(part 3 of Sir Amador's notes)
The Law on Trademarks
Trademark Act
Section 121.1, definition of marks
Section 121.2, Collective marks
Section 122, How marks are acquired
The Trademark Act, Republic Act No. 166, as amended, which has been repealed under Section 339 of the Intellectual Property Code, was effective from June 20, 1947 until January 1, 1998, when the Intellectual Property Code took effect.
RA 166 adopted the actual use system under which a trademark owner can apply for the registration of his mark only after he has used it in commerce in the Philippines for at least two months before the filing of the application.
IP Code
Section 123 to 123.3, Registrability of marks
Intellectual Property Code, Republic Act No. 8293, adopted a hybrid system of registration in that while actual use of the mark is not required at the time of filing of the application, use of the mark in commerce must actually commence within three years from the filing date of the application; otherwise, the application will be refused or the registration cancelled if it has been issued.
The Trademark Act adopted a single class registration system. In contrast, the IP Code adopted a multiple class registration system. Use of the mark on any item within a specific class of goods preserves the trademark owner’s registration for the entire class.
Section 128, Single registration for goods and services
A trademark owner need only file a single application for the registration of his mark covering several classes of goods or services whether they belong to one class or to several classes of the Nice Classification
Paris Convention
The provisions of the Paris Convention may be sub-divided into four main categories:
A first category contains rules of substantive law, which guarantee a basic right known as the right to national treatment in each of the member countries;
A second category establishes another basic right known as the right of priority;
A third category defines a certain number of common rules in the field of substantive law which contain either rules establishing rights and obligations of natural persons and legal entities, or rules requiring or permitting the member countries to enact legislation following those rules;
A fourth category deals with the administrative framework which has been set up to implement the Convention, and includes the final clauses of the Convention.
National Treatment Principle
National treatment means that, as regards the protection of industrial property, each country party to the Paris Convention must grant the same protection to nationals of the other member countries as it grants to its own nationals.
The same national treatment must be granted to nationals of countries, which are not party to the Paris Convention if they are domiciled in a member country or if they have a “real and effective” industrial or commercial establishment in such a country.
This national treatment rule guarantees not only that foreigners will be protected, but also that they will not be discriminated against in any way. The national treatment rule applies first of all to the “nationals” of the member countries. The term “national” includes both natural persons and legal entities.
Right of Priority
Section 131, Priority right
The right of priority means that, on the basis of a regular application for an industrial property right filed by a given applicant in one of the member countries, the same applicant (or its or his successor in title) may, within a specified period of time (six or 12 months), apply for protection in all the other member countries. These later applications will then be regarded as if they had been filed on the same day as the earliest application.
The TRIPS Agreement
Standards. In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member. Each of the main elements of protection is defined, namely the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection
Enforcement. The second main set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to all IPR enforcement procedures.
Dispute settlement. The Agreement makes disputes between WTO Members about the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures.
Trademarks
Visually perceptible under IP Code; perceptible under the US Lanham Act
Any sign, or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings, must be eligible for registration as a trademark, provided that it is visually perceptible.
The TRIPS Agreement contains certain provisions on well-known marks, which supplement the protection required by Article 6bis of the Paris Convention, as incorporated by reference into the TRIPS Agreement, which obliges Members to refuse or to cancel the registration, and to prohibit the use of a mark conflicting with a mark which is well known.
Geographical indications
Geographical indications are defined, for the purposes of the Agreement, as indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
Visible Sign
The term "mark” means 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.
The IP Code does not provide for registration of trade names, but only for registration of trademarks. It provides that notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties in literal compliance with the provisions of the Paris Convention.
“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. Collective marks indicate origin in members of a group while a trademark indicates a single origin for the goods bearing the trademark.
Economic Function
A 'trade-mark' is a distinctive mark of authenticity through which the goods of a particular producer or manufacturer may be distinguished from those of others, and its sole function is to designate distinctively the origin of the products to which it is attached.
