Trademark Protection vis-à-vis Freedom of Expression

“No person shall be deprived of life, liberty, or property without due process of law, nor shall any person be denied the equal protection of the laws.”

                                                            Section 1, Article III, 1987 Constitution of the Philippines

 

 

“No law shall be passed abridging the freedom of speech, of expression, or of the press, or the right of the people peaceably to assemble and petition the government for redress of grievances.”

                                                            –Section 4, Article III, 1987 Constitution of the Philippines

 

 

Freedom of expression is one of the basic rights enjoyed by every person. No less than the supreme law of the land guarantees the right of every individual to enjoy his freedom of expression under Section 4, Article III. In international law, this is also recognized in Article 19 of the International Covenant on Civil and Political Rights[1] as well as in the Universal Declaration of Human Rights[2].

 

            Likewise, the 1987 Constitution protects the basic right to life, liberty and property as found in Section 1, Article III. Under the Civil Code, property includes trademarks and trade names[3]. Under Section 13, Article XIV of the 1987 Constitution, the State shall protect and secure the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such period as may be provided by law. To this end, Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, was passed into law.[4]

 

            Recent trends however have cause questions as to which of these would prevail, protection of intellectual property or the freedom of expression.

 

            The following scenario has been given: In case of a corporate sponsored event, should non-sponsor competing marks be allowed?

 

            The answer is YES!

 

 

Recent trend in trademark protection

 

 

In 2012, a major trend in trademark protection took place when the Summer Olympics were held in London. Various extreme measures were taken to protect the Olympic trademark and to prevent other forms of “ambush marketing”. Similar to the given scenario, the event prohibited non-sponsor brands from appearing in any form throughout the games.

 

At present, tickets are already being sold for Sochi 2014 Paralympic Games[5]. Similar to the London Olympics, strict terms and conditions are set forth in the tickets, including the following:

 

“14. Prohibited items.

 

xxxxx

 

14.2. The following is a list of items prohibited by the Law of the Russian Federation which may not be taken into a Venue. Sochi 2014 reserves the right to amend this list at any time or with respect to any Venue or Session:

 

                                xxxxx

 

LIST OF ITEMS RESTRICTED by Sochi 2014:

 

11. Items with trademarks, or other types of advertising signs or information 

 

12. Advertising materials of any kind,xxxx (including banners, streamers, posters, signs, and their analogs. Xxxx It is allowed to carry banners, not larger than 2×1 meters, whose content should be aimed at supporting the competing athletes and should not contain offensive, obscene, provocative texts, words, symbols and images 

     

xxxxx

 

15. Forbidden behavior

               

xxxxx

 

15.2. The following is an illustrative list of prohibited and restricted behavior within any Venue:

               

xxxxx

 

B. Breach of the public order, including:

     

xxxxx

 

6. Organizing and / or participating in unauthorized demonstrations and promotions. 

 

7. Unauthorized distribution of leaflets, booklets and publications, promotional materials and clothing. 

     

xxxxx

 

E. Unauthorized commercial activity including

 

1. Actions that fall under the definition of Ambush marketing (all intentional and unintentional attempt to create a false or unauthorized association with the Olympic and Paralympic movement and/or the Olympic and Paralympic Games). 

 

2. Demonstration of distinct brands and trademarks for promotional purposes, as well as other actions that violate the provisions of the policy of Clean Venue.” [6]

 

 

            Clearly, these are very stringent restrictions, which are aimed to fully protect the rights of the sponsors of the event. In particular, it aims at curtailing what could be considered as unfair competition and in ensuring the profits of the organizers and sponsors of the event.

 

However, consideration should be given as to how this affects the general public. How would their rights be affected? In the same way, should there also be consideration for the rights of such non-sponsor brands?

 

 

The Philippine Setting

 

 

While there is no legislation which would yet support the restrictions under the scenario and as implemented by the organizers of the Olympics, Philippine law clearly frowns upon unfair competition and infringement of trademarks and trade names.

 

Republic Act No. 8293 is the special law that governs intellectual property, particularly trademarks and trade names. It also provides for the remedies and penal provisions in case of infringement, to wit:[7]

 

“Sec. 155. Remedies; Infringement. – Any person who shall, without the consent of the owner of the registered mark:

 

155.1. 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; or

 

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply 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, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.”

 

 

 Likewise, there are provisions on unfair competition, as follows:

 

“Sec. 168. Unfair Competition, Rights, Regulation and Remedies. –

 

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. 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, 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. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair competition:

 

(a) Any 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) Any 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) Any 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.

