PART FOUR: The Law on Trademarks, Service Marks and Trade Names

I.

Definitions; Principles

Mark is 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. (Sec. 121.1, IPC)

Mark could be a word mark (the use of the name of a person, or any
fanciful or arbitrary word), composite mark (consisting of a
combination of a word or letter and a device), device mark (which
may be a geometrical figure, a stylized rendering of the alphabet or
a representation of any object).

Marks may be creatively designed or coined.

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.
(Sec.121.2,IPC)

Trade name is the name or designation identifying or distinguishing

an enterprise. (Sec. 121.333, IPC) A trade name refers to the
business and its goodwill; a trademark refers to the goods. (Canon
Kabushiki Kaisha vs. CA, G.R. No. 120900, July 20, 2000)

Old definition of Marks - A trademark has been generally defined as

"any word, name, symbol or device adopted and used by a
manufacturer or merchant to identify his goods and distinguish
them from those manufactured and sold by others. (Societe des
Produits vs. CA, G.R. No. 112012, April 4, 2001)

Functions of a trademark - (1) they indicate origin or ownership of

the articles to which they are attached; (2) they guarantee that
those articles come up to a certain standard of quality; and (3) they
advertise the articles they symbolize. (Mirpuri vs. CA, G.R. No.
114508, Nov. 19, 1999).

The rights in a mark shall be acquired through registration made

validly in accordance with the provisions of the law. (Sec. 122, IPC)

The right to register trademarks, tradenames and service marks by

any person, corporation, partnership or association domiciled in the
Philippines or in any foreign country, is based on ownership, and
the burden is upon the applicant to prove such ownership. (Marvex
Commercial Co., Inc. v. Petra Hawpia & Co., et al., L-16297, Dec. 22,
1926) Where the applicant was not the owner of the trademark

being applied for, he had no right to apply for registration of the

same. The right to register trademarks, tradenames and service
marks is based on ownership. (Operators Inc. vs. Director of
Patenst, L-17901, Oct. 29, 1965)

However, registration is not a mode of acquiring ownership. When

the applicant is not the owner of the trademark being applied for,
he has no right to apply for registration of the same. Registration
merely creates a 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.
(Shangri-la Intl Hotel vs. DGC, G.R. No. 159938, March 31, 2006)
Such that, 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. (Sec. 138, IPC)

Ownership of a mark or trade name may be acquired not

necessarily by registration but by adoption and use in trade or
commerce. As between actual use of a mark without registration,
and registration of the mark without actual use thereof, the former
prevails over the latter. For a rule widely accepted and firmly
entrenched, because it has come down through the years, is that
actual use in commerce or business is a pre-requisite to the
acquisition of the right of ownership. (Emerald Garments Mfg.
Corp. v. Court of Appeals, G.R. No. 100098, December 29, 1995,
251 SCRA 600; Sterling Products International, Inc. v.
Farbenfabriken Bayer Aktiengesellschaft, G.R. No. L-19906, April 30,
1969, 27 SCRA 1214)

Thus, the right to register trademark is based on ownership and a

mere distributor of a product bearing a trademark, even if
permitted to use said trademark, has no right to and cannot register
the said trademark. (Gabriel vs. Perez, G.R. No. L-24075, Jan. 31,
1974) The term owner does not include the importer of the goods
bearing the trademark, trade name, service mark, or other mark of
ownership, unless such importer is actually the owner thereof in the
country from which the goods are imported. A local importer,
however, may make application for the registration of a foreign
trademark, trade name or service mark if he is duly authorized by
the actual owner of the name or other mark of ownership. (Unno
vs. General Milling, G.R. No. L-28554, Feb. 28, 1983)

Trademark vs. tradename Marks are protected upon registration

while trade name may be protected even without registration.
(Sec. 165, IPC) Thus, any subsequent use of the trade name by a
third party, whether as a trade name or a mark or collective mark,

or any such use of a similar trade name or mark, likely to mislead

the public, shall be deemed unlawful. (Sec. 165.2, IPC)

II.

