PART FOUR: The Law on Trademarks, Service Marks and Trade Names
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Defnitions; Principles •
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Mark Mark – is any visib visible le sign sign capabl capable e o dis distin tingu guish ishing ing the goods goods (trademark or services (service mark o an enterprise and shall include a stamped or marked container o goods. (Sec. 121.1, IPC) Mark could be a !ord mark (the use o the name o a person" or any anc anci iul ul or arbi arbitr trar ary y !or !ord" d" comp compos osit ite e mark mark (con (consi sist stin ing g o a combination o a !ord or letter and a device" device mark (!hich may be a geometrical fgure" fgure" a styli#ed rendering o the alphabet or a representation o any ob$ect. Marks may be creatively designed or coined. %ollective mark & means any visible sign designated as such in the application or registration and capable o distinguishing the origin or any other common characteristic" including the 'uality o goods or services o dierent enterprises !hich use the sign under the control o the registered o!ner o the collective mark. (Sec.121.2,IPC) )rade )rade name is the name or designation identiying identiying or distinguishing an enterprise. enterprise. (Sec. (Sec. 121.333, 121.333, IPC) * trade trade name name ree reers rs to to the the business and its good!ill; a trademark reers to the goods. (Canon Kabushiki Kabushiki Kaisha vs. CA, G.R. No. 120900, u!" 20, 2000) +ld defnition o Marks & * trademark has been generally defned as ,any ,any !or !ord" name name"" symb symbol ol or devi device ce adop adopte ted d and and us used ed by a manuactu manuacturer rer or merchant merchant to identi identiy y his goods goods and distingu distinguish ish them rom those manuactured and sold by others. (Socie#e $es P%o$ui#s vs. CA, G.R. No. 112012, A&%i! ', 2001) -unctions o a trademark & ( they indicate origin or o!nership o the articles to !hich they are attached; (/ they guarantee that those articles come up to a certain standard standard o 'uality; and (0 they advertise advertise the articles articles they symboli# symboli#e. e. (i%&u%i vs. CA, G.R. No. 11'0*, Nov. 19, 1999). 1999) . )he rights rights in in a mark shall shall be be ac'uire ac'uired d through through regis registrati tration on made made validly in accordance !ith the provisions o the la!. (Sec. 122, IPC) )he right to register trademarks" tradenames and service marks by any person" corporation" partnership or association domiciled in the Philippines or in any oreign country" is based on o!nership" and the burden is upon the applicant to prove such o!nership. (a%ve+ Coe%cia! Co., Inc. v. Pe#%a -a&ia / Co., e# a!., 129, 4ec. 22, 192) 1here 1here the applicant applicant !as !as not the o!ner o!ner o the trademar trademark k
being applied or" he had no right to apply or registration o the same. )he right to register trademarks" tradenames and service marks is based on o!nership. (5&e%a#o%s Inc. vs. 4i%ec#o% o6 Pa#ens#, 1901, 5c#. 29, 19) •
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2o!ever" registration is not a mode o ac'uiring o!nership. 1hen the applicant is not the o!ner o the trademark being applied or" he has no right to apply or registration o the same. 3egistration merely creates a &%ia 6acie presumption o the validity o the registration" o the registrant4s o!nership o the trademark and o the e5clusive right to the use thereo. 6uch presumption" $ust like the presumptive regularity in the perormance o o7cial unctions" is rebuttable and must give !ay to evidence to the contrary. (Shan7%i!a In#8! -o#e! vs. 4GC, G.R. No. 1993*, a%ch 31, 200) 6uch that" a certifcate o registration o a mark shall be prima acie evidence o the validity o the registration" the registrant4s o!nership o the mark" and o the registrant4s e5clusive right to use the same in connection !ith the goods or services and those that are related thereto specifed in the certifcate. (Sec. 13*, IPC) +!nership o a mark or trade name may be ac'uired not necessarily by registration but by adoption and use in trade or commerce. *s bet!een actual use o a mark !ithout registration" and registration o the mark !ithout actual use thereo" the ormer prevails over the latter. -or a rule !idely accepted and frmly entrenched" because it has come do!n through the years" is that actual use in commerce or business is a pre&re'uisite to the ac'uisition o the right o o!nership. (e%a!$ Ga%en#s 67. Co%&. v. Cou%# o6 A&&ea!s, G.R. No. 10009*, 4ecebe% 29, 199, 21 SCRA 00: S#e%!in7 P%o$uc#s In#e%na#iona!, Inc. v. ;a%ben6ab%iken
nno vs. Gene%a! i!!in7, G.R. No. 2*', ;eb. 2*, 19*3) )rademark vs. tradename – Marks are protected upon registration !hile trade name may be protected even !ithout registration. (Sec. 1, IPC) )hus" any subse'uent use o the trade name by a third party" !hether as a trade name or a mark or collective mark"
or any such use o a similar trade name or mark" likely to mislead the public" shall be deemed unla!ul. (Sec. 1.2, IPC) •