Source-Indicating Function
The ability of a trademark to distinguish the product to which it is affixed from competing goods of other manufacturers is in legal language called the distinctiveness of a trademark. The traditional legal function of a trademark therefore is to indicate the source or origin of the goods on which it is used.
Guarantee Function
Trademarks also serve to guarantee that the product to which it is affixed comes up to a certain standard of quality. In its guarantee function, a trade-mark is a distinctive mark of authenticity through which the goods of a particular producer or manufacturer may be distinguished from those of others.
Advertisement Function
The ability of a trademark to indicate the source or origin of the product on which it is used and ensure that the product comes up to the quality or standard that consumers have come to expect from it combine to give effect to the advertising function of trademark among consumers.
Distinctiveness
The distinctiveness of a trademark determines its relative strength or weakness. In other words, the strength of a mark denotes its tendency to identify the goods sold under the mark as emanating from a particular source.
Spectrum of Distinctiveness
Generic Marks
Since mark is intended to be an indication of the origin of the goods or services on which it is used, a mark cannot be registered if it consists exclusively of signs that are generic for the goods or services that they seek to identify. A generic word is unregistrable as a mark because it totally lacks distinctiveness.
e.g. The trademarks T-JOIST and TEE JOISTS ostensibly for floor and roof systems, but actually for joists shaped like the capital letter T, are generic.
e. g. When a generic term is made part of an otherwise registrable mark, it must be disclaimed before the composite mark may be registered. The basic purpose of disclaimers is to make of record that a significant element of a composite mark is not being exclusively appropriated by itself apart from the composite.
Case:
Ong Ai Gui Alias Tan Ai Gui vs. The Director of the Philippines Patent office, respondent. E. I. Du Pont De Nemours and Company, intervenor G.R. No. L-6235 March 28, 1955.
e.g. "Nylon" used in connection with shirt-making, can never become distinctive or acquire secondary meaning because it is a generic term, like cotton, silk, linen, or ramie.
Case: Mcdonald’s Corporation et.al. vs. L.C. Big Mak Burger, Inc., et. al., G.R. No. 143993, August 18, 2004
e.g. The BIG MAC mark, which should be treated in its entirety and not dissected word for word, is neither generic nor descriptive. Generic marks are commonly used as the name or description of a kind of goods, such as “Lite” for beer or “Chocolate Fudge” for chocolate soda drink.
Descriptive Marks
Descriptive marks, on the other hand, convey the characteristics, functions, qualities or ingredients of a product to one who has never seen it or does not know it exists, such as “Arthriticare” for arthritis medication. On the contrary, “Big Mac” falls under the class of fanciful or arbitrary marks as it bears no logical relation to the actual characteristics of the product it represents.
Section 123.1 (j) precludes the registration of a mark that “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.”
Suggestive Marks
A suggestive mark is therefore a word, picture, or other symbol that suggests, but does not directly describe, something about the goods or services in connection with which it is used as a mark. Suggestive marks are those which require imagination, thought or perception to reach a conclusion as to the nature of the goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. Suggestive marks, like fanciful and arbitrary marks, are registrable without proof of secondary meaning.
Case: American Wire & Cable Company vs. Director of Patents and Central Banahaw Industries, G.R. No. L-26557 February 18, 1970.
e.g. The trademark DYNAFLEX for electrical wires is a combination of the words FLEX, which means bend, and the prefix DYNA, which suggests power. DYNA is not in itself a root word but it has been commonly associated with any source of power.
Arbitrary or Fanciful Marks
An arbitrary mark is a word or picture that is in common linguistic use but which, when used in connection with certain goods or services, neither suggests nor describes any quality or characteristic of those particular goods or services. Arbitrary marks are inherently distinctive and need no proof of secondary meaning to be regarded as valid for registration or legal protection.
Case: Andres Romero vs. Maiden form Brassiere Co., Inc. and The Director of Patents, respondents. G.R. No. L-18289 March 31, 1964.