It is a property right - The ownership of a trademark or tradename

is a property right which the owner is entitled to protect "since
there is damage to him from confusion or reputation or goodwill in
the mind of the public as well as from confusion of goods. The
modern trend is to give emphasis to the unfairness of the acts and
to classify and treat the issue as fraud. (Converse Rubber vs.
Universal Rubber, G.R. No. L-27906, Jan. 8, 1987)

The protection of trademarks is the laws recognition of the

psychological function of symbols. If it is true that we live by
symbols, it is no less true that we purchase goods by them. A trademark is a merchandising short-cut which induces a purchaser to
select what he wants, or what he has been led to believe what he
wants. The owner of a mark exploits this human propensity by
making every effort to impregnate the atmosphere of the market
with the drawing power of a congenial symbol. Whatever the means
employed, the aim is the same - to convey through the mark, in the
minds of potential customers, the desirability of the commodity
upon which it appears. Once this is attained, the trade-mark owner
has something of value. If another poaches upon the commercial
magnetism of the symbol he has created, the owner can obtain
legal redress. (Philip Morris Inc. vs. Fortune Tobacco Corp., G.R. No.
158589, June 27, 2006)

Is prior use a requirement for registration? No, prior use is no

longer a condition for filing or registration. However, the applicant
or registrant shall file a declaration of actual use of the mark, with
evidence to that effect, within 3 years from the filing of the
application; otherwise the application shall be refused or the mark
shall be removed from the Register. (Sec. 124.2, IPC)

Registrability of a Mark

Who may apply for registration?

Any person may apply for
registration who is domiciled or has a real and effective industrial
establishment in a country (a) which is a party to any convention,
treaty or agreement relating to intellectual property rights or the
repression of unfair competition, to which the Philippines is also a
party, or (b) extends reciprocal rights to nationals of the Philippines
by law. (Sec. 3, IPC)

Which marks can be registered? Any mark can be registered except

those that:
(a) 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;
(b) Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any foreign
nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a particular
living individual except by his written consent, or the name,
signature, or portrait of a deceased President of the Philippines,
during the life of his widow, if any, except by written consent of the
widow;
(d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in respect
of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or
cause confusion;
(e) 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;
(f) 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;
(g) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services;

(h) Consists exclusively of signs that are generic for the goods or
services that they seek to identify;
(i) Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice;
(j) Consists exclusively of signs or of indications that may serve in
trade to designate the kind, quality, quantity, intended purpose,
value, geographical origin, time or production of the goods or
rendering of the services, or other characteristics of the goods or
services;
(k) Consists of shapes that may be necessitated by technical factors
or by the nature of the goods themselves or factors that affect their
intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality. (Sec. 123.1, IPC) NOTE:
The nature of the goods to which the mark is applied will not
constitute an obstacle to registration. (Sec. 123.3, IPC)

Identical with prior marks - When one applies for the registration of
a trademark or label which is almost the same or very closely
resembles one already used and registered by another, the
application should be rejected and dismissed outright, even without
any opposition on the part of the owner and user of a previously
registered label or trademark, this not only to avoid confusion on
the part of the public, but also to protect an already used and
registered trademark and an established goodwill. (Chuanchow Soy
& Canning Co. vs. Director of Patents, 108 Phil 833, 836)

colorable imitation - The 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. (Etepha vs. Director of Patents, L-20635, March 31,
1966)

Generic terms and descriptive terms defined - Generic terms are

those which constitute "the common descriptive name of an article
or substance," or comprise the "genus of which the particular
product is a species," or are "commonly used as the name or
description of a kind of goods," or "imply reference to every
member of a genus and the exclusion of individuating characters,"
or "refer to the basic nature of the wares or services provided
rather than to the more idiosyncratic characteristics of a particular

product," and are not legally protectable. On the other hand, a term
is descriptive and therefore invalid as a trademark if, as understood
in its normal and natural sense, it "forthwith conveys the
characteristics, functions, qualities or ingredients of a product to
one who has never seen it and does not know what it is," or "if it
forthwith conveys an immediate idea of the ingredients, qualities or
characteristics of the goods," or if it clearly denotes what goods or
services are provided in such a way that the consumer does not
have to exercise powers of perception or imagination. (Societe des
Produits vs. CA, G.R. No. 112012, April 4, 2001)