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It is a property right & )he o!nership o a trademark or tradename is a property right !hich the o!ner is entitled to protect ,since there is damage to him rom conusion or reputation or good!ill in the mind o the public as !ell as rom conusion o goods. )he modern trend is to give emphasis to the unairness o the acts and to classiy and treat the issue as raud. (Conve%se Rubbe% vs. >nive%sa! Rubbe%, G.R. No. 290, an. *, 19*) )he protection o trademarks is the la!8s recognition o the psychological unction o symbols. I it is true that !e live by symbols" it is no less true that !e purchase goods by them. * trade& mark is a merchandising short&cut !hich induces a purchaser to select !hat he !ants" or !hat he has been led to believe !hat he !ants. )he o!ner o a mark e5ploits this human propensity by making every eort to impregnate the atmosphere o the market !ith the dra!ing po!er o a congenial symbol. 1hatever the means employed" the aim is the same & to convey through the mark" in the minds o potential customers" the desirability o the commodity upon !hich it appears. +nce this is attained" the trade&mark o!ner has something o value. I another poaches upon the commercial magnetism o the symbol he has created" the o!ner can obtain legal redress. (Phi!i& o%%is Inc. vs. ;o%#une ?obacco Co%&., G.R. No. 1**9, une 2, 200) Is prior use a re'uirement or registration9 :o" prior use is no longer a condition or fling or registration. 2o!ever" the applicant or registrant shall fle a declaration o actual use o the mark" !ith evidence to that eect" !ithin 0 years rom the fling o the application; other!ise the application shall be reused or the mark shall be removed rom the 3egister. (Sec. 12'.2, IPC)
3egistrability o a Mark •
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1ho may apply or registration9 *ny person may apply or registration !ho is domiciled or has a real and eective industrial establishment in a country – (a !hich is a party to any convention" treaty or agreement relating to intellectual property rights or the repression o unair competition" to !hich the Philippines is also a party" or (b e5tends reciprocal rights to nationals o the Philippines by la!. (Sec. 3, IPC) 1hich marks can be registered9 *ny mark can be registered e5cept those that (a %onsists o immoral" deceptive or scandalous matter" or matter !hich may disparage or alsely suggest a connection !ith persons"
living or dead" institutions" belies" or national symbols" or bring them into contempt or disrepute; (b %onsists o the
(h %onsists e5clusively o signs that are generic or the goods or services that they seek to identiy; (i %onsists e5clusively o signs or o indications that have become customary or usual to designate the goods or services in everyday language or in bona fde and established trade practice; ($ %onsists e5clusively o signs or o indications that may serve in trade to designate the kind" 'uality" 'uantity" intended purpose" value" geographical origin" time or production o the goods or rendering o the services" or other characteristics o the goods or services; (k %onsists o shapes that may be necessitated by technical actors or by the nature o the goods themselves or actors that aect their intrinsic value; (l %onsists o color alone" unless defned by a given orm; or (m Is contrary to public order or morality. (Sec. 123.1, IPC) :+)= )he nature o the goods to !hich the mark is applied !ill not constitute an obstacle to registration. (Sec. 123.3, IPC) •
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Identical !ith prior marks & 1hen one applies or the registration o a trademark or label !hich is almost the same or very closely resembles one already used and registered by another" the application should be re$ected and dismissed outright" even !ithout any opposition on the part o the o!ner and user o a previously registered label or trademark" this not only to avoid conusion on the part o the public" but also to protect an already used and registered trademark and an established good!ill. (Chuancho So" / Cannin7 Co. vs. 4i%ec#o% o6 Pa#en#s, 10* Phi! *33, *3) colorable imitation & )he phrase ,colorable imitation, denotes such a ,close or ingenious imitation as to be calculated to deceive ordinary persons" or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives" and to cause him to purchase the one supposing it to be the other. (#e&ha vs. 4i%ec#o% o6 Pa#en#s, 203, a%ch 31, 19) >eneric terms and descriptive terms defned & >eneric terms are those !hich constitute ,the common descriptive name o an article or substance", or comprise the ,genus o !hich the particular product is a species", or are ,commonly used as the name or description o a kind o goods", or ,imply reerence to every member o a genus and the e5clusion o individuating characters", or ,reer to the basic nature o the !ares or services provided rather than to the more idiosyncratic characteristics o a particular
product", and are not legally protectable. +n the other hand" a term is descriptive and thereore invalid as a trademark i" as understood in its normal and natural sense" it ,orth!ith conveys the characteristics" unctions" 'ualities or ingredients o a product to one !ho has never seen it and does not kno! !hat it is", or ,i it orth!ith conveys an immediate idea o the ingredients" 'ualities or characteristics o the goods", or i it clearly denotes !hat goods or services are provided in such a !ay that the consumer does not have to e5ercise po!ers o perception or imagination. (Socie#e $es P%o$ui#s vs. CA, G.R. No. 112012, A&%i! ', 2001) •