 

xxxxx

 

It should be stressed that “[a]lthough the laws on trademark infringement and unfair competition have a common conception at their root, that is, a person shall not be permitted to misrepresent his goods or his business as the goods or business of another, the law on unfair competition is broader and more inclusive than the law on trademark infringement. The latter is more limited but it recognizes a more exclusive right derived from the trademark adoption and registration by the person whose goods or business is first associated with it. The law on trademarks is thus a specialized subject distinct from the law on unfair competition, although the two subjects are entwined with each other and are dealt with together in the Trademark Law (now, both are covered by the IP Code). Hence, even if one fails to establish his exclusive property right to a trademark, he may still obtain relief on the ground of his competitor’s unfairness or fraud. Conduct constitutes unfair competition if the effect is to pass off on the public the goods of one man as the goods of another. It is not necessary that any particular means should be used to this end.”[8]

 

However, it remains that the provisions of RA 8293 are not enough to support the restrictions as applied in the scenario and in the Olympic games. One may then ask, it is feasible for such a legislation to be passed in the Philippines? There are a lot of factors, legal and practical, to consider in answering this questions.

 

 

Freedom of Expression vs. Trademark Protection, which should prevail?

 

 

“[T]he protection of trademarks as intellectual property is intended not only to preserve the goodwill and reputation of the business established on the goods bearing the mark through actual use over a period of time, but also to safeguard the public as consumers against confusion on these goods[9].

 

“Relative to the question on confusion of marks and trade names, jurisprudence has noted two (2) types of confusion, viz.: (1) confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other; and (2) confusion of business (source or origin confusion), where, although the goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent.[10]

 

Following the scenario of restrictions in the “appearance” of non-sponsor competing brands in a corporate sponsored event, where would the confusion lie?

 

The restrictions are based on the possibility that the exposure of non-sponsor brands could result in confusion in the minds of the public that such non-sponsors are associated with the event. However, such confusion tends to depend on the person who sees such non-sponsor brands. As seen in the Olympic games, restrictions could be made general so as to “fully” protect the rights of the organizers and sponsors of the event. However, such general restrictions could be seen as a curtailment on the freedom of expression of every individual.

 

In the Philippines, it is not unusual for a person to wear a piece of clothing bearing a particular brand. The choice of clothes to wear could be considered part of an individual’s freedom of expression. This is one of the basic freedoms that every person enjoys, such that it is enshrined in the Philippine Constitution. Moreover, it is recognized in international law as an inherent freedom which should be upheld and protected.

 

To restrict a person from wearing a shirt which has a logo or a brand of a particular company would be tantamount to restricting his freedom to choose what to wear, his freedom to express his individual choice, and ultimately, his freedom of expression. In the same way, to prevent a person from using something which he owns, for the reason that it could result to free and unauthorized advertising, would certainly be another way to restrict his rights.

 

It can be seen that while trademark protection may be limited by freedom of expression, it may also be the other way around. As in the case of the Olympic games, where the protection of the interest of the organizers and sponsors was of primacy.

 

True, there is a need to protect the trademarks and trade names of the organizers/sponsors, however, should such be to the detriment of the freedom of an individual? Which should be of utmost importance, the inherent right of a person to express himself or the right of the corporate sponsors/organizers, whose main objective is profit?

 

Without a doubt, personal freedom of expression should prevail!

 

While the use of non-sponsor brands may result in ambush marketing, what should be considered is the intent. To the extent that there is intent to actually associate such competing mark with the sponsors and organizers and with the event itself, then such use may be restricted. However, in the absence of such intent, the freedom of an individual should not be curtailed, if only for the protection of the corporate few.

 


[1] International Covenant on Civil and Political Rights. Office of the United Nations High Commissioner for Human Rights. http://www2.ohchr.org/english/law/ccpr.htm

                                                                  

[2] Article 19 provides: “Everyone has the right to freedom of opinion and expression; this right includes freedom to hold opinions without interference and to seek, receive and impart information and ideas through any media and regardless of frontiers.”

 

[3] The relevant Civil Code provisions are as follows:

 

“Article 520. A trade-mark or trade-name duly registered in the proper government bureau or office is owned by and pertains to the person, corporation, or firm registering the same, subject to the provisions of special laws.”

 

“Article 521. The goodwill of a business is property, and may be transferred together with the right to use the name under which the business is conducted.”

 

[4] Section 2 declared that:

 

“The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act.

 

The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good.

 

It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines.”

 

[8] Mighty Corporation et. al. vs. E. & J. Gallo Winery et. al., G.R. No. 154342, July 14, 2004, citing E. Spinner & Co. vs. Neuss Hesslein Corporation, 54 Phil. 225, 231-232 [1930]

 

[9] Skechers, USA, Inc. vs. Interpacific Industrial Trading Corp, et. al.,G.R. No. 164321, March 23, 2011, citing Berris Agricultural Co., Inc., v. Norvy Abyadang, G.R. No. 183404, October 13, 2010.

 

[10] Ibid. Citing McDonald’s Corporation v. L.C. Big Mak Burger, Inc., and Sterling Products International, Incorporated v. Farbenfabriken Bayer Aktiengesellschaft, et al., 137 Phil. 838, 852 (1969).

 

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