Why are generic and descriptive terms not registrable? These

types of marks cannot be susceptible for exclusive appropriation as
it is open to the public for their use. Words and phrases in common
use and which merely indicate the character, kind, quality and
composition of the thing, may not be appropriated by anyone to his
exclusive use; nor those which are deceptively misdescriptive of the
product. (East Pacific Merchandising Corp. vs. Director of Patents,
G.R. No. L-14377, Dec. 29, 1960) A dealer in shoes cannot register
"Leather Shoes" as his trademark because that would be merely
descriptive and it would be unjust to deprive other dealers in
leather shoes of the right to use the same words with reference to
their merchandise. No one may appropriate generic or descriptive
words. They belong to the public domain. (Masso Hermanos vs.
Director of Patents, G.R. No. L-3952, Dec. 29, 1953)

It is evident that "CAMIA" as a trademark is far from being

distinctive. By itself, it does not identify petitioner as the
manufacturer or producer of the goods upon which said mark s
used, as contra-distinguished to trademarks derived from coined
words such as "Rolex," "Kodak" or Kotex." It has been held that "if a
mark is so commonplace that it cannot be readily distinguished
from others, then it is apparent that it cannot identify a particular
business; and he who first adopted it cannot be injured by any
subsequent appropriation or imitation by others, and the public will
not be deceived. (Phil. Refining Co. vs. Ng Sam, G.R. No. L-26676,
July 30, 1982)

The words "pale pilsen" may not be appropriated by SMC for its
exclusive use even if they are part of its registered trademark: SAN
MIGUEL PALE PILSEN, any more than such descriptive words as
"evaporated milk," "tomato ketchup," "cheddar cheese," "corn
flakes" and "cooking oil" may be appropriated by any single
manufacturer of these food products, for no other reason than that
he was the first to use them in his registered trademark. (Asia
Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993)

Although a combination of words may be registered as a tradename, it is no justification for not applying the principle that the use

of a descriptive or generic term in a trade-name is always subject to

the limitation that the registrant can not acquire the exclusive right
to the descriptive or generic term or word. (Ong Ai Gui vs. Director
of Patents, G.R. No. L-6235, March 28, 1955)

Suggestive terms on the other hand can be registered - Suggestive

terms are those which, in the phraseology of one court, require
"imagination, thought and perception to reach a conclusion as to
the nature of the goods." Such terms, "which subtly connote
something about the product," are eligible for protection in the
absence of secondary meaning. While suggestive marks are
capable of shedding "some light" upon certain characteristics of the
goods or services in dispute, they nevertheless involve "an element
of incongruity," "figurativeness," or " imaginative effort on the part
of the observer." (Societe des Produits vs. CA, G.R. No. 112012,
April 4, 2001)

Doctrine of Secondary meaning - As regards signs or devices

mentioned in paragraphs (j), (k), and (l) of Sec. 123.1, nothing shall
prevent the registration of any such sign or device which has
become distinctive in relation to the goods for which registration is
requested as a result of the use that have been made of it in
commerce in the Philippines. (Sec. 123.2, IPC) The doctrine of
secondary meaning was elaborated in the following terms: " . . . a
word or phrase originally incapable of exclusive appropriation with
reference to an article on the market, because geographically or
otherwise descriptive, might nevertheless have been used so long
and so exclusively by one producer with reference to his article
that, in that trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his product."
(Phil. Nut Industry vs. Standard, L-23055, July 31, 1975)

Thus, even if "Ang Tibay," therefore, were not capable of exclusive

appropriation as a trade-mark, the application of the doctrine of
secondary meaning could nevertheless be fully sustained because,
in any event, by respondent's long and exclusive use of said phrase
with reference to his products and his business, it has acquired a
proprietary connotation. This doctrine is to the effect that a word or
phrase originally incapable of exclusive appropriation with reference
to an article on the market, because geographically or otherwise
descriptive, might nevertheless have been used so long and so
exclusively by one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the word or
phrase has come to mean that the article was his product. (Ang vs.
Teodoro, 74 Phil 50 [1942]).

