Ownership, Registration, and Duration | Trademarks | INTELLECTUAL PROPERTY

Trademarks in Philippine Law: Ownership, Registration, and Duration

In the Philippines, trademark law is primarily governed by the Intellectual Property Code of the Philippines (Republic Act No. 8293), which was enacted to align local intellectual property laws with international standards, including the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). This legislation regulates ownership, registration, protection, and enforcement of trademarks. Here’s a comprehensive overview of the principles and regulations surrounding ownership, registration, and duration of trademarks in the Philippines:

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1. Ownership of Trademarks

• Definition of Trademark: A trademark is defined under Section 121.1 of the IP Code as any visible sign capable of distinguishing goods (or services, in the case of service marks) of an enterprise.

• Rights Conferred by Ownership: Trademark ownership in the Philippines is based on the principle of first-to-file rather than first-to-use. This means that trademark rights are generally conferred through registration, although use can establish a degree of goodwill that may provide limited protection under unfair competition principles.

• Acquisition of Ownership: Ownership is acquired through:

  • Registration: The primary method of acquiring rights to a trademark. The applicant who first files an application will have priority in ownership.
  • Limited Recognition of Prior Use: Although registration is required for ownership, prior use may serve as a defense against claims of unfair competition.

• Scope of Ownership: Trademark ownership grants the exclusive right to use the mark for the registered goods or services, allowing the owner to prevent others from using identical or confusingly similar marks within the same market segment.

2. Registration Process

• The Application: The registration process for trademarks involves submitting an application to the Intellectual Property Office of the Philippines (IPOPHL), along with required documents and fees. The application must include:

  • The applicant’s name and address,
  • A representation of the trademark,
  • The goods or services the mark will cover, and
  • Any claim of priority if applicable.

• Examination Process:

  • Formal Examination: IPOPHL reviews whether the application complies with formal requirements.
  • Substantive Examination: After passing the formal examination, the application undergoes substantive examination to check for conflicts with prior registered marks and compliance with the grounds for refusal.

• Grounds for Refusal of Registration:

  • Absolute Grounds: Section 123.1 of the IP Code provides that a mark cannot be registered if it is descriptive, generic, deceptive, or contrary to public order or morality.
  • Relative Grounds: Registration can also be refused if the mark is identical or confusingly similar to an existing registered mark for similar goods or services.

• Publication and Opposition: Once approved, the trademark application is published in the IPOPHL Gazette. Any party with valid grounds can file an opposition within 30 days, challenging the application based on prior rights, confusion likelihood, or other concerns.

• Registration and Issuance of Certificate: If no opposition is filed or if the opposition is resolved in favor of the applicant, the mark proceeds to registration, and a Certificate of Registration is issued. This certificate is prima facie evidence of ownership.

• Registration Based on International Agreements:

  • Madrid Protocol: As a signatory to the Madrid Protocol, the Philippines allows for international trademark registration, enabling applicants to file trademarks in multiple jurisdictions with a single application through the World Intellectual Property Organization (WIPO).

3. Duration of Trademark Protection

• Initial Registration Period: A trademark registration in the Philippines is valid for ten (10) years from the date of issuance of the Certificate of Registration, as per Section 145 of the IP Code.

• Renewal of Registration:

  • Registrations may be renewed indefinitely for successive ten-year periods.
  • The renewal application must be filed within six months before the expiration date. However, a grace period of six months after the expiration date is allowed, subject to payment of additional fees.

• Declaration of Actual Use (DAU): The IP Code requires that the trademark owner must file a Declaration of Actual Use to maintain the registration, demonstrating that the mark is actively used in commerce:

  • First DAU: Due within three years from the filing date of the application.
  • Subsequent DAUs: Must be filed within one year following each successive five-year period after registration.

• Consequences of Non-Use:

  • Cancellation of Registration: A trademark may be canceled if the owner fails to file the DAU or if the mark is not used for three consecutive years without valid justification.
  • Defense Against Non-Use: Justifiable reasons, such as import restrictions or regulatory delays, may exempt the owner from cancellation due to non-use.

4. Rights and Remedies of Trademark Owners

• Exclusive Right to Use and License: The trademark owner holds exclusive rights to use the mark in commerce and may authorize others to use it under a licensing agreement.

• Infringement and Unfair Competition:

  • Trademark infringement involves unauthorized use of a registered mark, which may confuse consumers.
  • Remedies include civil action, preliminary injunctions, damages, and, in some cases, criminal penalties.
  • Unfair Competition under Article 189 of the Revised Penal Code and Section 168 of the IP Code provides limited protection for marks not formally registered but enjoying market goodwill.

