavits, or complaints may serve as evidence.

Why This Matters for Philippine Businesses

• Avoid Rejection: If your mark is too similar to an existing registration, IPOPHL may issue an office action or outright refusal.
• Protect Profits: Trademark infringement often leads to loss of direct sales and erosion of brand reputation.
• Secure Long-Term Value: Trademarks can become among a company’s most valuable assets (think Jollibee or San Miguel).

Real-World Protection: From Filing to Enforcement

1. Application & Examination – IPOPHL checks for absolute and relative grounds of refusal.
2. Publication & Opposition – Your mark is published in the IPO Gazette, giving third parties the chance to oppose.
3. Registration & Enforcement – Once registered, you can stop others from using confusingly similar marks through opposition, cancellation, or infringement actions.

📌 Example: In Philip Morris, Inc. v. Fortune Tobacco (G.R. No. 158589, June 27, 2006), the Court emphasized that trademark protection is meant to prevent consumer confusion and protect goodwill—not just to shield logos or words in isolation.

Conclusion

Trademark registration in the Philippines is more than a legal formality—it’s an investment in protecting your brand’s identity and profitability. By understanding the IPOPHL framework on likelihood of confusion, businesses can avoid costly disputes, safeguard their reputation, and ensure that the value of their brand benefits only them—not imitators.

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