Although the word "SELECTA" may be an ordinary or common word

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 with one's business as an emblem, sign or device to

characterize its products, or as a badge or authenticity, it may
acquire a secondary meaning as to be exclusively associated with
its products and business. In this sense, its use by another may lead
to confusion in trade and cause damage to its business. (Arce Sons
and Co. vs. Selects Biscuits, 1 SCRA 253 [1961])

Doctrine of Secondary Meaning applicable to trade names - The

doctrine of secondary meaning originated in the field of trademark
law. Its application has, however, been extended to corporate
names sine the right to use a corporate name to the exclusion of
others is based upon the same principle which underlies the right to
use a particular trademark or tradename. However, while the
appellant may have proved that it had been using the word
'Lyceum' for a long period of time, this fact alone did not amount to
mean that the said word had acquired secondary meaning in its
favor because the appellant failed to prove that it had been using
the same word all by itself to the exclusion of others (Lyceum of the
Philippines vs. Court of Appeals, G.R. 101897, March 5, 1993)

Confusing Similarity - The similarity must be such as is likely to

mislead purchasers of ordinary caution and prudence into the belief
that the articles are those of another producer or manufacturer.
Whether the mark or label of one competitor resembles another is
to be determined by an inspection of the points of difference and
resemblance, as a whole, and not merely the points of
resemblance. (American Cyanimid vs. Director of Patents, G.R.
23954, April 29, 1977)

Test of confusing similarity of marks

(a) phonetic similarity - The following random list of confusingly
similar sounds in the matter of trademarks, culled from Nims,
Unfair Competition and Trade Marks, 1947, Vol. 1, will reinforce
our view that "SALONPAS" and "LIONPAS" are confusingly similar
in sound: "Gold Dust" and "Gold Drop"; "Jantzen" and "Jass-Sea";
"Silver Flash" and "Supper Flash"; "Cascarete" and "Celborite";
"Celluloid" and "Cellonite"; "Chartreuse" and "Charseurs";
"Cutex" and "Cuticlean"; "Hebe" and "Meje"; "Kotex" and
"Femetex"; "Zuso" and "Hoo Hoo". Leon Amdur, in his book
"Trade-Mark Law and Practice", pp. 419-421, cities, as coming
within the purview of the idem sonans rule, "Yusea" and "U-C-A",
"Steinway Pianos" and "Steinberg Pianos", and "Seven-Up" and
"Lemon-Up". In Co Tiong vs. Director of Patents, this Court
unequivocally said that "Celdura" and "Cordura" are confusingly
similar in sound; this Court held in Sapolin Co. vs. Balmaceda, 67
Phil. 795 that the name "Lusolin" is an infringement of the
trademark "Sapolin", as the sound of the two names is almost

