Elements and Proof of Trademark Infringement (Civil and Criminal): What You Must Allege, Prove, and Prepare

Trademark infringement cases commonly fail not because parties lack arguments, but because they miss required elements, present weak evidence of confusing similarity, or misunderstand the difference between civil infringement and criminal prosecution. Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (“IP Code”) specifies infringing acts and jurisprudence distills the elements. In criminal cases, the prosecution bears the burden of proving each element beyond reasonable doubt; where evidence does not establish likelihood of confusion to that level, acquittal follows (Diaz v. People, G.R. No. 180677, 2013).

Legal basis: elements of infringement under RA 8293 (doctrinal checklist)

Sec. 155 of the IP Code states:

SECTION 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. 

The elements of trademark infringement, as enunciated in Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks, G.R. No. 196372, 2022, are as follows:

1. The trademark being infringed is registered in the Intellectual Property Office; however, in infringement of trade name, the same need not be registered;

2. The trademark or trade name is reproduced, counterfeited, copied, or colorably imitated by the infringer;

3. The infringing mark or trade name is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services;

4. The use or application of the infringing mark or trade name is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and

5. It is without the consent of the trademark or trade name owner or the assignee thereof.

In summation, the core elements are: the mark is registered; the accused reproduced/counterfeited/copied/colorably imitated it (or dominant feature); the infringing mark is used in commerce for goods/services (including labels/packaging/ads); the use is likely to confuse; and the use is without consent.

Civil vs criminal: same core wrong, different stakes and proof environment

• Civil infringement usually targets injunction, damages, and other remedies (the statutory text defining infringement is the same, but the case is pursued as a civil action by the registrant).
• Criminal trademark infringement (as prosecuted under the IP Code framework) brings liberty at stake, so courts are strict about proof of confusing similarity and confusion.

In practical terms: if you are complainant, build the case like a documentary and market-impact narrative; if you are respondent/accused, attack the “confusion” element and the alleged similarity’s dominant features.

Evidence that commonly matters

1. Registration documents (IPO registration details; proof your mark is registered)
2. Specimens of actual use by the alleged infringer: product photos, packaging, labels, online listings, invoices, ads
3. Side-by-side comparison focusing on dominant features (visual/aural impressions)
4. Consumer context: points of sale, typical buyers, price point; while dominancy test downplays some market-segmentation factors, context still helps tell the story of confusion

Typical fact patterns and how to argue them

• Same dominant word, different logo: Complainant highlights the shared dominant word/sound; respondent highlights distinct overall presentation, if genuinely different.
• Different goods, but perceived connection: Confusion of business/source can still apply when the public might assume affiliation.
• Label/packaging-only involvement: A party who prints or handles packaging may be implicated, but liability can narrow depending on innocence and role.

Practical tips for complainants and respondents

For trademark owners (complainants):

• Build a confusion narrative: dominant features, buyer perception, and channels of trade
• Preserve evidence early (screenshots with URLs/date stamps, purchase test buys, packaging custody).

For alleged infringers (respondents/accused):

• Focus on the statutory hinge: “likely to cause confusion”
• In criminal exposure, insist on strict proof; lack of proof of confusion can compel acquittal

13 February 2026

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