PROTECTING WELL-KNOWN

TRADEMARKS AND MEASURES

TO PREVENT BAD FAITH
REGISTRATIONS

JESUS ANTONIO Z. ROS, LL.M.

Bangkok, Thailand
16 October 2019
Well-Known M arks?
 Well-Known M arks

- A mark cannot be registered if it is identical with, or

confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the
Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, as being
already the mark of a person other than the applicant for
registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark is
well-known, account shall be taken of the knowledge of the
relevant sector of the public, rather than of the public at
large, including knowledge in the Philippines which has been
obtained as a result of the promotion of the mark;
[Sec. 123.1(e), IP Code]
 Well-Known M arks

- A mark cannot be registered if it is identical with, or

confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding
paragraph, which is registered in the Philippines with respect
to goods or services which are not similar to those with
respect to which registration is applied for: Provided, That
use of the 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; [Sec. 123.1(f), IP Code]
 Well-Known M arks

- A mark cannot be registered if it consists of

immoral, deceptive or scandalous matter, or
matter which may disparage or falsely
suggest a connection with persons, living or
dead, institutions, beliefs, or national
symbols, or bring them into contempt or
disrepute; [Sec. 123.1(a), IP Code]
 Well-Known M arks

- Nothing in this section shall entitle the owner of a

registration granted under this section to sue for acts
committed prior to the date on which his mark was
registered in this country: Provided, That, notwithstanding
the foregoing, the owner of a well-known mark as defined in
Section 123.1(e) of this Act, that is not registered in the
Philippines, may, against an identical or confusingly similar
mark, oppose its registration, or petition the cancellation of
its registration or sue for unfair competition, without
prejudice to availing himself of other remedies provided for
under the law. [Sec. 131.3, IP Code]
 Well-Known M arks

- 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. [Sec. 147.2, IP Code]
 Well-Known M arks

- RULE 103. Criteria for Determining Whether a Mark is

Well-known. In determining whether a mark is well-known,
the following criteria or any combination thereof may be
considered:

(a) the duration, extent and geographical area of any use of

the mark, in particular, the duration, extent and geographical
area of any promotion of the mark, including advertising or
publicity and the presentation, at fairs or exhibitions, of the
goods and/or services to which the mark applies;

[TM Regulations of 2017]

 Well-Known M arks

- RULE 103. Criteria for Determining Whether a Mark is

Well-known.

(b) the market share, in the Philippines and in other

countries, of the goods and/or services to which the mark
applies;

(c) the degree of the inherent or acquired distinction of the

mark;

(d) the quality-image or reputation acquired by the mark;

[TM Regulations of 2017]

 Well-Known M arks

- RULE 103. Criteria for Determining Whether a Mark is

Well-known.

(e) the extent to which the mark has been registered in the
world;

(f) the exclusivity of registration attained by the mark in the

world;

(g) the extent to which the mark has been used in the world;

[TM Regulations of 2017]

 Well-Known M arks

- RULE 103. Criteria for Determining Whether a Mark is

Well-known.

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

(j) the record of successful protection of the rights in the

mark;

[TM Regulations of 2017]

 Well-Known M arks

- RULE 103. Criteria for Determining Whether a Mark is

Well-known.

(k) the outcome of litigations dealing with the issue of

whether the mark is a well-known mark; and,

(l) the presence or absence of identical or similar marks

validly registered for or used on identical or similar goods or
services and owned by persons other than the person
claiming that the mark is a well-known mark.

[TM Regulations of 2017]

 Bad Faith Registration

“Sec. 151.1. A petition to cancel a registration of

a mark… may be filed…

(b) At any time, if the registered mark becomes the

generic name for the goods or services, or a portion
thereof, for which it is registered, or has been
abandoned, or its registration was obtained
fraudulently or contrary to the provisions of this Act,

“fradulent” = “bad faith”

 Jurisprudence

Fredco M anufacturing Corporation vs.

President and Fellows of Harvard
College ( Harvard University) , G.R. N o
1 8 5 9 1 7 , June 1 , 2 0 1 1

Photo taken from: Image taken from IPOPHL Database

http://www.oocities.org/harvardjeans13/
 Jurisprudence

"The Director General ruled that more than

the use of the trademark in the Philippines, the
applicant must be the owner of the mark sought to
be registered. The Director General ruled that the
right to register a trademark is based on ownership
and when the applicant is not the owner, he has no
right to register the mark." Furthermore, Fredco was
not able to explain how N ew York Garments was
able to arrive at the mark "Harvard". I n addition,
no evidence was shown by Fredco that it was
authorized by Harvard University to use "Harvard".
 Jurisprudence

The Supreme Court relied on the

following undisputed facts: 1 ) that
"Harvard" was first adopted in 1 6 3 9 by
then Harvard College; 2 ) that " Harvard"
was first used in commerce in 1 8 7 2 ; 3 )
that "Harvard" was first used on clothing
in 1 9 5 3 and 4 ) that "Harvard" is
registered in at least 5 0 countries by
Harvard University.
 Jurisprudence

The mark of New York Garments should not have been

allowed in the first place because it falsely suggests a
connection with an institution, that is, Harvard University.
New York Garments failed to show any association with
Harvard University.