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1hy are generic and descriptive terms not registrable9 – )hese types o marks cannot be susceptible or e5clusive appropriation as it is open to the public or their use. 1ords and phrases in common use and !hich merely indicate the character" kind" 'uality and composition o the thing" may not be appropriated by anyone to his e5clusive use; nor those !hich are deceptively misdescriptive o the product. (as# Paci@c e%chan$isin7 Co%&. vs. 4i%ec#o% o6 Pa#en#s, G.R. No. 1'3, 4ec. 29, 190) * dealer in shoes cannot register ,?eather 6hoes, as his trademark because that !ould be merely descriptive and it !ould be un$ust to deprive other dealers in leather shoes o the right to use the same !ords !ith reerence to their merchandise. :o one may appropriate generic or descriptive !ords. )hey belong to the public domain. (asso -e%anos vs. 4i%ec#o% o6 Pa#en#s, G.R. No. 392, 4ec. 29, 193) It is evident that ,%*MI*, as a trademark is ar rom being distinctive. @y itsel" it does not identiy petitioner as the manuacturer or producer o the goods upon !hich said mark s used" as contra&distinguished to trademarks derived rom coined !ords such as ,3ole5", ,Aodak, or Aote5., It has been held that ,i a mark is so commonplace that it cannot be readily distinguished rom others" then it is apparent that it cannot identiy a particular business; and he !ho frst adopted it cannot be in$ured by any subse'uent appropriation or imitation by others" and the public !ill not be deceived. (Phi!. Re@nin7 Co. vs. N7 Sa, G.R. No. 2, u!" 30, 19*2) )he !ords ,pale pilsen, may not be appropriated by 6M% or its e5clusive use even i they are part o its registered trademark 6*: MI>B=? P*?= PI?6=:" any more than such descriptive !ords as ,evaporated milk", ,tomato ketchup", ,cheddar cheese", ,corn
o a descriptive or generic term in a trade&name is al!ays sub$ect to the limitation that the registrant can not ac'uire the e5clusive right to the descriptive or generic term or !ord. (5n7 Ai Gui vs. 4i%ec#o% o6 Pa#en#s, G.R. No. 23, a%ch 2*, 19) •
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6uggestive terms on the other hand can be registered & 6uggestive terms are those !hich" in the phraseology o one court" re'uire ,imagination" thought and perception to reach a conclusion as to the nature o the goods., 6uch terms" ,!hich subtly connote something about the product", are eligible or protection in the absence o secondary meaning. 1hile suggestive marks are capable o shedding ,some light, upon certain characteristics o the goods or services in dispute" they nevertheless involve ,an element o incongruity", ,fgurativeness", or , imaginative eort on the part o the observer., (Socie#e $es P%o$ui#s vs. CA, G.R. No. 112012, A&%i! ', 2001) Doctrine o 6econdary meaning & *s regards signs or devices mentioned in paragraphs ($" (k" and (l o 6ec. /0." nothing shall prevent the registration o any such sign or device !hich has become distinctive in relation to the goods or !hich registration is re'uested as a result o the use that have been made o it in commerce in the Philippines. (Sec. 123.2, IPC) )he doctrine o secondary meaning !as elaborated in the ollo!ing terms , . . . a !ord or phrase originally incapable o e5clusive appropriation !ith reerence to an article on the market" because geographically or other!ise descriptive" might nevertheless have been used so long and so e5clusively by one producer !ith reerence to his article that" in that trade and to that branch o the purchasing public" the !ord or phrase has come to mean that the article !as his product., (Phi!. Nu# In$us#%" vs. S#an$a%$, 230, u!" 31, 19) )hus" even i ,*ng )ibay", thereore" !ere not capable o e5clusive appropriation as a trade&mark" the application o the doctrine o secondary meaning could nevertheless be ully sustained because" in any event" by respondent4s long and e5clusive use o said phrase !ith reerence to his products and his business" it has ac'uired a proprietary connotation. )his doctrine is to the eect that a !ord or phrase originally incapable o e5clusive appropriation !ith reerence to an article on the market" because geographically or other!ise descriptive" might nevertheless have been used so long and so e5clusively by one producer !ith reerence to his article that" in that trade and to that branch o the purchasing public" the !ord or phrase has come to mean that the article !as his product. (An7 vs. ?eo$o%o, ' Phi! 0 19'2B). *lthough the !ord ,6=?=%)*, may be an ordinary or common !ord in the sense that it may be used or employed by any one in promoting his business or enterprise" once adopted or coined in
connection !ith one4s business as an emblem" sign or device to characteri#e its products" or as a badge or authenticity" it may ac'uire a secondary meaning as to be e5clusively associated !ith its products and business. In this sense" its use by another may lead to conusion in trade and cause damage to its business. (A%ce Sons an$ Co. vs. Se!ec#s
