TRADEMARK

 A trademark is a sign used in trade to distinguish goods and services. It is a kind of

intellectual property (IP). Trademarks tell us the source of products, connecting them to
the companies from which they come. They are usually words or logos.

HISTORY

 The use of trademarks dates back thousands of years. The first marks – the branding of
livestock depicted in Stone Age cave paintings – identified personal property to prevent
theft. Egyptian masonry from some six thousand years ago shows quarry marks and
stonecutters signs, which named the source of the stone and the laborer who carried
out the work. The practice of marking goods with a graphic design to certify its origin
and quality spread throughout the ancient world as the scale of commerce increased
and goods became more sophisticated. Some of the marks used by trade guilds in the
middle ages – such as the hallmark for gold purity – are still in use today although the
guilds no longer exist.

 Over the years these marks evolved into today’s system of trademark registration and
protection. The earliest trademark legislation was the Bakers’ Marking Law, obliging
every baker to put his mark on the bread he baked, enacted by the British Parliament in
1266. Merchants’ marks - personal marks used from the 13th to 16th century -could be
considered the predecessors of modern trademarks in that they bore names of traders
and served as a guarantee that the goods sold were of the expected quality.

LEGAL BASES

 Trademarks are governed by both state and federal law. Originally, state common law
provided the main source of protection for trademarks. However, in the late 1800s, the
U.S. Congress enacted the first federal trademark law. Since then, federal trademark
law has consistently expanded, taking over much of the ground initially covered by state
common law. The main federal statute is the Lanham Act, which was enacted in 1946
and most recently amended in 1996. Today, federal law provides the main, and by and
large the most extensive, source of trademark protection, although state common law
actions are still available. Most of the discussion in this summary focuses on federal
law.

1. What is a Trademark?

The Philippine Intellectual Property Code (IP Code) broadly defines a trademark as “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.” Thus, a mark (1)
must be a visible sign and (2) must be capable of distinguishing one’s goods and services
from those of another.

2. What law governs trademarks?

Republic Act No. 8293, otherwise known as the Intellectual Property Code of the
Philippines primarily governs intellectual property rights in the Philippines. In addition, the
Philippines adheres to the Paris Convention for the Protection of Industrial Property Rights
and the Agreement on Trade-Related Aspects of Intellectual Property Rights also known as
the TRIPS Agreement.

3. What marks cannot be registered?

A trademark cannot be registered if it:

(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.

But as regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall
prevent the registration of any such sign or device which has become distinctive.

4. Why should you register your trademark?

—Your trademark distinguishes your goods from others. It represents your business
identity, image, and reputation that sets it apart from your competitors.

—Your trademark is your asset and property. It is worth a lot of money!

—Registration of your trademark will protect your business and shield it from unscrupulous
persons who want to ride on the goodwill which your business has painstakingly created
through the years.

—There are remedies available to owners of registered marks from infringers such as Civil
and criminal actions for infringement, unfair competition, false or fraudulent declaration and
false designation of origin. There are also Administrative Actions before the Bureau of Legal
Affairs of the IPO for violation of IP (infringement, unfair competition, false designation of
origin) under Section 10.2 of the IP Code and Inter Partes Cases (opposition, cancellation)
and/ or Border Measure before the Bureau of Customs.

5. What is the difference between a Trademark and a Service Mark?

A trademark pertains to goods and those under International Class 1 to 34 while service
marks refer to services under International Class 35 to 42.

6. Is it required that my trademark cover goods or services that I am presently selling? What
if I am not yet using my trademark? Can I file an application already?
No. An application for registration may be based on actual use or intended use of a mark in
Philippine commerce. Prior use of a mark in the Philippines is not necessary to file an
application. The use of mark becomes necessary only after the application for its
registration has been filed because a Declaration of Actual Use (“DAU”) in Philippine
commerce is required to be submitted within 3 years from filing date. Hence, you may
already file an application for registration.

7. How are rights to the mark acquired?

Under the Philippine IP Code, rights to a trademark are acquired through registration with
the Bureau of Trademarks of the IPO. Generally, protection against infringement is
accorded only to marks duly registered with the IPO. Also, priority of rights in a trademark is
not anymore based on prior actual use but on prior filing of an application for registration.

8. Why is it important to file an application with the IPO immediately?

We observe the first-to-file rule. Thus, if you filed an application for a mark, no one can file
an application for the same mark anymore.

9. May we file multiple classes in one trademark application?

Yes. One application may relate to several goods and/or services, whether they belong to
one class or to several classes of the Nice Classification. Where goods and/or services
belonging to several classes of the Nice Classification have been included in one
application, such an application shall result in one registration.

10. What is the period of protection of a trademark registration?

The period of protection is ten (10) years from the date of issuance and is renewable for a
period of ten (10) years at a time.

If you are interested in filing a trademark application, it is highly recommended that you
consult a Philippine trademark lawyer first so that you can lodge the application properly.

Let our Philippine trademark lawyers, attorneys, paralegals and experts help you. For
further inquiries, you may seek legal assistance by e-mailing us at info@ndvlaw.com.

Nicolas & De Vega Law Offices is a full service law firm in the Philippines. You may visit us
at the 16th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, 1605
Pasig City, Metro Manila, Philippines. You may also call us at +632 4706126, +632
4706130, +632 4016392.