Case: Masso Hermanos, S.A.vs.Director of Patents, G.R. No. L-3952 December 29, 1953
e.g. Trademarks derived from coined words such as "Rolex," "Kodak" or "Kotex" are most distinctive
e.g "Cosmopolite" does not give the name, quality or description of the canned fish for which it is used. It does not even describe the place of origin, for it does not indicate the country or place where the canned fish was manufactured. It is a very general term which does not give the kind or quality of the goods.
e.g. The musical term ADAGIO is used in an arbitrary or fanciful sense for brassiere.
Immoral and Scandalous Marks
Section 123.1 (a) states that 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. Paragraph (m) also precludes the registration of a mark that is contrary to public order or morality.
Case: In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971). See also In re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981)
e.g. The mark BULLSHIT is considered "profane" and was declared scandalous for "accessories of a personal nature ... attaché cases, hand bags, purses, belts, and wallets."
Disparaging Marks
Section 168.3 (c), IP Code
Case: In re Runsdorf, 171 USPQ 443, 444 (TTAB 1971). See also In re Tinseltown, Inc., 212 USPQ 863 (TTAB 1981)
Section 123.1 (a) bars the registration of any mark that consists of or comprises matter which, with regard to persons, institutions, beliefs, or national symbols, does any of the following: (1) disparages them, (2) falsely suggests a connection with them, (3) brings them into contempt, or (4) brings them into disrepute.
Disparagement is essentially a violation of one's right of privacy -- the right to be "let alone" from contempt or ridicule.
Elements of disparagement are (1) that the communication reasonably would be understood as referring to the plaintiff; and (2) that the communication is disparaging, and would be considered offensive or objectionable by a reasonable person of ordinary sensibilities.
e.g. INTEL, INUTEL INSIDE
National Symbols
Designations have been held to be national symbols within the meaning of the Act
e.g. Hammer and sickle is a national symbol of the Union of Soviet Socialist Republics; the American or bald eagle with wings extended is a well-known national symbol or emblem of the United States.
False Suggestion of a Connection
Section 123.1 (a) prohibits the registration of a mark that consists of or comprises matter which may falsely suggest a connection with persons, institutions, beliefs or national symbols.
National Flag or Coat of Arms
Section 123.1 (b) precludes the registration of a mark which 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.
Name, Portrait and Signature Marks
Section 123.1 (c) prohibits the registration of a mark which 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.
e.g. PRINCE CHARLES, 'Name' in this section is not restricted to the full name of an individual but refers to any name regardless of whether it is a full name, or a surname or given name, or even a nickname, which identifies a particular living individual.
Particular Living Individual or Deceased President
Section 123.1 (c) applies to marks that comprise matter which identifies living individuals; it does not apply to marks that comprise matter which identifies deceased persons
e.g. greeting cards consisting of the name EISENHOWER, a portrait of President Dwight D. Eisenhower
e.g. When a name, portrait or signature in a mark identifies a particular living individual, or a deceased president of the country during the life of his widow, the mark can be registered only if the written consent of the individual, or of the president's widow, is filed in the application.
Conflicting Marks
Section 123.1 (d) prohibits the registration of a mark is it 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 (ii) closely related goods or services, or (iii) if it nearly resembles such a mark as to be likely to deceive or cause confusion.
Under Section 147.1, in case of use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
Confusing Similarity with Registered Marks
Note: If the competing trademarks contain 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; nor is it necessary that the infringing label should suggest an effort to imitate.
Consent Agreements
A "consent agreement" refers to an agreement in which a party, such as a prior registrant, consents to the use and/or registration of a mark by another party, like an applicant for registration of the same mark or a similar mark. It may also refer to an agreement in which each party consents to the use and/or registration of the same mark or a similar mark by the other party. A consent agreement that is not merely a "naked" consent specifies the reasons why no likelihood of confusion exists and/or arrangements undertaken by the parties to avoid confusion of the public.
