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A situation arises when DOW JONES & CO., INC., a foreign firm representing two big time and well known newspapers of world wide repute and wide circulation but not doing business in the Philippines, through a local law firm, filed an administrative action of "TRADE DRESS INFRINGEMENT" against a local newspaper, represented herein by PHILIPPINES BUSINESS STAR to:
The demand letter elicited negative response and hence, a verified Complaint was filed with the DTI-Office of Legal Affairs for formal hearing/adjudication per Executive Order No. 913.
From the allegations in said complaint, DOW JONES & CO., INC. is a foreign corporation not doing business in the Philippines and is engaged in the publication, among others, of "The Wall Street Journal" and "The Asian Wall Street Journal" which are pioneer international business newspapers, circulated and sold worldwide, including the Philippines; that it has adopted and constantly employed for approximately fifty (50) years a distinctive format, print font, masthead, style and layout for "The Wall Street Journal" and adopted since it was first published on September 1, 1976. The result of continued use of said clients, have come to identify upon the readers worldwide, "the singular characteristic, peculiar and distinctive "trade dress" which has gained public recognition and acceptance not only as a symbol of quality but also as unmistakable identifying mark.
Based on the attached DECISION, the Philippine Business Star was found to have committed unauthorized imitation and use of distinctive trade dress of Complainants which constitutes unfair competition and false designation of origin in violation of Sections 29 and 30 of Republic Act No. 166, as amended (The Trademark Law of the Philippines).
Section 29 of R.A. No. 166, as amended, provides:
"Sec. 29. Unfair Competition, rights and remedies. ¡V 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 mark or trademark is employed, has a properly rights in the goodwill of the said goods, business or services so identified which will be protected in the same manner as other property rights. Such a person shall have the remedies provided in Section 23, Chapter V hereof.Any 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 services for those of the one having established such goodwill, shall be guilty of unfair competition, and shall be subject to an action therefor."
Section 30 of R.A. 166, as amended further provides:
"Sec. 30. False designation of origin and fake description forbidden. ¡V Any person who shall affix, apply, annex or use in connection with any goods or services, or any containers for goods a false designation of origin or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, and any person who shall, with knowledge of a falsely of such designation of origin or description or representation, cause or procure the same to enter into commerce, shall be liable to a civil action for damages and injunction provided in Section Twenty-Three, Chapter V hereof, by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation."
A claim for trade dress infringement under Section 43 (a) of Lanham Act, must be based on three showings. First, the plaintiff must demonstrate that the trade dress of its product is primarily non-functional. Second, the plaintiff must establish that the trade dress of its product has acquired "Secondary meaning" i.e. that the public has come to recognize the trade dress as associated with plaintiff's product. Third, the plaintiff must show that the defendant's trade dress is likely to cause confusion or mislead consumers wither by causing them to think that the defendant's product or by causing them to think that the two products come from the same source.
Due to dearth of local jurisprudence on the matter, the DECISION arrived at was patterned more on foreign jurisprudence and thus, on the basis of the facts presented on this case and the evidence adduced by Complainant, it is beyond cavil that the latter has succeeded in establishing the three required showings.
And finally, the insertion of Section 21-A in the Trademark Law of the Philippines, which allows a foreign corporation or juristic person to bring an action in the Philippine Courts for infringement of a mark or trademark, for unfair competition, or false designation of origin and false description. "Whether or not it has been licensed to do business in the Philippines under the Corporation Law, at the time it brings complaint" (General Garment Corporation vs. Director of Patents, 41 SCRA 50).
Nota Bene:
* The aforecited quoted provisions of the Trademark L of the Philippine cited in the "case" has been totally amended by R.A. 8293 otherwise known as the Intellectual Property Code of the Philippines of 1999.
* The adverse ruling against THE PHILIPPINE BUSINESS STAR finding it guilty by the DTI-Office of Legal Affairs of TRADE DRESS INFRINGEMENT was not appealed from by Respondent to the Office of the President of the Philippine (Exhaustion of Administrative Remedies) per E.O. 292 (Administrative Code of 1987) within the reglementary period. Nonetheless, and even without the issuance of a Writ of Execution, the herein Respondent, THE PHILIPPINE BUSINESS STAR opted to cease business operation. But recently a new BUSINESS STAR has been in circulation in the Philippines having a new changed format, font, masthead and style, however, in a tabloid form.