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Doctrine o 6econdary Meaning applicable to trade names & )he doctrine o secondary meaning originated in the feld o trademark la!. Its application has" ho!ever" been e5tended to corporate names sine the right to use a corporate name to the e5clusion o others is based upon the same principle !hich underlies the right to use a particular trademark or tradename. 2o!ever" !hile the appellant may have proved that it had been using the !ord 4?yceum4 or a long period o time" this act alone did not amount to mean that the said !ord had ac'uired secondary meaning in its avor because the appellant ailed to prove that it had been using the same !ord all by itsel to the e5clusion o others ("ceu o6 #he Phi!i&&ines vs. Cou%# o6 A&&ea!s, G.R. 101*9, a%ch , 1993) %onusing 6imilarity & )he similarity must be such as is likely to mislead purchasers o ordinary caution and prudence into the belie that the articles are those o another producer or manuacturer. 1hether the mark or label o one competitor resembles another is to be determined by an inspection o the points o dierence and resemblance" as a !hole" and not merely the points o resemblance. (Ae%ican C"anii$ vs. 4i%ec#o% o6 Pa#en#s, G.R. 239', A&%i! 29, 19) )est o conusing similarity o marks – (a phonetic similarity & )he ollo!ing random list o conusingly similar sounds in the matter o trademarks" culled rom :ims" Bnair %ompetition and )rade Marks" CE" Fol. " !ill reinorce our vie! that ,6*?+:P*6, and ,?I+:P*6, are conusingly similar in sound ,>old Dust, and ,>old Drop,; ,Gant#en, and ,Gass&6ea,; ,6ilver -lash, and ,6upper -lash,; ,%ascarete, and ,%elborite,; ,%elluloid, and ,%ellonite,; ,%hartreuse, and ,%harseurs,; ,%ute5, and ,%uticlean,; ,2ebe, and ,Me$e,; ,Aote5, and ,-emete5,; ,Huso, and ,2oo 2oo,. ?eon *mdur" in his book ,)rade&Mark ?a! and Practice," pp. C&/" cities" as coming i#hin the purvie! o the i$e sonans rule" ,usea, and ,B&%&*," ,6tein!ay Pianos, and ,6teinberg Pianos," and ,6even&Bp, and ,?emon&Bp,. In %o )iong vs. Director o Patents" this %ourt une'uivocally said that ,%eldura, and ,%ordura, are conusingly similar in sound; this %ourt held in 6apolin %o. vs. @almaceda" JE Phil. ECK that the name ,?usolin, is an inringement o the trademark ,6apolin," as the sound o the t!o names is almost
the same. (a%ve+ Coe%cia! Co., Inc. v. Pe#%a -a&ia / Co., e# a!., 129, 4ec. 22, 192) (b 2olistic )est & the person !ho inringes a trade mark does not normally copy out but only makes colorable changes" employing enough points o similarity to conuse the public !ith enough points o dierences to conuse the courts. 1hat is undeniable is the act that !hen a manuacturer prepares to package his product" he has beore him a boundless choice o !ords" phrases" colors and symbols su7cient to distinguish his product rom the others. 1hen as in this case" 6unshine chose" !ithout a reasonable e5planation" to use the same colors and letters as those used by Del Monte though the feld o its selection !as so broad" the inevitable conclusion is that it !as done deliberately to deceive. (4e! on#e Co%&. vs. CA, G.R. No. *32, an. 2, 1990) (c Dominancy )est & It has been consistently held that the 'uestion o inringement o a trademark is to be determined by the test o dominancy. 6imilarity in si#e" orm and color" !hile relevant" is not conclusive. I the competing trademark contains the main or essential or dominant eatures o another" and conusion and deception is likely to result" inringement takes place. Duplication or imitation is not necessary; not it is necessary that the inringing label should suggest an eort to imitate. )he dominant eature o 6M%4s trademark is the name o the product 6*: MI>B=? P*?= PI?6=:" !ritten in !hite >othic letters !ith elaborate seris at the beginning and end o the letters ,6, and ,M, on an amber background across the upper portion o the rectangular design. +n the other hand" the dominant eature o *@I4s trademark is the name @==3 P*?= PI?6=:" !ith the !ord ,@eer, !ritten in large amber letters" larger than any o the letters ound in the 6M% label. )he trial court perceptively observed that the !ord ,@==3, does not appear in 6M%4s trademark" $ust as the !ords ,6*M MI>B=?, do not appear in *@I4s trademark. 2ence" there is absolutely no similarity in the dominant eatures o both trademarks. :either in sound" spelling or appearance can @==3 P*?= PI?6=: be said to be conusingly similar to 6*: MI>B=? P*?= PI?6=:. :o one !ho purchases @==3 P*?= PI?6=: can possibly be deceived that it is 6*: MI>B=? P*?= PI?6=:. :o evidence !hatsoever !as presented by 6M% proving other!ise. (Asia <%ee%" Inc. vs. CA, G.R. No. 103'3, u!" , 1993) Ine5plicable use & 3espondent4s !itness had no idea !hy respondent chose ,B:IF=36*? %+:F=36=, as trademark and the record discloses no reasonable e5planation or respondent4s use o the !ord ,%+:F=36=, in its trademark. 6uch une5plained use by respondent o the dominant !ord o petitioner4s corporate name lends itsel open to the suspicion o raudulent motive to trade upon