Relatedness of the Goods or Services
The goods or services do not need to be identical or even competitive to justify a determination that there is a likelihood of confusion. It is sufficient that the goods or services of the applicant and the registrant are related in some manner or that the circumstances surrounding their marketing are such that they are likely to confuse consumers.
e.g. MARTIN'S for wheat bran and honey bread likely to be confused with MARTIN'S for cheese
e.g. LAREDO for land vehicles LAREDO for pneumatic tires
Comparing Word Marks
Similarity in appearance is one consideration in determining whether there is a likelihood of confusion between marks. Likelihood of confusion is not avoided between otherwise confusingly similar marks merely by adding or deleting a house mark or matter that is descriptive or suggestive of the named goods or services.
e.g. Thus, TRUCOOL for synthetic coolant was held likely to be confused with TURCOOL for cutting oil
Design Marks
When the marks at issue are both design marks, the issue of the similarity of the marks must be decided primarily on the basis of visual similarity. In this situation, consideration must be given to the fact that a purchaser's recollection of design marks is often of a general and hazy nature.
e.g. a design mark consisting of an abstract circular design mark for seafood was held not likely to be confused with oval breaking wave design for various food items including juices and fruits.
Confusing Similarity with Well-Known Marks
Section 123.1 (e) precludes the registration of a mark which 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;
On the other hand, Section 123.1 (f) prohibits the registration of a mark which 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
Case: 246 CORPORATION, doing business under the name and style of Rolex Music Lounge vs. Hon. Reynaldo B. Daway, Montes Rolex S.A. and Rolex Centre Phil. Limited
e.g. ROLEX, KODAK
ROLEX cannot be appropriated as part of ROLEX MUSIC LOUNGE
e.g. In Montres Rolex, S.A., Rolex (Hong Kong) Ltd.) and Rolex Center Limited Philippine Branch versus Rolex Plastic Manufacturing Corporation, Montres Rolex S. A. sought the compulsory change the name of Rolex Plastic Manufacturing Corporation, by deleting its well-known trademark and Rolex from the corporate name.
Deceptive Marks
Section 123.1 (g) of the Intellectual Property Code precludes the registration of deceptive marks or those that are “likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or serves.”
e.g. use of the term "nylon" in the trade-name is both "descriptive" and "deceptively and misdescriptive" of the applicant-appellant's business, for apparently he does not use nylon in the manufacture of the shirts, pants.
Deceptive marks may include marks which falsely describe the material content of a product and marks which are geographically.
Neither a disclaimer of deceptive matter nor a claim that it has acquired distinctiveness can obviate a rejection on the ground that the mark consists of or comprises deceptive matter.
Signs Indicating Quality, Kind, Geographical Origin
Section 123.1 (j) precludes the registration of a mark that “consist exclusively of signs or of indications that may serve in trade to designate the geographical origin” of the goods of services. While the language suggests that they may be registered as part of registrable matter, they must nonetheless be disclaimed on the basis of the principle that they cannot be exclusively appropriated.
Case: Asia Brewery, Inc. vs. The Hon. Court of Appeals and San Miguel Corporation, G.R. No. 103543 July 5, 1993.
e.g, "Pilsen" is a "primarily geographically descriptive word." It is unregistrable and not appropriable by any beer manufacturer because it refers to a type of beer ("pilsen")
Descriptive Trademarks
Marks that are “merely descriptive” when applied to or used in connection with the goods, business or services of the applicant or “deceptively misdescriptive” of them are not registrable.
e.g. a dealer in shoes cannot register "Leather Shoes" as his trademark because that would be merely descriptive;
Case: Lyceum of The Philippines, Inc. vs. Court of Appeals, Lyceum of Aparri, Lyceum of Cabagan, Lyceum of Camalaniugan, Inc., Lyceum of Lallo, Inc., Lyceum of Tuao, Inc., Buhi Lyceum, Central Lyceum of Catanduanes, Lyceum of Southern Philippines, Lyceum of Eastern Mindanao, Inc. and Western Pangasinan Lyceum, Inc. G.R. No. 101897 March 5, 1993.
e.g. LYCEUM for an educational institution is merely descriptive of its purpose and its first user may not prohibit others from using the word to apply to their school of learning.