• Protection Against Dilution: Under the IP Code, owners of well-known trademarks can also claim protection from the dilution of their marks, especially against actions that may erode the distinctiveness of the brand.

5. Special Considerations for Foreign Trademark Owners

• National Treatment: Foreign nationals and companies have equal rights and remedies for trademark protection in the Philippines, consistent with TRIPS and other international conventions.
• Paris Convention and Priority Rights: Foreign applicants from countries that are members of the Paris Convention can claim a priority filing date based on an earlier application in their home country, provided they file in the Philippines within six months.

Summary of Key Points:

• Ownership of a trademark in the Philippines is primarily based on registration, and the first-to-file rule applies.
• The registration process involves formal and substantive examination, publication, and opposition.
• Trademarks are protected for an initial period of ten years, renewable indefinitely, subject to actual use requirements.
• Rights conferred by trademark ownership include exclusive usage, licensing, and remedies for infringement, dilution, and unfair competition.
• Foreign owners benefit from national treatment and international priority rights in alignment with global agreements.

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This framework ensures robust protections for trademark owners in the Philippines while upholding fair competition principles.

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.

Marks vs. Collective Marks vs. Trade Names | Trademarks | INTELLECTUAL PROPERTY

Marks vs. Collective Marks vs. Trade Names

Introduction to Intellectual Property in the Philippines

In the Philippines, intellectual property is protected under various laws, notably the Intellectual Property Code (Republic Act No. 8293). Within this framework, trademarks play a crucial role in protecting brands, ensuring fair competition, and safeguarding consumers from confusion. Understanding the distinctions between different types of trademarks, including ordinary marks, collective marks, and trade names, is essential for effective brand protection and compliance with the law.

I. Marks

Definition and Nature:

A mark is a sign capable of distinguishing the goods or services of one enterprise from those of others. Marks can include words, names, symbols, devices, or any combination thereof that is used in commerce to identify and distinguish goods or services.

Types of Marks:

1. Word Marks: Consist of letters, words, or numerals (e.g., "Coca-Cola").
2. Device Marks: Include logos or designs (e.g., the Nike swoosh).
3. Combined Marks: Include both words and design elements.
4. Sound Marks: Recognizable sounds that signify the source of goods (e.g., NBC chimes).
5. Color Marks: Specific colors used in packaging or branding.

Registration and Protection:

Under the Intellectual Property Code, marks can be registered with the Intellectual Property Office (IPO) of the Philippines. Registration provides several advantages:

• Legal presumption of ownership.
• Exclusive right to use the mark in connection with the registered goods or services.
• Ability to take legal action against infringement.

Duration of Protection:

Registered marks are protected for ten years from the date of registration and may be renewed indefinitely for subsequent ten-year periods, provided that the mark is still in use.

II. Collective Marks

Definition and Nature:

Collective marks are a type of trademark used by members of a collective group or association to identify goods or services as originating from that group. They indicate that the goods or services come from a particular group, which adheres to certain standards set by that group.

Characteristics:

• Used by multiple members of a collective group.
• Signifies a common origin or quality.
• Must be registered as a collective mark to provide legal protection.

Examples:

• Marks used by cooperatives or associations (e.g., a collective mark for organic farmers).

Registration and Protection:

To register a collective mark, the group must demonstrate that it is an association or organization with a defined membership. The application must include rules governing the use of the collective mark and details about its members.

Benefits:

• Enhances the reputation of the collective group.
• Provides a mechanism for controlling the quality of goods or services.

III. Trade Names

Definition and Nature:

A trade name is a name under which a business operates and is known to the public. Unlike trademarks, which are used to identify goods or services, trade names identify the business itself.

Characteristics:

• Can be a word, phrase, or combination of elements.
• Used to distinguish a business from others in the marketplace.
• May or may not be registered as a trademark.

Registration and Protection:

Trade names can be registered with the Securities and Exchange Commission (SEC) for corporations or partnerships and with the Department of Trade and Industry (DTI) for sole proprietorships. While registration of a trade name does not provide the same level of protection as a registered trademark, it offers some degree of legal recognition and can prevent others from using similar names in the same business sector.

Duration of Protection:

The protection of trade names lasts as long as the business continues to operate under that name. However, it can be subject to cancellation if the business ceases operations or if the name is found to be misleading.