petitioner4s reputation" thus L* boundless choice o !ords" phrases and symbols is available to one !ho !ishes a trademark su7cient unto itsel to distinguish his product rom those o others. 1hen" ho!ever" there is no reasonable e5planation or the deendant4s choice o such a mark though the feld or his selection !as so broad" the inerence is inevitable that it !as chosen deliberately to deceive. (Conve%se Rubbe% vs. >nive%sa! Rubbe%, G.R. No. 290, an. *, 19*) 1e do not see !hy applicant could not have stretched his imagination even a little and e5tended his choice to other members o the animal kingdom" as a brand to dierentiate his product rom similar products in the market. In a similar case decided by this )ribunal !herein" although one brand consisting o the representation o a rooster !as already being used by one party" another party !anted to register a similar brand" consisting o t!o roosters on a similar product. (i -oa vs. 4i%ec#o% o6 Pa#en#s, G.R. No. 23, a%ch 2*, 19) +rdinary purchaser & In order that there may be deception o the buying public in the sense necessary to constitute unair competition" it is necessary to suppose a public accustomed to buy" and thereore to some e5tent amiliar !ith" the goods in 'uestion. )he test o raudulent simulation is to be ound in the likelihood o the deception o persons in some measure ac'uainted !ith an established design and desirous o purchasing the commodity !ith !hich that design has been associated. )he test is not ound in the deception" or possibility o the deception" o the person !ho kno!s nothing about the design !hich has been countereited" and !ho must be indierent as bet!een that and the other. )he simulation" in order to be ob$ectionable" must be such as appears likely to mislead the ordinarily intelligent buyer !ho has a need to supply and is amiliar !ith the article that he seeks to purchase. (Asia <%ee%" Inc. vs. CA, G.R. No. 103'3, u!" , 1993) *ccordingly" taken as they !ill appear to a prospective customer" the trademarks in 'uestion are not apt to conuse. -urthermore" the product o the applicant is e5pressly stated as dispensable only upon doctor4s prescription" !hile that o oppositor does not re'uire the same. )he chances o being conused into purchasing one or the other are thereore all the more rendered negligible. *lthough oppositor avers that some drugstores sell ,@I+-=3I: !ithout asking or a doctor4s prescription" the same i true !ould be an irregularity not attributable to the applicant" !ho has already clearly stated the re'uirement o a doctor4s prescription upon the ace o the label o its product. (<%is#o! "e%s vs. 4i%ec#o% o6 Pa#en#s, 1 SCRA 12* 19B) )he related goods principle – >oods are related !hen they belong to the same class or have the same descriptive properties or physical attributes" or they serve the same purpose or
=ssoN or cigarettes because there is a marked dierence bet!een oil and tobacco" the respective goods
3egistration o a Mark •
-ormal re'uirement or application o registration & )he application or the registration o the mark shall be in -ilipino or in =nglish and shall contain the ollo!ing (a * re'uest or registration; (b )he name and address o the applicant; (c )he name o a 6tate o !hich the applicant is a national or !here he has domicile; and the name o a 6tate in !hich the applicant has a real and eective industrial or commercial establishment" i any; (d 1here the applicant is a $uridical entity" the la! under !hich it is organi#ed and e5isting; (e )he appointment o an agent or representative" i the applicant is not domiciled in the Philippines; ( 1here the applicant claims the priority o an earlier application" an indication o i )he name o the 6tate !ith !hose national o7ce the earlier application !as fled or i fled !ith an o7ce other than a national o7ce" the name o that o7ce" ii )he date on !hich the earlier application !as fled" and iii 1here available" the application number o the earlier application; (g 1here the applicant claims color as a distinctive eature o the mark" a statement to that eect as !ell as the name or names o the color or colors claimed and an indication" in respect o each color" o the principal parts o the mark !hich are in that color;
(h 1here the mark is a three&dimensional mark" a statement to that eect; (i +ne or more reproductions o the mark" as prescribed in the 3egulations; ($ * transliteration or translation o the mark or o some parts o the mark" as prescribed in the 3egulations; (k )he names o the goods or services or !hich the registration is sought" grouped according to the classes o the :ice %lassifcation" together !ith the number o the class o the said %lassifcation to !hich each group o goods or services belongs; and (l * signature by" or other sel&identifcation o" the applicant or his representative. (Sec. 12', IPC) •
-iling date & )he fling date o an application shall be the date on !hich the +7ce received the ollo!ing indications and elements in =nglish or -ilipino (a *n e5press or implicit indication that the registration o a mark is sought; (b )he identity o the applicant; (c Indications su7cient to contact the applicant or his representative" i any; (d * reproduction o the mark !hose registration is sought; and (e )he list o the goods or services or !hich the registration is sought. (Sec. 12, IPC)
:ote :o fling date shall be accorded until the re'uired ee is paid. (Sec. 12.2, IPC) •