the same. (Marvex Commercial Co., Inc. v. Petra Hawpia & Co.,
et al., L-16297, Dec. 22, 1926)
(b) Holistic Test - the person who infringes a trade mark does not
normally copy out but only makes colorable changes, employing
enough points of similarity to confuse the public with enough
points of differences to confuse the courts. What is undeniable is
the fact that when a manufacturer prepares to package his
product, he has before him a boundless choice of words,
phrases, colors and symbols sufficient to distinguish his product
from the others. When as in this case, Sunshine chose, without a
reasonable explanation, to use the same colors and letters as
those used by Del Monte though the field of its selection was so
broad, the inevitable conclusion is that it was done deliberately
to deceive. (Del Monte Corp. vs. CA, G.R. No. L-78352, Jan. 25,
1990)
(c) Dominancy Test - It has been consistently held that the question
of infringement of a trademark is to be determined by the test of
dominancy. Similarity in size, form and color, while relevant, is
not conclusive. If the competing trademark contains the main or
essential or dominant features of another, and confusion and
deception is likely to result, infringement takes place.
Duplication or imitation is not necessary; not it is necessary that
the infringing label should suggest an effort to imitate. The
dominant feature of SMC's trademark is the name of the
product: SAN MIGUEL PALE PILSEN, written in white Gothic
letters with elaborate serifs at the beginning and end of the
letters "S" and "M" on an amber background across the upper
portion of the rectangular design. On the other hand, the
dominant feature of ABI's trademark is the name: BEER PALE
PILSEN, with the word "Beer" written in large amber letters,
larger than any of the letters found in the SMC label. The trial
court perceptively observed that the word "BEER" does not
appear in SMC's trademark, just as the words "SAM MIGUEL" do
not appear in ABI's trademark. Hence, there is absolutely no
similarity in the dominant features of both trademarks. Neither
in sound, spelling or appearance can BEER PALE PILSEN be said
to be confusingly similar to SAN MIGUEL PALE PILSEN. No one
who purchases BEER PALE PILSEN can possibly be deceived that
it is SAN MIGUEL PALE PILSEN. No evidence whatsoever was
presented by SMC proving otherwise. (Asia Brewery Inc. vs. CA,
G.R. No. 103543, July 5, 1993)
Inexplicable use - Respondent's witness had no idea why
respondent chose "UNIVERSAL CONVERSE" as trademark and the
record discloses no reasonable explanation for respondent's use of
the word "CONVERSE" in its trademark. Such unexplained use by
respondent of the dominant word of petitioner's corporate name
lends itself open to the suspicion of fraudulent motive to trade upon

petitioner's reputation, thus: A boundless choice of words, phrases

and symbols is available to one who wishes a trademark sufficient
unto itself to distinguish his product from those of others. When,
however, there is no reasonable explanation for the defendant's
choice of such a mark though the field for his selection was so
broad, the inference is inevitable that it was chosen deliberately to
deceive. (Converse Rubber vs. Universal Rubber, G.R. No. L-27906,
Jan. 8, 1987) We do not see why applicant could not have stretched
his imagination even a little and extended his choice to other
members of the animal kingdom, as a brand to differentiate his
product from similar products in the market. In a similar case
decided by this Tribunal wherein, although one brand consisting of
the representation of a rooster was already being used by one
party, another party wanted to register a similar brand, consisting
of two roosters on a similar product. (Lim Hoa vs. Director of
Patents, G.R. No. L-6235, March 28, 1955)
Ordinary purchaser - In order that there may be deception of the
buying public in the sense necessary to constitute unfair
competition, it is necessary to suppose a public accustomed to buy,
and therefore to some extent familiar with, the goods in question.
The test of fraudulent simulation is to be found in the likelihood of
the deception of persons in some measure acquainted with an
established design and desirous of purchasing the commodity with
which that design has been associated. The test is not found in the
deception, or possibility of the deception, of the person who knows
nothing about the design which has been counterfeited, and who
must be indifferent as between that and the other. The simulation,
in order to be objectionable, must be such as appears likely to
mislead the ordinarily intelligent buyer who has a need to supply
and is familiar with the article that he seeks to purchase. (Asia
Brewery Inc. vs. CA, G.R. No. 103543, July 5, 1993) Accordingly,
taken as they will appear to a prospective customer, the
trademarks in question are not apt to confuse. Furthermore, the
product of the applicant is expressly stated as dispensable only
upon doctor's prescription, while that of oppositor does not require
the same. The chances of being confused into purchasing one for
the other are therefore all the more rendered negligible. Although
oppositor avers that some drugstores sell "BIOFERIN: without asking
for a doctor's prescription, the same if true would be an irregularity
not attributable to the applicant, who has already clearly stated the
requirement of a doctor's prescription upon the face of the label of
its product. (Bristol Myers vs. Director of Patents, 17 SCRA 128
[1966])
The related goods principle Goods are related when they belong
to the same class or have the same descriptive properties or
physical attributes, or they serve the same purpose or flow through
the same channel of trade. The registrant of the mark Esso for
petroleum products may not validly prevent others from using

Esso for cigarettes because there is a marked difference between

oil and tobacco, the respective goods flow through different
channels of trade, and the business of one is beyond the zone of
potential or natural and logical expansion of the other. (Esso
Standard Eastern Inc. vs. CA, G.R. No. L-29971, Aug. 31, 1982) The
use of identical marks on non-competing but related goods may
likely cause confusion. Thus, the trademark Ang Tibay for shoes
and slippers was not allowed to be used for shirts and pants
because they belong to the same general class of goods. (Ang vs.
Teodoro, 74 Phil 50 [1942])
III.

