Non-Registrable Marks | Trademarks | INTELLECTUAL PROPERTY

Non-Registrable Marks in Philippine Trademark Law

In Philippine law, the Intellectual Property Code (IP Code) of the Philippines, primarily under Republic Act No. 8293, governs trademarks and service marks. It provides specific guidance on registrable and non-registrable marks to protect the interests of both businesses and consumers, ensuring clarity in the marketplace. Under Section 123 of the IP Code, certain types of marks are deemed non-registrable, as they do not meet the statutory requirements. Here is a detailed examination of these non-registrable marks:

1. Marks That Are Devoid of Distinctive Character (Section 123.1(a))

• Non-Distinctive Marks: Marks that lack distinctiveness cannot be registered. Distinctiveness is a core characteristic that enables consumers to identify and distinguish a product's origin. Examples of non-distinctive marks include:
  • Generic words (e.g., "water" for bottled water).
  • Common or everyday phrases that don't denote a specific product or brand identity.
• Acquired Distinctiveness (Secondary Meaning): If a mark initially lacks distinctiveness, it may still become registrable if it acquires a secondary meaning. This occurs when the mark becomes strongly associated with a specific business in the minds of the public over time.

2. Marks That Are Contrary to Public Order or Morality (Section 123.1(b))

• Marks that are immoral, scandalous, or offensive to a broad section of society cannot be registered. This includes obscene, blasphemous, or offensive words, symbols, or images.
• Protecting public interest: The non-registrability of such marks aims to protect public morals and maintain societal standards.

3. Marks Consisting Exclusively of Signs or Indications that Serve in Trade (Section 123.1(c))

• This provision covers marks that only indicate the quality, quantity, intended purpose, value, geographic origin, or other descriptive elements related to the goods or services.
• Examples:
  • Descriptive terms like "fresh" for fruits or "strong" for building materials.
  • Geographical names solely referring to the origin of the goods or services, like "Cebu Lechon" (which describes pork dishes from Cebu).
• Descriptive Marks with Acquired Distinctiveness: Similar to non-distinctive marks, descriptive marks may be registrable if they acquire a unique association with a brand over time, thereby gaining a secondary meaning.

4. Marks That Are Customary in Current Language or in Bona Fide and Established Trade Practices (Section 123.1(d))

• Marks that have become customary or generic through widespread, common use in the industry are not registrable.
• Examples:
  • Terms like "light" for low-calorie products, or "eco-friendly" for environmentally safe products.
  • Symbols or shapes universally recognized in the trade industry without a distinct association to one brand.
• The rationale here is to prevent monopolization of common terms, ensuring they remain available for general use.

5. Marks Identical or Confusingly Similar to Prior Registered or Pending Marks (Section 123.1(e))

• Identical or Similar Marks: Marks that are identical or nearly identical to a previously registered or pending mark are non-registrable. This is to prevent consumer confusion and protect the rights of the original trademark owner.
• Test for Similarity: The IP Code mandates the application of the "dominancy test" and/or "holistic test" to determine whether two marks are confusingly similar:
  • Dominancy Test: Focuses on the dominant feature(s) of a mark and its effect on consumers.
  • Holistic Test: Considers the entirety of the mark, including appearance, sound, meaning, and overall impression.
• The similarity assessment considers factors such as the market channels, classes of goods or services, and target consumers.

6. Well-Known Marks or Those with Prior International Protection (Section 123.1(f))

• Well-Known Marks: If a mark is well-known internationally, even if it is unregistered in the Philippines, it may prevent the registration of a similar mark in the country. This provision reflects the Philippines’ obligations under the Paris Convention for the Protection of Industrial Property.
• International Comity: The IP Code respects well-known foreign trademarks to uphold the goodwill and reputation associated with global brands, especially those likely to cause confusion if imitated.

7. Marks That Are Deceptive, Misleading, or Likely to Cause Confusion (Section 123.1(g))

• Misleading or Deceptive Marks: Marks that misrepresent the nature, quality, or geographical origin of goods or services cannot be registered. Examples include:
  • Using the word “organic” for a product that is not truly organic.
  • Employing geographical names or symbols to imply a false origin (e.g., “Swiss Watch” for a watch made in another country).
• The goal is to protect consumers from deceit and preserve the integrity of commercial transactions.

8. Marks that Imitate State Symbols, Emblems, and International Organizations (Section 123.1(h))

• Prohibited Symbols: Marks that use the Philippine flag, national emblems, or insignia associated with governmental bodies, or internationally recognized organizations (e.g., United Nations symbols) are non-registrable.
• Protection of State Interests: This prohibition is grounded in public policy, aiming to prevent the misuse or commercial exploitation of national or international symbols.

9. Marks Consisting of Names, Portraits, or Signatures of Living Persons or Famous Individuals Without Consent (Section 123.1(i))

• Use of Personal Names: The names, portraits, or signatures of living individuals cannot be registered without their explicit consent. The same applies to well-known historical or deceased figures if such use would imply false endorsement or association.
• Right of Privacy and Publicity: This provision respects the personal rights of individuals and ensures their names or likenesses are not used commercially without permission.

10. Marks Similar to Those Already Known in Trade (Section 123.1(j))

• Marks that are identical or confusingly similar to unregistered but well-known trademarks in the Philippines cannot be registered.
• This recognizes and protects the commercial goodwill associated with unregistered marks that have gained sufficient recognition in the market, providing fair protection to businesses and preventing unfair competition.

11. Marks That Would Cause Damage to a Third Party (Section 123.1(k))

• If the registration of a mark could potentially harm a third party, especially by infringing upon their intellectual property rights, it will be non-registrable.
• Examples: Marks that infringe on copyright-protected designs, or that have a strong association with another party's brand image, logo, or business identity, cannot be registered.

12. Marks Similar to Trade Names Previously Used by a Third Party (Section 123.1(l))

• A trademark that closely resembles a previously established trade name is non-registrable, as it may create a likelihood of confusion about the source of the goods or services.
• The similarity test includes reviewing the sound, spelling, and general appearance of the trade name and the trademark.

Additional Notes on Non-Registrability

• Administrative Remedies: The IP Code provides recourse for parties affected by the registration of confusingly similar or infringing marks, allowing them to oppose such registrations.
• Exceptions: Certain marks that might otherwise be deemed descriptive or generic can be eligible for registration if they acquire secondary meaning or if used in ways that transform their perception in the marketplace.

Conclusion

Non-registrable marks in Philippine trademark law serve to prevent consumer deception, protect public order and morality, and maintain a fair, competitive marketplace. Each ground of non-registrability reflects an effort to balance the rights of trademark owners with public interest and international standards, ensuring that the use of trademarks fulfills both economic and social objectives.