Priority right & *n application or registration o a mark fled in the Philippines by a person reerred to in 6ection 0" and !ho previously duly fled an application or registration o the same mark in one o those countries" shall be considered as fled as o the day the application !as frst fled in the oreign country. (Sec. 131.1, IPC) 2o!ever" no registration o a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country o origin o the applicant. (Sec. 131.2, IPC) )his right does not entitle the o!ner o a registration granted under this section to sue or acts committed prior to the date on !hich his mark !as registered in this country e5cept or !ell&kno!n marks. (Sec. 131.3, IPC)
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Procedure or registration – (a) =5amination to determine !hether the application satisfes the re'uirements or the grant o a fling date under 6ection /E. (Sec. 132, IPC) (b) =5amination to determine !hether the application meets the re'uirements o 6ection / and the mark is registrable under 6ection /0. (Sec. 133, IPC) (c) Denial o the application or amendment thereo or publication o the application. (Sec. 133.2 an$ Sec. 133.3, IPC) ($) +pposition to the application; notice; hearing; decision by e5aminer; appeal to the Director o the @ureau o )rademarks; appeal to the IP+ Director >eneral; appeal to the %ourt o *ppeals; (e) Issuance o certifcate o registration. (Sec. 13, IPC) (6) Publication in the IP+ >a#ette o the act o registration. (Sec. 13, IPC)
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Duration o registration & )he duration o a trademark registration is O years" rene!able or periods o O years each rene!al. )he re'uest or rene!al must be made !ithin J months beore or ater the e5piration o the registration. (Sec. 1', IPC) Post®istration re'uirement – )he registrant is re'uired to fle a declaration o actual use" and evidence to that eect" !ithin year rom the fth anniversary o the date o registration o the mark; other!ise the mark shall be removed rom the 3egister. (Sec. 1', IPC) @B)" non&use o a mark may be e5cused i caused by circumstance arising independently o the !ill o the trademark o!ner. ?ack o unds is not an acceptable e5cuse. (Sec. 12, IPC) %ancellation o registration – * petition to cancel a registration o a mark under this *ct may be fled !ith the @ureau o ?egal *airs by any person !ho believes that he is or !ill be damaged by the registration o a mark under this *ct as ollo!s (a 1ithin fve (K years rom the date o the registration o the mark under this *ct. (b *t any time" i the registered mark becomes the generic name or the goods or services" or a portion thereo" or !hich it is registered" or has been abandoned" or its registration !as
obtained raudulently or contrary to the provisions o this *ct" or i the registered mark is being used by" or !ith the permission o" the registrant so as to misrepresent the source o the goods or services on or in connection !ith !hich the mark is used. I the registered mark becomes the generic name or less than all o the goods or services or !hich it is registered" a petition to cancel the registration or only those goods or services may be fled. * registered mark shall not be deemed to be the generic name o goods or services solely because such mark is also used as a name o or to identiy a uni'ue product or service. )he primary signifcance o the registered mark to the relevant public rather than purchaser motivation shall be the test or determining !hether the registered mark has become the generic name o goods or services on or in connection !ith !hich it has been used. (c) *t any time" i the registered o!ner o the mark !ithout legitimate reason ails to use the mark !ithin the Philippines" or to cause it to be used in the Philippines by virtue o a license during an uninterrupted period o three (0 years or longer. (Sec. 11, IPC) •
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)here" being no evidence o use o the mark by others beore C0/" or that appellee abandoned use thereo" the registration o the mark !as made in accordance !ith the )rademark ?a!. >ranting that appellant used the mark !hen appellee stopped using it during the period o time that the >overnment imposed restrictions on importation o respondent4s brassiere bearing the trademark" such temporary non&use did not aect the rights o appellee because it !as occasioned by government restrictions and !as not permanent" intentional" and voluntary. )o !ork an abandonment" the disuse must be permanent and not ephemeral; it must be intentional and voluntary" and not involuntary or even compulsory. )here must be a thoroughgoing discontinuance o any trade&mark use o the mark in 'uestion, (%allman" Bnair %ompetition and )rademark" /nd =d." p. 0. )he use o the trademark by other manuacturers did not indicate an intention on the part o appellee to abandon it. (Roe%o vs. ai$en ;o%, G.R. No. 1*2*9, a%ch 31, 19' )
)he non&use o a trademark or an article o merchandise due to legal restrictions or circumstances beyond one4s control is not to be considered as an abandonment. 6aid rule !as correctly applied to the case at bar !here the use o the trademark !as interrupted during the Gapanese occupation and in act !as discontinued !hen the importation o the product covered by the trademark !as prohibited by the %entral @ank 3egulations. (Phi!. Nu# In$us#%" vs. S#an$a%$, 230, u!" 31, 19)
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IF.