Registration of a Mark

Formal requirement for application of registration - The application

for the registration of the mark shall be in Filipino or in English and
shall contain the following:
(a) A request for registration;
(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a national or
where he has domicile; and the name of a State in which the
applicant has a real and effective industrial or commercial
establishment, if any;
(d) Where the applicant is a juridical entity, the law under which it is
organized and existing;
(e) The appointment of an agent or representative, if the applicant
is not domiciled in the Philippines;
(f) Where the applicant claims the priority of an earlier application,
an indication of:
i) The name of the State with whose national office the earlier
application was filed or if filed with an office other than a national
office, the name of that office,
ii) The date on which the earlier application was filed, and
iii) Where available, the application number of the earlier
application;
(g) Where the applicant claims color as a distinctive feature of the
mark, a statement to that effect as well as the name or names of
the color or colors claimed and an indication, in respect of each
color, of the principal parts of the mark which are in that color;

(h) Where the mark is a three-dimensional mark, a statement to

that effect;
(i) One or more reproductions of the mark, as prescribed in the
Regulations;
(j) A transliteration or translation of the mark or of some parts of
the mark, as prescribed in the Regulations;
(k) The names of the goods or services for which the registration is
sought, 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
(l) A signature by, or other self-identification of, the applicant or his
representative. (Sec. 124, IPC)
Filing date - The filing date of an application shall be the date on
which the Office received the following indications and elements in
English or Filipino:
(a) An express or implicit indication that the registration of a mark
is sought;
(b) The identity of the applicant;
(c) Indications sufficient to contact the applicant or his
representative, if any;
(d) A reproduction of the mark whose registration is sought; and
(e) The list of the goods or services for which the registration is
sought. (Sec. 127, IPC)
Note: No filing date shall be accorded until the required fee is paid.
(Sec. 127.2, IPC)

Priority right - An application for registration of a mark filed in the

Philippines by a person referred to in Section 3, and who previously
duly filed an application for registration of the same mark in one of
those countries, shall be considered as filed as of the day the
application was first filed in the foreign country. (Sec. 131.1, IPC)
However, no registration of a mark in the Philippines by a person
described in this section shall be granted until such mark has been
registered in the country of origin of the applicant. (Sec. 131.2,
IPC) This right does not 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 except for well-known
marks. (Sec. 131.3, IPC)

Procedure for registration

(a) Examination to determine whether the application satisfies the
requirements for the grant of a filing date under Section 127.
(Sec. 132, IPC)
(b) Examination to determine whether the application meets the
requirements of Section 124 and the mark is registrable under
Section 123. (Sec. 133, IPC)
(c) Denial of the application or amendment thereof or publication of
the application. (Sec. 133.2 and Sec. 133.3, IPC)
(d) Opposition to the application; notice; hearing; decision by
examiner; appeal to the Director of the Bureau of Trademarks;
appeal to the IPO Director General; appeal to the Court of
Appeals;
(e) Issuance of certificate of registration. (Sec. 136, IPC)
(f) Publication in the IPO Gazette of the fact of registration. (Sec.
136, IPC)

Duration of registration - The duration of a trademark registration

is 10 years, renewable for periods of 10 years each renewal. The
request for renewal must be made within 6 months before or after
the expiration of the registration. (Sec. 145, IPC)

