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The Law On Trademarks, Service Marks and Trade Names Definition of Terms (Sec. 121)
The Law On Trademarks, Service Marks and Trade Names Definition of Terms (Sec. 121)
The IPC does not anymore provide for prior use as a condition for ownership of mark (Sec.
122). registration is the sole basis. However, a trade name or business may be acquired by
prior use and need not be registered.
PRINCIPLES
1. The right to the mark is separate and distinct from the business using such mark (Sec.
149.1)
2. The right of registration belongs to the owner of the mark (Unno Commercial Enterprises,
Inc. v. General Milling Corp., GR 28554, February 28, 1983).
TRADEMARK
Any visible sign capable of distinguishing the goods (trademark) or service (service mark) of
an enterprise and shall include a stamped or mark container of goods. In relation thereto, a
trade name means the name or designation Identifying or distinguishing an enterprise (Elidad
Kho v. Court of Appeals, GR no. 115758, March 11, 2002).
TRADE NAME
Any individual name or surname, firm name, device or word used by manufacturers,
industrialist, merchants and others to identify their businesses, vocations or occupations
(converse Rubber Corp., /. Universal Rubber Products. Inc., GR No. L-27425, L-30505, April 28,
1980)
Any visible sign which is Anya visible sign capable Any visible sign
adopted and used to of distinguishing the designated as such in the
identify the source of service of an enterprise application for
origin of goods, and from the service of other registration and capable
which is capable of enterprises. of distinguishing the
distinguishing them from origin or any other
goods emanating from a common characteristics,
competitor. including the quality of
goods or services of
different enterprise which
use the sign under the
control of the registered
owner of the collective
mark.
Definitions. — As used in Part III, the following terms have the following meanings:
a) Mark means any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked
container of goods;
b) Collective mark means any visible sign designated as such in the application for
registration and capable of distinguishing the origin or any other common
characteristic, including the quality of goods or services of different enterprises which
use the sign under the control of the registered owner of the collective mark;
c) Trade name means the name or designation identifying or distinguishing
an enterprise;
d) Bureau means the Bureau of Trademarks;
e) Director means the Director of Trademarks;
f) Regulations means the Rules of Practice in Trademarks and Service Marks formulated
by the Director of Trademarks and approved by the Director General; and
g) Examiner means the trademark examiner.
The significance of acquiring right to a mark is acquiring right to a mark is captured in one case
where the Supreme Court aptly reminded that:
Non-Registrable Marks
Marks may be registered as long as it does not fall under any category mention in Section 123.
Section 123 enumerates marks that cannot be registered. Many of the cases and the confusion
are based on some of the items in the enumeration. For purpose of brevity and to avoid
1
Brickenstock Orthopaedie Gmbh And Co. Kg (Formerly Birkenstock Orthopaedie Gmbh) v. Philippine Shoe Espo Marketing Corporation G.R. No. 194307, November 20, 2013
contributing to the confusion, care has been exerted to avoid discussing cases that tend to cause
misunderstanding; those that can be easily understood are also left untouched.
The law disallows false suggestion of connection to a person, an institution or a belief. Actual
claim of connection is unnecessary. Also, the popularity of the person or the institution is
immaterial. But of course, the popularity does matter for the infringers for this is the rationale of
such prohibition, i.e., that one may unjustly ride on the goodwill of another.
Among the reason why traders would want to have their trademarks registered is because they
want to use it exclusively. One might think that traders will shy away from using a mark that is
already registered by another but, surprisingly; there is countless attempts to use identical
marks.
The law provides remedies in order to protect the interest of the proprietors of
registered marks. However, these seems to be a need to prove the registrability of the mark
since the usual defense of those charge with trademark infringement is the non-registration of
the mark for whatever reason.
The law disallows use of a mark that is identical with or is confusingly similar with a well-
known mark even if such well-known mark is not registered in the Philippines.
If the well-known mark is registered in the Philippines the prohibition to used that mark
by another entity extends to non-related goods or services.