?icense contracts – *ny license contract concerning the application o a mark or its registration shall provide or eective control by the licensor o the 'uality o the goods or services o the licensee in connection !ith !hich the mark is used. I the contract shall not provide the oregoing" it shall not be valid. 6aid contracts must be recorded !ith the IP+" other!ise" it shall not bind third parties. (Sec. 10.1, IPC)
1ell&kno!n Marks •
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*ssignment and )ranser o *pplication and 3egistration – *n application or registration or its registration may be assigned or transerred !ith or !ithout the transer o the business using the mark. 2o!ever" it !ill be null and void i it !ould mislead the public especially as regards the nature" source" manuacturing process" characteristics or suitability or their purpose" o the goods or services to !hich the mark is applied. 6uch assignment or transer shall be in !riting and !ith the signatures o the contracting parties. It shall be recorded !ith the IP+ other!ise it shall have no eect against third parties. (Sec. 1'9, IPC)
* !ell&kno!n mark is one !hich a competent authority o the Philippines has designated to be !ell&kno!n internationally and in the Philippines. In determining !hether a mark is !ell&kno!n" account shall be taken o the kno!ledge o the relevant sector o the public" rather than the public at large" including kno!ledge in the Philippines !hich has been obtained as a result o the promotion o the mark. (Sec. 123.1eB an$ 6B,IPC) *dditional right o o!ner – )he e5clusive right o the o!ner o a !ell&kno!n mark !hich is registered in the Philippines shall e5tend to goods and services !hich are not similar to those in respect o !hich the mark is registered; provided that (i the use o the mark in relation to those goods or services !ould indicate a connection bet!een those goods or services and the o!ner o the registered mark" and (ii the interests o the o!ner o the registered mark are likely to be damaged by such use. (Sec. 1'.2, IPC)
Inringement o )rademark; Bnair %ompetition •
3ights conerred on trademark – (a )he o!ner o a registered mark shall have the e5clusive right to prevent all third parties not having the o!ner4s consent rom using in the course o trade identical or similar signs or containers or goods or services !hich are identical or similar to those in respect o !hich the trademark is registered !here such use !ould result in a likelihood o conusion. In case o
the use o an identical sign or identical goods or services" a likelihood o conusion shall be presumed. (b )he e5clusive right o the o!ner o a !ell&kno!n mark defned in 6ubsection /0.(e !hich is registered in the Philippines" shall e5tend to goods and services !hich are not similar to those in respect o !hich the mark is registered Provided" )hat use o that mark in relation to those goods or services !ould indicate a connection bet!een those goods or services and the o!ner o the registered mark Provided urther" )hat the interests o the o!ner o the registered mark are likely to be damaged by such use •
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?imitations on such right – Duration o registration (O years and )erritorial limitations (rights can be enorced !ithin the territory o registration e5cept !ell&kno!n marks
1hen is there inringement9 – )here is inringement i a registered mark is used in commerce by a person !ithout the consent o the registered o!ner thereo. 6uch inringement may involve (a Bse in commerce any reproduction" countereit" copy" or colorable imitation o a registered mark or the same container or a dominant eature thereo in connection !ith the sale" oering or sale" distribution" advertising o any goods or services including other preparatory steps necessary to carry out the sale o any goods or services on or in connection !ith !hich such use is likely to cause conusion" or to cause mistake" or to deceive; or (b 3eproduce" countereit" copy or colorably imitate a registered mark or a dominant eature thereo and apply such reproduction" countereit" copy or colorable imitation to labels" signs" prints" packages" !rappers" receptacles or advertisements intended to be used in commerce upon or in connection !ith the sale" oering or sale" distribution" or advertising o goods or services on or in connection !ith !hich such use is likely to cause conusion" or to cause mistake" or to deceive" shall be liable in a civil action or inringement by the registrant or the remedies hereinater set orth. (Sec. 1, IPC)
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In order to bring a civil action or inringement" it is not re'uired that there be an actual sale o the goods or services using the inringing material. Inringement takes place upon the mere use or reproduction o the registered mark. (Sec. 1, IPC)
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3emedies available to the o!ner !hose registered mark !as inringed (a 6ue or damages (6ec. KJ. (b 2ave the inringing goods impounded (6ec. KJ./ (c *sk or double damages (6ec. KJ.0 (d *sk or in$unction. (6ec. KJ. (e 2ave the inringing goods disposed o outside the channels o commerce (6ec. KE. ( 2ave the inringing goods destroyed (6ec. KE. (g -ile criminal action (6ec. EO (h *dministrative sanctions.