Post-registration requirement The registrant is required to file a

declaration of actual use, and evidence to that effect, within 1 year
from the fifth anniversary of the date of registration of the mark;
otherwise the mark shall be removed from the Register. (Sec. 145,
IPC) BUT, non-use of a mark may be excused if caused by
circumstance arising independently of the will of the trademark
owner. Lack of funds is not an acceptable excuse. (Sec. 152, IPC)
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 person who believes that he is or will be damaged by the
registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the registration of the
mark under this Act.
(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, or

if the registered mark is being used by, or with the permission
of, the registrant so as to misrepresent the source of the goods
or services on or in connection with which the mark is used. If
the registered mark becomes the generic name for less than all
of the goods or services for which it is registered, a petition to
cancel the registration for only those goods or services may be
filed. A registered mark shall not be deemed to be the generic
name of goods or services solely because such mark is also used
as a name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant
public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the
generic name of goods or services on or in connection with
which it has been used.
(c) At any time, if the registered owner of the mark without
legitimate reason fails to use the mark within the Philippines, or
to cause it to be used in the Philippines by virtue of a license
during an uninterrupted period of three (3) years or longer.
(Sec. 151, IPC)

There, being no evidence of use of the mark by others before 1932,

or that appellee abandoned use thereof, the registration of the
mark was made in accordance with the Trademark Law. Granting
that appellant used the mark when appellee stopped using it during
the period of time that the Government imposed restrictions on
importation of respondent's brassiere bearing the trademark, such
temporary non-use did not affect the rights of appellee because it
was occasioned by government restrictions and was not permanent,
intentional, and voluntary. To work an abandonment, the disuse
must be permanent and not ephemeral; it must be intentional and
voluntary, and not involuntary or even compulsory. There must be a
thoroughgoing discontinuance of any trade-mark use of the mark in
question" (Callman, Unfair Competition and Trademark, 2nd Ed., p.
1341). The use of the trademark by other manufacturers did not
indicate an intention on the part of appellee to abandon it. (Romero
vs. Maiden Form, G.R. No. L-18289, March 31, 1964 )

The non-use of a trademark or an article of merchandise due to

legal restrictions or circumstances beyond one's control is not to be
considered as an abandonment. Said rule was correctly applied to
the case at bar where the use of the trademark was interrupted
during the Japanese occupation and in fact was discontinued when
the importation of the product covered by the trademark was
prohibited by the Central Bank Regulations. (Phil. Nut Industry vs.
Standard, L-23055, July 31, 1975)

Assignment and Transfer of Application and Registration An

application for registration or its registration may be assigned or
transferred with or without the transfer of the business using the
mark. However, it will be null and void if it would mislead the public
especially as regards the nature, source, manufacturing process,
characteristics or suitability for their purpose, of the goods or
services to which the mark is applied. Such assignment or transfer
shall be in writing and with the signatures of the contracting
parties. It shall be recorded with the IPO otherwise it shall have no
effect against third parties. (Sec. 149, IPC)

License contracts Any license contract concerning the application

of a mark or its registration shall provide for effective control by the
licensor of the quality of the goods or services of the licensee in
connection with which the mark is used. If the contract shall not
provide the foregoing, it shall not be valid. Said contracts must be
recorded with the IPO, otherwise, it shall not bind third parties.
(Sec. 150.1, IPC)
IV.

V.

Well-known Marks

A well-known mark is one which a competent authority of the

Philippines has designated to be well-known internationally and in
the Philippines. In determining whether a mark is well-known,
account shall be taken of the knowledge of the relevant sector of
the public, rather than 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] and [f],IPC)

Additional right of owner The exclusive right of the owner of a

well-known mark 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 (i) the 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, and (ii) the interests of the owner of the registered mark are
likely to be damaged by such use. (Sec. 147.2, IPC)

Infringement of Trademark; Unfair Competition

Rights conferred on trademark (a) 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. In case of

the use of an identical sign for identical goods or services, a

likelihood of confusion shall be presumed.
(b) 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

Limitations on such right Duration of registration (10 years) and

Territorial limitations (rights can be enforced within the territory of
registration except well-known marks)

When is there infringement? There is infringement if a registered

mark is used in commerce by a person without the consent of the
registered owner thereof. Such infringement may involve:
(a) 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
(b) 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. (Sec. 155, IPC)