Geographical Marks under the TRIPS Agreement
Under the Agreement on Trade Related Aspects of Intellectual Property Rights. (TRIPS Agreement), geographical indications are those which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.
Functional Marks
Section 123.1 (k) of the Intellectual Property Code explicitly precludes the registration of “shapes that may be necessitated by the nature of the goods themselves or factors that affect their intrinsic value.”
e.g. under this provision, the shape of a hat will be unregistrable as a trademark for hat since the shape is dictated by the nature of the good itself.
Color Marks
Under Section 123.1 (l), a mark consisting of color alone cannot be registered as a mark unless defined by a given form. It is fundamental in trademark jurisprudence that color alone, unless displayed in a distinct or arbitrary design, does not function as a trademark. In one case, the colors black and red are not so displayed by the petitioner, and are primary colors commonly and freely used in the printing business.
Secondary Meaning
Section 123.2 of the Intellectual Property Code allows the registration of marks mentioned in paragraphs (j), (k) and (l), “which have become distinctive in relations to the goods for which registration is requested as a result of the use that has been made of it in commerce in the Philippines. The IPO may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant’s goods in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five years before the date on which the claim of distinctiveness is made.” The Intellectual Property Code therefore recognizes that marks that are unregistrable under its Section 123.1, paragraphs (j), (k) and (l), may nonetheless become registrable after they have acquired secondary meaning.
Case: Ana L. Ang vs. Toribio Teodoro, G.R. No. L-48226 December 14, 1942
The doctrine of "secondary meaning" is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article of 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.
Prior Use
Prior use must be trademark use in the legal and protectable sense. Thus, if the trademark itself, like “Nylon” is not legally protectable no length of use and no amount of advertising will make it distinctive of shirts or of the business of manufacturing them.
Prior use by one will controvert a claim of legal appropriation, by subsequent users. In the case at bar, the Director of Patents found that "ample evidence was presented in the record that Centennial Mills, Inc. was the owner and prior user in the Philippines of the trademark 'All Montana' through a local importer and broker. Use of a trademark by a mere importer, indentor or exporter inures to the benefit of the foreign manufacturer whose goods are identified by the trademark.
The Territoriality of Rights in Marks
Before the Philippine adherence to the TRIPS Agreement and the enactment of the IP Code, the unyielding doctrine of the Supreme Court has been that trademark rights are territorial and cannot extend to markets which the goods bearing the trademark have not reached.
The principle of territoriality of the Trademark Law has been recognized in the Philippines. As Callmann puts it, the law of trademarks "rests upon the doctrine of nationality or territoriality." The mere origination or adoption of a particular trade name without actual use thereof in the market is insufficient to give any exclusive right to its use, even though such adoption is publicly declared, such as by use of the name in advertisements, circulars, price lists, and on signs and stationery.
A trade-mark acknowledges no territorial boundaries of municipalities or states or nations, but extends to every market where the trader's goods have become known and identified by the use of the mark.
Prior Use of Marks
Prior use must be trademark use in the legal and protectable sense. Thus, if the trademark itself, like “Nylon” is not legally protectable no length of use and no amount of advertising will make it distinctive of shirts or of the business of manufacturing them.
Prior use by one will controvert a claim of legal appropriation, by subsequent users. Use of a trademark by a mere importer, indentor or exporter inures to the benefit of the foreign manufacturer whose goods are identified by the trademark. Where the Junior Party has established a continuous chain of title and, consequently, prior adoption and use it is safe to conclude that the Junior Party has satisfactorily discharged the burden of proving priority of adoption and use and is entitled to registration.
Doctrine of Related Goods
Goods are related when they belong to the same class or have the same descriptive properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in grocery stores.
Case: Faberge, Incorporated vs. The Intermediate Appellate Court and Co Beng Kay, G.R. No. 71189 November 4, 1992
e.g. In Faberge Incorporated vs. Intermediate Appellate Court, the Third Division of the Supreme Court attempted to lay this issue to rest on the basis of the literal and restrictive language of Section 20 of the Trademark Law. The Court allowed the registration of the trademark "BRUTE" for briefs in the name of respondent since Faberge using its mark BRUT only on after-shave lotion, shaving cream, deodorant, talcum powder and toilet soap.