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+!ners o a registered mark is re'uired to give notice o the act that his mark is registered in order to recover profts or damages in case o inringement. 2o!ever" kno!ledge o the act o registration is presumed i the !ords 3egistered MarkN or the symbol (3egistered is displayed together !ith the mark. ?imitations to actions or inringement – (a :o action or inringement could be taken against a person !ho" in good aith and beore the fling date or priority date" !as using the mark or the purposes o his business or enterprise. :ote" ho!ever" that such person may assign or transer his right to use the registered mark only together !ith his business or enterprise. (b +nly an in$unction against uture printing may be imposed upon an innocent inringing printer. (c 6imilarly" only an in$unction against the presentation o inringing advertising matter in uture issues may be imposed on innocent inringing ne!spapers and maga#ines. (Sec. 19, IPC)
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3ight o -oreign %orporation to 6ue in )rademark or 6ervice Mark =norcement *ction & *ny oreign national or $uridical person !ho meets the re'uirements o 6ection 0 o this *ct and does not engage in business in the Philippines may bring a civil or administrative action hereunder or opposition" cancellation" inringement" unair competition" or alse designation o origin and
alse description" !hether or not it is licensed to do business in the Philippines under e5isting la!s. (Sec. 10, IPC) •
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* oreign corporation !hich has never done any business in the Philippines and !hich is unlicensed and unregistered to do business here" but is !idely and avorably kno!n in the Philippines through the use therein o its products bearing its corporate and tradename" has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereo rom organi#ing a corporation therein bearing the same name as the oreign corporation" !hen it appears that they have personal kno!ledge o the e5istence o such a oreign corporation" and it is apparent that the purpose o the proposed domestic corporation is to deal and trade in the same goods as those o the oreign corporation. (a Cheise acos#e vs. ;e%nan$e=, G.R. No. 9, a" 21, 19*')
Bnair competition – is the use by a person o deception or other means contrary to good aith by !hich he passes o the goods manuactured by him or in !hich he deals" or his business or services" or those o another person !ho has established good!ill in the goods such person manuactures or deals in" or his business or services" or !ho shall commit any acts calculated to produce said result. 6ome acts o unair competition are as ollo!s (a >iving one8s goods the general appearance o goods o another manuacturer; (b Inducing the alse belie that one is oering the services o another !ho has identifed such services in the minds o the public; (c Making any alse statement calculated to discredit the goods" business or services o another.
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Inringement o trademark vs. unair competition (a Inringement o trademark is the unauthori#ed use o a trademark" !hereas unair competition is the passing o o one4s goods as those o another. (b In inringement o trademark raudulent intent is unnecessary !hereas in unair competition raudulent intent is essential. (c In inringement o trademark the prior registration o the trademark is a prere'uisite to the action" !hereas in unair competition registration is not necessary. (4e! on#e Co%&. vs. CA, G.R. No. *32, an. 2, 1990)
%riminal Penalties – Independent o the civil and administrative sanctions imposed by la!" a criminal penalty o imprisonment rom t!o (/ years to fve (K years and a fne ranging rom -ity thousand pesos (PKO"OOO to )!o hundred thousand pesos(P/OO"OOO" shall be imposed on any person !ho is ound guilty o committing any o the acts mentioned in 6ection KK" 6ection J and 6ubsection JC.. (Sec. 10, IPC)