In order to bring a civil action for infringement, it is not required

that there be an actual sale of the goods or services using the
infringing material. Infringement takes place upon the mere use or
reproduction of the registered mark. (Sec. 155, IPC)

Remedies available to the owner whose registered mark was

infringed
(a) Sue for damages (Sec. 156.1)
(b) Have the infringing goods impounded (Sec. 156.2)
(c) Ask for double damages (Sec. 156.3)
(d) Ask for injunction. (Sec. 156.4)
(e) Have the infringing goods disposed of outside the channels of
commerce (Sec. 157.1)
(f) Have the infringing goods destroyed (Sec. 157.1)
(g) File criminal action (Sec. 170)
(h) Administrative sanctions.

Owners of a registered mark is required to give notice of the fact

that his mark is registered in order to recover profits or damages in
case of infringement. However, knowledge of the fact of
registration is presumed if the words Registered Mark or the
symbol (Registered) is displayed together with the mark.

Limitations to actions for infringement

(a) No action for infringement could be taken against a person who,
in good faith and before the filing date or priority date, was
using the mark for the purposes of his business or enterprise.
Note, however, that such person may assign or transfer his right
to use the registered mark only together with his business or
enterprise.
(b) Only an injunction against future printing may be imposed upon
an innocent infringing printer.
(c) Similarly, only an injunction against the presentation of
infringing advertising matter in future issues may be imposed on
innocent infringing newspapers and magazines. (Sec. 159, IPC)

Right of Foreign Corporation to Sue in Trademark or Service Mark

Enforcement Action - Any foreign national or juridical person who
meets the requirements of Section 3 of this Act and does not
engage in business in the Philippines may bring a civil or
administrative action hereunder for opposition, cancellation,
infringement, unfair competition, or false designation of origin and

false description, whether or not it is licensed to do business in the

Philippines under existing laws. (Sec. 160, IPC)
A foreign corporation which has never done any business in the
Philippines and which is unlicensed and unregistered to do business
here, but is widely and favorably known in the Philippines through
the use therein of its products bearing its corporate and tradename,
has a legal right to maintain an action in the Philippines to restrain
the residents and inhabitants thereof from organizing a corporation
therein bearing the same name as the foreign corporation, when it
appears that they have personal knowledge of the existence of
such a foreign corporation, and it is apparent that the purpose of
the proposed domestic corporation is to deal and trade in the same
goods as those of the foreign corporation. (La Chemise Lacoste vs.
Fernandez, G.R. No. 65659, May 21, 1984)

Unfair competition is the use by a person of deception or other

means contrary to good faith by which he passes off the goods
manufactured by him or in which he deals, or his business or
services, for those of another person who has established goodwill
in the goods such person manufactures or deals in, or his business
or services, or who shall commit any acts calculated to produce said
result. Some acts of unfair competition are as follows:
(a) Giving ones goods the general appearance of goods of another
manufacturer;
(b) Inducing the false belief that one is offering the services of
another who has identified such services in the minds of the
public;
(c) Making any false statement calculated to discredit the goods,
business or services of another.
Infringement of trademark vs. unfair competition
(a) Infringement of trademark is the unauthorized use of a
trademark, whereas unfair competition is the passing off of
one's goods as those of another.
(b) In infringement of trademark fraudulent intent is unnecessary
whereas in unfair competition fraudulent intent is essential.
(c) In infringement of trademark the prior registration of the
trademark is a prerequisite to the action, whereas in unfair
competition registration is not necessary. (Del Monte Corp. vs.
CA, G.R. No. L-78352, Jan. 25, 1990)

Criminal Penalties Independent of the civil and administrative sanctions imposed

by law, a criminal penalty of imprisonment from two (2) years to five (5) years and a
fine ranging from Fifty thousand pesos (P50,000) to Two hundred thousand
pesos(P200,000), shall be imposed on any person who is found guilty of committing
any of the acts mentioned in Section 155, Section 168 and Subsection 169.1. (Sec.
170, IPC)