The mark is protected as a well-known mark under the

Section 6bis of the Paris Convention. Furthermore, the Paris
Convention protects trade names without obligation of
registering them in the member state.
 Jurisprudence

Sehwani, I ncorporated and/ or Benita

Fries, I nc. vs. I n-N -O ut Burger, I nc.,
G.R. N o. 1 7 1 0 5 3 , O ctober 1 5 , 2 0 0 7
 Jurisprudence

The Supreme Court upheld the findings of the BLA

Director that IN-N-OUT is an internationally well-
known mark citing Article 6bis of the Paris
Convention and declaring that the same provision
is a self-executing provision and does not require
legislative enactment to give it effect in a member
country. The essential requirement is that the
trademark to be protected must be "well-known"
in the country where protection is sought.
 Bad Faith Registration

Shangri-La I nternational Hotel

M anagement, Ltd. vs. Developers
Group of Companies, I nc., G.R. N o.
1 5 9 9 3 8 , M arch 3 1 , 2 0 0 6

Photo taken from:

https://www.shangrilafinestchinesecuisine.com/
 Bad Faith Registration

"At any rate, it is ludicrous to believe that the parties

would come up with the exact same lettering for the
word "Shangri-la" and the exact same logo to boot.
x x x

I t is truly difficult to understand why, of the millions of

terms and combination of letters and design available,
the respondent had to choose exactly the same mark
and logo as that of the petitioners, if there was no
intent to take advantage of the goodwill of petitioners'
mark and logo.”
 Bad Faith Registration

“ O ne who has imitated the trademark of

another cannot bring an action for
infringement, particularly against the true
owner of the mark, because he would be
coming to court with unclean hands.
Priority is of no avail to the bad faith
plaintiff. Good faith is required in order to
ensure that a second user may not merely
take advantage of the goodwill established
by the true owner."
 Bad Faith Registration

Ecole de Cuisine M anille ( Cordon Bleu

of the Philippines) , I nc. vs. Renaud
Cointreau & Cie and Le Cordon Bleu
I nt' l., B.V., G.R. N o. 1 8 5 8 3 0 , June
5, 2013.

LE CORDON BLEU, ECOLE

DE CUISINE MANILLE
 Bad Faith Registration

The Director General held that only the owner of the mark
has the right to register the mark and that the user of the
mark in the Philippines is not ipso facto the owner thereof.
The ownership belongs to Cointreau considering the
undisputed use of the mark since 1895 in Paris, France in
which Ecole's directress trained in 1977. Moreover, Ecole
failed to show how it was able to come up with such name
and mark. It was therefore concluded that Ecole has unjustly
appropriated the subject mark, thus it is removed from the
mantle of protection of the law.
 Bad Faith Registration

"The function of a trademark is to point out

distinctly the origin or ownership of the goods ( or
services) 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".
 Bad Faith Registration

Birkenstock O rthopaedie GM BH and

Co. KG vs. Philippine Shoe Expo
M arketing Corporation, G.R. N o.
1 9 4 3 0 7 , N ovember 2 0 , 2 0 1 3

BI RKEN STO CK
 Bad Faith Registration

"I t must be emphasized that registration of a

trademark, by itself, is not a mode of acquiring
ownership. I f the applicant is not the owner of the
trademark, he has no right to apply for its
registration. Registration merely creates prima facie
presumption of the validity of the registration, of
the registrant' s ownership of the trademark, and of
the exclusive right to the use thereof. Such
presumption, just like the presumptive regularity in
the performance of official functions, is rebuttable
and must give way to evidence to the contrary.”
 Bad Faith Registration

"Clearly, it is not the application or registration of

a trademark that vests ownership thereof, but it is
the ownership of a trademark that confers the right
to register the same. A trademark is an industrial
property over which its owner is entitled to
property rights which cannot be appropriated by
unscrupulous entities that, in one way or another,
happen to register such trademark ahead of its true
and lawful owner. The presumption of ownership
accorded to a registrant must then necessarily yield
to superior evidence of actual and real ownership
of a trademark."
“ M isappropriated” M arks

Images taken from IPOPHL Database

“ Bad Faith” or “ Parody” ?

( For restaurant services under Class 4 3 )

LO RD O F THE WI N GS
( For chicken under Class 2 9 )

GAM E O F TURO N S
( For banana fritters under Class 2 9 )
Proposed Amendments to I P Code

Sec. 9.4. Establish and maintain registries of trademarks,

well-known marks, and other marks of ownership;"

Sec. 123.1. A mark cannot be registered if it impairs or

dilutes the distinctiveness, or harms the reputation of a
well-known mark, as declared by competent authority,
whether registered or not; or

For the purpose of declaring a mark well-known as

provided in paragraph (e), the Director General, Bureau of
Legal Affairs, Bureau of Trademarks and judicial authorities
are considered competent authorities in relation to their
respective functions or jurisdictions.
Proposed Amendments to I P Code

Sec. 123.1 (e). A mark cannot be registered if it is identical with, or

confusingly similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines as
prescribed in the Regulation to be well-known internationally or in
the Philippines, whether or not it is registered here, as being already
the mark of a person other than the applicant for registration, and
used for identical or similar goods or services:

Provided, That use of the mark in relation to those goods or services

which are not similar to those with respect to which registration is
applied for and that the use of such mark in those goods and services
would indicate a connection between those goods or services, and
the owner of the well-known mark and that the interests of the
owner of the well-known mark are likely to be damaged by such use;
Proposed Amendments to I P Code

Sec. 137.2 (as renumbered). Cancellation of

Registration. - A petition to cancel a registration of
a mark under this Act may be filed with the Bureau
of Legal Affairs by any interested person at any
time:

1. if the registration was contrary to the

provisions of this Act;
2. if the registration was obtained fraudulently;
3. if the registration was obtained in bad faith;
THANK YOU!