A group of young people entered Mall Of Asia arena to watch FIBA – Asia. At far, they seem like a group of cheerio shouting at the top of their lungs “Gilas Pilipinas!” Because of this, the cameras zoom in to them and feature the group on the big screen for about 30 seconds. Inadvertently the logo of a famous clothing line Aeropostale came out noticeably since everyone in the group is wearing the same shirt. When asked why they are “in uniform”, the group replied in unison that they purposively did it for the ease of identifying their companions since the arena is quite huge and there’s a pretty big chance of getting lost in case they got separated from the group.[1]

 

Will the act constitute any violation of the trademark law? Will it be right to apprehend the group and reprimand them from wearing the same shirt in group on their next participation in any exclusive event?

To judiciously discuss the answer to the above inquiry on the hypothetical example drawn by the author, we must first comprehend the following:

  1. What is a trademark and what is its function?
  2. What are the rights of the trademark owner and what are the limitations on the exercise of these rights?
  3. What are the acts that constitute as violation of the rights of the trademark owner?
  4. Does the limitation apply in this scenario thus, not violative of the trademark law?

 What is a trademark and what is its function?

 A “trademark” as defined under R.A. 166 of  the Trademark Law, is “any word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured, sold or dealt in by others.” R.A. No. 8293 or the Intellectual Property Code of the Philippines (IP Code) provided for a simpler definition such that a “trademark” is “any visible sign capable of distinguishing goods.”

 In Philippine jurisprudence, the function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.[2]

One important function of trademark as viewed by modern authorities is that, trademark advertise the articles they symbolize. Today, the trademark is not merely a symbol of origin and goodwill; it is often the most effective agent for the actual creation and protection of goodwill. It imprints upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfaction. In other words, the mark actually sells the goods. The mark has become the “silent salesman,” the conduit through which direct contact between the trademark owner and the consumer is assured. It has invaded popular culture in ways never anticipated that it has become a more convincing selling point than even the quality of the article to which it refers.[3]

What are the rights of the trademark owner and the limitation on the exercise of these rights?

Under Section 147.1 of the IP Code, the owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. A new provision in the code was added to extent the protection to internationally well-known trademark by the advent of the Philippine’s participation in various IP treaties as describe in Section 147.2 The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use.

However the exercise of these rights is not absolute.

The code provides for what is internationally known as “fair use” provision. Under Section 148, registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. This provision can be traced under Article 17 of The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which states that members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.[4]

What are the acts that constitute as violation of the rights of the trademark owner?

Under Section 155 of the IP Code, trademark infringement is committed by a person who shall, without the consent of the owner of the registered mark:

  • 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
  • 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 the provisions of the Intellectual Property Code (IP Code) of the Philippines are committed regardless of whether there is actual sale of goods or services using the infringing material.[5]

 

Does the limitation apply in this scenario thus, not violative of the trademark law?

A closer look at the scenario will tell us that the answer should be in the affirmative, thus the act is not violative of the trademark law. Fair use as succinctly discuss in the provision of the law includes the use of the names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of the goods or services of the registered mark. Provided, that such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. Wearing the shirt bearing the logo of the famous clothing line does not in any way mislead the public as to the source of the goods or services. There can be no prima facie assumption that the group intends to use for whatever purpose the registered mark other than for the enjoyment of such imprint on their shirt which happened to be the group’s official theme wear for the event.  

It cannot be mistaken with the prohibited acts provided in the code specifically the use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods. First, there is no intention to advertise said registered mark for commercial use. Second, the advertisement which was brought about the flashing on the big TV screen inside the arena is but a coincidence. And lastly, the intention if there’s any is not a prelude to the sale of the registered trademark imprint on the shirt but a mere expression of how this group of young people wanted to be perceived through their manner of dressing up which includes the choice of their apparels which in this case is Aeropostale.

 

Freedom of Expression

FREEDOM of expression (FOE) as a fundamental right of the people is recognized not just in the Philippines but also in all democracies of the world.  This right are spelled out in the same breath in international human rights laws, which the Philippines has signed on to and ratified.[6]

Article 19 of the Universal Declaration of Human Rights states: “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.” Article 19 (2) of the International Covenant on Civil and Political Rights affirms: “Everyone shall have the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds, regardless of frontiers, either orally, in writing or in print, in the form of art, or through any other media of his choice.”