Rights over a trademark or service mark are acquired through registration made validly
according to the law(Sec. 122)
The process starts with the filling an application for registration of the mark. By express
provision of the law(Sec 124.1), the application shall be in Filipino or in English and shall
contain the following:
2
Sterling Products. International Inc. v. Fabenfiken Bayer Aktiengesellschaft, 27 SCRA 1214, 1227 (1969) cting 2 Caliman, Unfair Competition and Trademark 1945 Ed., p. 1006
that color;
8. Where the mark is a three-dimensional mark, a statement to that effect;
9. One or more reproductions of the mark, as prescribed in the Regulations;
10. A transliteration or translation of the mark or of some parts of the mark, as
prescribed in the Regulations;
The names of the goods or services for which the registration is sought,
11.
grouped according to the classes of the Nice Classification, together with the
number of the class of the said Classification to which each group of goods or
services belongs; and
12. A signature by, or other self-identification of, the applicant or his
representative.
Declaration of Actual Use
The applicant or the registrant shall file a declaration of actual use of the mark with the
evidence to that effect, as prescribed by the Regulations within three years from the filling date
of the application. Otherwise, the application shall be refused or the mark shall be removed
from the Register by the Director of Trademarks.
The Applicant (Sec. 125)
The applicant may be a natural or a juridical person. If there are more than one applicant, all of
them should be name as applicant but any one may sign the application for and behalf of all the
applicants.
The applicant may file and prosecute the application through an attorney or other
person authorized to practice in such matters by the Office. The Office shall not aid on the
selection of an attorney or agent other than the furnishing of the list of attorneys or agents
authorized to practice before the Office.3
If the applicant is not domiciled or has no real and effective commercial establishment in
the Philippines, he shall designate by a written document filed in the Office, the name and
address of a Philippine resident who may be served notices or process in proceedings affecting
the mark. The written document shall be submitted to the Office within 60 days from filling
date without need of notice from the Office. Such notices or services may be served upon the
person so designated by leaving a copy thereof at the address specified in the last designation
filed. If the person so designated cannot be found at the address given in the last designation,
such notice or process may be served upon the Director of Bureau of Trademark
When the applicant dies, becomes insane or otherwise incapacitated the legally
appointed executor, administrator, guardian, conservator or representative of the dead or
insane or incapacitated applicant may prosecute the application in behalf of the heirs and
3
Rules and Regulations on Trademarks, Rule 303
successors-in-interest of the applicant.4
The Office may allow or require the applicant to disclaim an unregistrable component of an
otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or
owner's rights then existing or thereafter arising in the disclaimed matter, nor such shall
disclaimer prejudice or affect the applicant's or owner's right on another application of later
date if the disclaimed matter became distinctive of the applicant's or owner's goods, business or
services.
Before starting to examine the registrability of a mark, the Examiner or such other
personnel as the Director may authorize, shall examine whether the application satisfies the
requirements for the grant of filing date as provided in these Regulations. If the application
does not satisfy the filing date requirements, the Bureau shall notify the applicant who shall,
within a period of one month from mailing date of the notice, complete or correct the
4
Rules and Regulations on Trademarks, Rule 305
5
Rules and Regulations on Trademarks, Rule 608
application as required; otherwise the application shall be considered withdrawn.
If the application did not satisfy the requirements for grant for grant of a filling
date at the time the filling fee and other indications were received by the Office, the filling
date that was given shall be cancelled and a new filling date shall be entered in the records
of the Office. The new filling date shall be the date on which the Office received the
completed or corrected application as specified in the notice to the applicant,
Once an application meets the filing requirements of Section 127, it shall be
numbered in the sequential order, and the applicant shall be informed of the application
number and the filing date of the application will be deemed to have been abandoned. (n)
Not Required
No attestation, notarization, authentication, legalization or other certification of any
signature or other means of self-identification referred to in the preceding paragraphs, will
be required, except, where the signature concerns the surrender of a registration. (n)
Priority Right. (Sec. 131)
Conditions:
1. The application must be filed within 6 months from the date of earliest application. Its
certified copy passed within 3 months from the date of filling in the Philippines.
2. The following should concur, (a) the foreign country / country of origin has allowed
the mark and (b) the country of origin is the applicant’s domicile or has a bona fide
commercial establishment.
3. The owner of the Philippine Registration may not sue prior to the granting of the
registration unless the mark is considered well-known as provided for the IP Code.
4. The priority right may not be passed upon a foreign application that has been
withdrawn , abandoned or otherwise disposed of the country origin(Rule 202,
Trademark Laws)
Any person who believes that he would be damaged by the registration of a mark may,
upon payment of the required fee and within 30 days after the publication referred to in
subsection 133.2 file with the Office an opposition application.