IV. Key Differences

Aspect	Marks	Collective Marks	Trade Names
Definition	Distinctive signs for goods/services	Marks used by a collective group	Name under which a business operates
Registration	Required for protection	Required for collective protection	Optional registration for recognition
Usage	By one entity	By multiple members of a group	By the business entity
Legal Protection	Stronger legal rights	Group-based legal protection	Weaker protection, primarily against confusion
Duration	10 years, renewable	10 years, renewable	As long as the business operates

Conclusion

Understanding the nuances between marks, collective marks, and trade names is vital for businesses operating in the Philippines. Each type serves a distinct purpose in the realm of intellectual property, providing various forms of protection and recognition. Businesses must carefully consider their branding strategies and legal protections to ensure their marks and trade names are properly registered and defended against potential infringement. By leveraging the rights afforded by these forms of intellectual property, businesses can secure their market position and enhance their reputation in a competitive landscape.

Trademarks | INTELLECTUAL PROPERTY

Trademarks in the Philippines: A Comprehensive Overview

1. Definition of Trademarks

A trademark is a recognizable sign, design, or expression that identifies products or services of a particular source from those of others. In the Philippines, trademarks can consist of words, names, symbols, devices, or any combination thereof that distinguishes the goods or services of one entity from another.

2. Legal Framework

The legal framework governing trademarks in the Philippines is primarily found in the Intellectual Property Code of the Philippines (Republic Act No. 8293), which was enacted on June 6, 1997. This law establishes the rules and regulations concerning trademarks, service marks, trade names, and commercial names.

3. Types of Trademarks

Trademarks can be categorized into several types:

• Product Trademarks: Marks used to identify goods.
• Service Marks: Marks used to identify services.
• Collective Marks: Marks used by members of a collective group or association.
• Certification Marks: Marks that certify the quality or origin of goods or services.

4. Registration Process

4.1. Application

To obtain trademark protection in the Philippines, an application must be filed with the Intellectual Property Office of the Philippines (IPOPHL). The application must include:

• The name and address of the applicant.
• A clear representation of the trademark.
• A list of the goods or services associated with the trademark.
• The applicable fees.

4.2. Examination

Once submitted, the application undergoes a substantive examination, during which the IPOPHL checks for compliance with the requirements of the law, including:

• Distinctiveness: The mark must be capable of distinguishing goods or services.
• Non-descriptiveness: Marks that describe the goods or services cannot be registered.
• Non-conflict with existing trademarks: The mark must not be identical or confusingly similar to registered marks.

4.3. Publication

If the application passes the examination, it will be published in the IPOPHL's Official Gazette for opposition. Third parties have 30 days from the date of publication to file an opposition against the application.

4.4. Registration

If no opposition is filed, or if the opposition is resolved in favor of the applicant, the trademark will be registered, and a Certificate of Registration will be issued.

5. Duration of Protection

Trademark registration in the Philippines is valid for 10 years from the date of registration. The registration can be renewed indefinitely for successive 10-year periods, provided that the mark is still in use.

6. Rights Conferred by Registration

Upon registration, the owner of the trademark is granted the exclusive right to use the mark in connection with the goods or services for which it is registered. This includes:

• The right to prevent others from using a similar mark that may cause confusion.
• The right to bring legal action against unauthorized users or infringers.
• The right to license the trademark to third parties.

7. Infringement and Enforcement

Trademark infringement occurs when a party uses a mark that is identical or confusingly similar to a registered trademark without the permission of the owner. The remedies available for trademark infringement include:

• Injunctions: To stop further use of the infringing mark.
• Damages: Compensation for losses incurred due to the infringement.
• Destruction of infringing goods: To eliminate products bearing the infringing mark.

8. Fair Use and Limitations

Certain uses of trademarks may not constitute infringement, including:

• Descriptive fair use: Using a trademark to describe the goods or services rather than as a brand identifier.
• Comparative advertising: Using a trademark to compare products in a manner that is not misleading.

9. International Treaties and Agreements

The Philippines is a member of several international agreements concerning trademarks, including:

• The Paris Convention for the Protection of Industrial Property
• The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)
• The Madrid Protocol: Allows for international registration of trademarks.

10. Conclusion

Trademarks are a vital part of the business landscape in the Philippines, providing protection for brand identity and helping consumers identify the source of goods and services. Understanding the intricacies of trademark law, from registration to enforcement, is crucial for businesses seeking to protect their intellectual property. Businesses should consider seeking legal counsel to navigate the complexities of trademark law effectively.

11. Recommendations

• Conduct a Trademark Search: Before filing, conduct a thorough search to avoid potential conflicts with existing trademarks.
• Seek Legal Assistance: Consult with an intellectual property lawyer for guidance on the application process, potential disputes, and enforcement of rights.
• Maintain Trademark Use: Ensure that the trademark is actively used in commerce to maintain its validity and enforceability.

This comprehensive overview serves as a foundational guide to understanding trademarks within the Philippine legal framework.