In the Philippines, this right is expressly and distinctly guaranteed under the Bill of Rights of the Constitution, among other protections against abuse of the pervasive powers that have been entrusted to government. It is never a waste of words to quote them:

Article III, Section 4: “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.”[7]

Freedom of expression is not limited to oral or written expressions. It takes a variety of forms such as art, accessories, apparels or choice of clothing, hair style and grooming or through any other media. In the case at bar, we can deduce that the wearing of the Aeropostale shirt is a simple exercise of this freedom of expression by this group of young people. As one of the many other ways of expressing one’s self, dressing up can be done in accordance with the freedom of individuals to choose. You dress up the way you feel. If you feel like being yourself, you wear casual clothes or wear t-shirts and shorts. If you’re going to a formal event or a party, you wear formal attire. You dress up the way you feel or the way you want to be perceived by society.

The McCann Erickson Report of 2008 shows that a significant percentage of the population associate t-shirt brands with what they believe in socially or politically. In this era of social media prevalence, some even “wear what they swear” and in a matter of seconds, flood social media sites of their self portrait. For a lot of young people nowadays and even the public in general, the exercise of freedom of expression can be done in a simple act of wearing your favorite t-shirt. Notwithstanding, the same can be done by exercising your right as a consumer with ordinary expectation that you bought the shirt to be utilize at your own disposal no matter what the occasion is.

Jurisprudence however, recognizes that the freedom of expression is not absolute.  The State recognizes that the State may regulate freedom of expression so that the exercise thereof may not injure others or the interests of society or the public.[8]

 

The expectation of an Ordinary Consumer

In discussing the implication of the act done by in the scenario being discussed in this paper, we must also understand the expectation of an Ordinary Consumer. But, who is a consumer? A consumer is one that consumes, especially one that acquires goods or services for direct use or ownership rather than for resale or use in production and manufacturing. [9]

 

We must also take into account in the discussion of the expectation of an Ordinary Consumer the “Buyer in ordinary course of business” which means a person that buys goods in good faith, without knowledge that the sale violates the rights of another person in the goods, and in the ordinary course from a person, other than a pawnbroker, in the business of selling goods of that kind. A person buys goods in the ordinary course if the sale to the person comports with the usual or customary practices in the kind of business in which the seller is engaged or with the seller’s own usual or customary practices. A person that sells oil, gas, or other minerals at the wellhead or mine-head is a person in the business of selling goods of that kind. A buyer in ordinary course of business may buy for cash, by exchange of other property, or on secured or unsecured credit, and may acquire goods or documents of title under a pre-existing contract for sale. Only a buyer that takes possession of the goods or has a right to recover the goods from the seller under Article 2 may be a buyer in ordinary course of business. “Buyer in ordinary course of business” does not include a person that acquires goods in a transfer in bulk or as security for or in total or partial satisfaction of a money debt.[10]

 

A consumer and a buyer in ordinary course of business by analogy can be applied to the “Consumers” or the young people wearing the Aeropostale brand in the hypothetical example. From the definition, we can deduce that these young people buy in good faith the goods (the t-shirt in our example) for direct use or ownership rather than for resale, or use in production and manufacturing. Simply put, their consumption is for the tactical purpose of wearing the brand they like as their form of expressing themselves and not for commercial or whatever purpose which may violate some of the provisions of the IP Code afforded to the registered trademark owner. The ordinary consumer will not think beyond what they bought. They will never expect that wearing something that they acquire in the ordinary course of business will create implications that may curtail their exercise of their freedom to express themselves.

 

Conclusion and Recommendation

 

In the mind of an ordinary consumer, restraining him to express himself by wearing his favorite t-shirt from a brand with registered trademark is antithetical to freedom and democracy. As discussed above, to his expectation as an ordinary consumer enjoying his rights, inadvertent advertising should be the least of his concern more so the complication brought about by the provisions of the IP Code on trademark protection. Fair use should be a household name especially to the ordinary consumer.

 

In the last half century, the unparalleled growth of industry and the rapid development of communications technology have enabled trademarks, trade names and other distinctive signs of a product to penetrate regions where the owner does not actually manufacture or sell the product itself. Goodwill is no longer confined to the territory of actual market penetration; it extends to zones where the marked article has been fixed in the public mind through advertising.

 

Whether in the print, broadcast or electronic communications medium, particularly on the Internet, advertising has paved the way for growth and expansion of the product by creating and earning a reputation that crosses over borders, virtually turning the whole world into one vast marketplace.[11]

 

 

 

 

 


[1] Student’s hypothetical scenario for the purpose of this academic discussion only

[2] Ferdinand M. Negre, Trademark Law in a Knotshell: From Caves to Cyberspace, September 20, 2007

[3] Ibid

[7] Article III, Section 4 – 1987 Philippine Constitution

[11] Ferdinand M. Negre, Trademark Law in a Knotshell: From Caves to Cyberspace, September 20, 2007

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