Well-Known Marks
The Supreme Court in La Chemise Lacoste has held that the Philippines is bound to accord protection to well-known trademarks under Article 6bis of the Paris Convention.
Case: In 246 CORPORATION, doing business under the name and style of Rolex Music Lounge vs. Hon. Reynaldo B. Daway, Montes Rolex S.A. and Rolex Centre Phil. Limited, upheld an injunction in favor of Montres Rolex SA against the use of its trademark ROLEX by Rolex Music Lounge.
e.g. The Supreme Court cited Section 123.1 (f) of the IP Code and noted that the provision prohibits the appropriation of well-known marks that are registered in the Philippines not only for goods that are similar but also for goods that are not similar to those for which the owner had registered its well-known mark in the Philippines.
Actual Use of Marks
Rights in marks are acquired through actual use in commerce. Advertising is not use.
Excusable Non-Use
Failure of the applicant to file a declaration and evidence of actual use within three years from the filing date of the application shall result in the rejection of the application or the cancellation of the registration certificate if it has been issued
Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark
Use by Related Company
Section 52.4 of the IP Code
The use of a mark by a company related with the registrant or applicant shall inure to the latter's benefit, and such use shall not affect the validity of such mark or of its registration. This is subject to the condition that such mark is not used in such manner as to deceive the public.
A related company may be either a natural person or a juristic person. A party may claim use of a mark through a related company provided the party relying on such use controls the nature and quality of the goods or services on or in connection with which the mark is used.
First-to-File and First-to-Use
The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. Rights are not acquired by mere registration. Mere registration without actual use does not lead to acquisition of trademark rights since the applicant or registrant’s failure to use the mark in commerce within three years from the filing date of the application leads to rejection.
A trademark owner who is first to file an application for the registration of a mark acquires the limited right to have his application examined ahead of any identical or similar mark.
The applicant who has the earliest filing date may not necessarily end up as the registered owner of a mark. His application for the registration of the mark may be rejected 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.
Rights Conferred by Registration
Sections 147.1 and 147.2, IP Code, Rights Conferred
147.1. 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.
147.2. 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.
Section 148, IP Code, Use of Indications by Third Parties for Purposes Other than those for which the mark is used.
Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.
Case: Playboy v Terri Welles
Section 150, IP Code License Contracts
Section 152.1 to 152.4, Non-use of Mark When Excused
Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark. The special circumstances to excuse non-use in affidavits of non-use shall not be accepted unless they are clearly beyond the control of the registrant such as the prohibition of sale imposed by government regulation.
Enforcement of Rights on Marks
Section 134, Opposition
Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application.
Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language.
For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix the maximum period of time within which to file the opposition.
120-day period for notice of opposition, affidavit with supporting documentary evidence, power of attorney
120-day period for respondent’s answer, affidavit with supporting documentary evidence, power of attorney
Summary rules of procedure – decision to be rendered on the basis of the documents submitted, with opportunity to file a memorandum and a draft decision.
Sec. 155. Remedies; Infringement
Any person who shall, without the consent of the owner of the registered mark:
155.1. 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
155.2. 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: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.
Measure of Damage
The measure of the damages suffered shall be either the reasonable profit which the complaining party would have made.
Profit which the defendant actually made out of the infringement
Court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant
Border Control
Sec. 166. Goods Bearing Infringing Marks or Trade Names
No article of imported merchandise which shall copy or simulate the name of any domestic product, or manufacturer, or dealer, or which shall copy or simulate a mark registered in accordance with the provisions of this Act, or shall bear a mark or trade name calculated to induce the public to believe that the article is manufactured in the Philippines, or that it is manufactured in any foreign country or locality other than the country or locality where it is in fact manufactured, shall be admitted to entry at any customhouse of the Philippines.