Any person who believes that he would be damaged by the registration of a mark may,
upon payment of the required fee and within thirty (30) days after the publication referred to
in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall
be in writing and verified by the oppositor or by any person on his behalf who knows the
facts, and shall specify the grounds on which it is based and include a statement of the facts
relied upon. Copies of certificates of registration of marks registered in other countries or other
supporting documents mentioned in the opposition shall be filed therewith, together with the
translation in English, if not in the English language. For good cause shown and upon
payment of the required surcharge, the time for filing an opposition may be extended by the
Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations
shall fix the maximum period of time within which to file the opposition.
Upon the filling of an opposition, the Office shall reserve the notice of the filling on the
applicant, and of the date of the hearing thereof upon the applicant and the oppositor and all
other person having any right, title or interest in the mark covered by the application, as appear
of record in the Office.
The certificate of registration shall be issued when the period for filing the opposition has
expired, or when the Director of Legal Affairs shall have denied the opposition and upon
payment of the required fee. (Sec. 136)
Registration of Mark and Issuance of a Certificate to the Owner or his Assignee. (Sec. 137)
1. The Office shall maintain a Register in which shall be registered marks, numbered in the
order of their registration, and all transactions in respect of each mark, required to be
recorded by virtue of this law.
2. The registration of a mark shall include a reproduction of the mark and shall mention:
its number; the name and address of the registered owner and, if the registered owner’s
address is outside the country, his address for service within the country; the dates of
application and registration; if priority is claimed, an indication of this fact, and the
number, date and country of the application, basis of the priority claims; the list of goods
or services in respect of which registration has been granted, with the indication of the
corresponding class or classes; and such other data as the Regulations may prescribe
from time to time.
3. A certificate of registration of a mark may be issued to the assignee of the
applicant: Provided, That the assignment is recorded in the Office. In case of a change of
ownership, the Office shall at the written request signed by the owner, or his
representative, or by the new owner, or his representative and upon a proper showing
and the payment of the prescribed fee, issue to such assignee a new certificate of
registration of the said mark in the name of such assignee, and for the unexpired part of
the original period.
4. The Office shall record any change of address, or address for service, which shall be
notified to it by the registered owner.
5. In the absence of any provision to the contrary in this Act, communications to be made
to the registered owner by virtue of this Act shall be sent to him at his last recorded
address and, at the same, at his last recorded address for service. (Sec. 19, R. A. No. 166a)
A certificate of registration of a mark shall be prima facie evidence of the validity of the
registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use
the same in connection with the goods or services and those that are related thereto specified in
the certificate.
1. Validity of registration;
2. Registrant’s ownership of the mark; and
3. The registrant’s exclusive right to use the same in connection with the goods or services
and those that are related thereto
General Rule
The trademark protection extends only to goods or services related to those specified in the
certificate.
Exception
Expansion of Business Rule – also to those goods or services that are related thereto specified in
the certificate
All cases in which the use by the junior appropriator is likely to lead a to a confusion of
sources as where prospective buyers would be misled into thinking that the
complaining party has extended his business into another field (Sta. Ana v. Mallwat, GR
23023, August 31 1965)
Upon application of the registrant, the Office may permit any registration to be surrendered
for cancellation, and upon cancellation the appropriate entry shall be made in the records of
the Office. Upon application of the registrant and payment of the prescribed fee, the Office for
good cause may permit any registration to be amended or to be disclaimed in part: Provided,
That the amendment or disclaimer does not alter materially the character of the mark.
Appropriate entry shall be made in the records of the Office upon the certificate of registration
or, if said certificate is lost or destroyed, upon a certified copy thereof.
Mistakes in the certificate of registration may be corrected. If such mistake is incurred through
the fault of the Office, a certificate stating the fact and nature of such mistake shall be issued
without charge., recorded and printed copy thereof shall be attached to each printed copy of the
registration. Such corrected registration shall thereafter have the same effect as the original
certificate; or in the discretion of the Director of the Administrative, Financial and Human
Resource Development Service Bureau a new certificate of registration may be issued without
charge. (Sec. 142)
Whenever mistakes is made in a registration and such mistake occurred in a good faith
through the fault of the applicant, the Office may issue a certificate upon the payment of the
prescribed fee, provided that the correction does not involve any change in the registration that
requires republication of the mark.