PART III

THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES

The IPC does NOT anymore provide for prior use as a condition for ownership of mark (Sec.
122). REGISTRATION IS THE SOLE BASIS. However, a trade name or business may be acquired
by prior use and need not be registered.

PRINCIPLES
1. The right to the mark is separate and distinct from the business using such mark (Sec.
149.1)
2. The right of registration belongs to the owner of the mark (Unno Commercial Enterprises,
Inc. v. General Milling Corp., GR 28554, February 28, 1983).

TRADEMARK
Any visible sign capable of distinguishing the goods (trademark) or service (service mark) of an
enterprise and shall include a stamped or mark container of goods. In relation thereto, a trade
name means the name or designation Identifying or distinguishing an enterprise (Elidad Kho v.
Court of Appeals, GR no. 115758, March 11, 2002).

TRADE NAME
Any individual name or surname, firm name, device or word used by manufacturers,
industrialist, merchants and others to identify their businesses, vocations or occupations
(converse Rubber Corp., /. Universal Rubber Products. Inc., GR No. L-27425, L-30505, April
28, 1980)

TRADEMARK SERVICE MARK COLLECTIVE MARK

Any visible sign which is
adopted and used to
identify the source of origin
of goods, and which is
capable of distinguishing
them from goods emanating
from a competitor.
Anya visible sign capable of
distinguishing the service of
an enterprise from the
service of other enterprises.
Any visible sign designated
as such in the application
for registration and capable
of distinguishing the origin
or any other common
characteristics, including the
quality of goods or services
of different enterprise which
use the sign under the
control of the registered
owner of the collective
mark.

Acquiring a Mark
The rights in a mark shall be acquired through registration made validly in accordance with the
provisions of the law( Sec. 122)

The significance of acquiring right to a mark is acquiring right to a mark is captured in

one case where the Supreme Court aptly reminded that:

“let it be remembered that duly registered trademarks are protected by law as

intellectual properties and cannot be appropriated by others without violating the due process
clause. An infringement of intellectual rights is no less vicious and condemnable as theft of
material property, whether personal or real.”

It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring

ownership. If the applicant is not the owner of a trademark, he has no right to apply for its
registration. 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 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 1

Non-Registrable Marks

Marks may be registered as long as it does not fall under any category mention in Section 123.

Section 123 enumerates marks that cannot be registered. Many of the cases and the confusion
are based on some of the items in the enumeration. For purpose of brevity and to avoid
contributing to the confusion, care has been exerted to avoid discussing cases that tend to cause
misunderstanding; those that can be easily understood are also left untouched.

The law thus provides under Section 123 that a mark cannot be registered if it:
1. 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;(sec. 123.1[a])
2. 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; (sec. 123.1[b])
3. 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; (sec. 123.1[c])
4. Is identical with a registered mark belonging to a different proprietor or
a mark with an earlier filing or priority date, in respect of: (sec.
123.1[d])
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;
5. 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; (sec. 123.1[e])
6. 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; (sec. 123.1[f])
7. Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services; (sec.
123.1[g])
8. Consists exclusively of signs that are generic for the goods or services that
they seek to identify; (sec. 123.1[h])
9. Consists exclusively of signs or of indications that have become customary or

1
Brickenstock Orthopaedie Gmbh And Co. Kg (Formerly Birkenstock Orthopaedie Gmbh) v. Philippine Shoe Espo Marketing Corporation G.R. No. 194307, November 20, 2013
 usual to designate the goods or services in everyday language or in bona fide
and established trade practice; (sec. 123.1[i])
10. 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; (sec. 123.1[j])
11. 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;
(sec. 123.1[k])
12. Consists of color alone, unless defined by a given form; or(sec. 123.1[l])
13. Is contrary to public order or morality. (sec. 123.1[m])

Falsely Suggesting Connections

The law disallows false suggestion of connection to a person, an institution or a belief. Actual
claim of connection is unnecessary. Also, the popularity of the person or the institution is
immaterial. But of course, the popularity does matter for the infringers for this is the rationale of
such prohibition, i.e., that one may unjustly ride on the goodwill of another.

Identical with registered mark

Among the reason why traders would want to have their trademarks registered is because they
want to use it exclusively. One might think that traders will shy away from using a mark that is
already registered by another but, surprisingly, there are countless attempt to use identical
marks.

The law provides remedies in order to protect the interest of the proprietors of registered
marks. However, these seems to be a need to prove the registrability of the mark since the usual
defense of those charge with trademark infringement is the non-registration of the mark for
whatever reason.

Confusion in Trademark Infringement

There are two types of confusion in trademark Infringement:

1. Confusion of goods
2. Confusion of business

There is “confusion of goods” when an otherwise prudent purchaser is induced to purchase

one product in the belief that he is purchasing another, in which case defendant’s goods are
then bought as the plaintiff’s and the poor quality reflects badly on the plaintiff’s reputation.

There is “confusion of business” when the goods of the parties are different but the
defendant’s product can reasonably(though mistakenly) be assumed to originate from the
plaintiff, thus deceiving the public into believing that there is some connection between the
plaintiff and defendant which, in fact does not exist. 2

Identical with or Confusingly Similar with Well-known Marks

The law disallows use of a mark that is identical with or is confusingly similar with a well-known
mark even if such well-known mark is not registered in the Philippines. (sec. 123.1[e])

2
Sterling Products. International Inc. v. Fabenfiken Bayer Aktiengesellschaft, 27 SCRA 1214, 1227 (1969) cting 2 Caliman, Unfair Competition and Trademark 1945 Ed., p.
1006
 If the well-known mark is registered in the Philippines the prohibition to used that mark
by another entity extends to non-related goods or services. (sec. 123.1[f])

The Application

Rights over a trademark or service mark are acquired through registration made validly
according to the law(Sec. 122)

The process starts with the filling an application for registration of the mark. By express
provision of the law(Sec 124.1), the application shall be in Filipino or in English and shall contain
the following:

1. A request for registration;

2. The name and address of the applicant;
3. 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;
4. Where the applicant is a juridical entity, the law under which it is organized
and existing;
5. The appointment of an agent or representative, if the applicant is not domiciled
in the Philippines;
6. 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;
7. 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;
8. Where the mark is a three-dimensional mark, a statement to that effect;
9. One or more reproductions of the mark, as prescribed in the Regulations;
10. A transliteration or translation of the mark or of some parts of the mark, as
prescribed in the Regulations;
11. 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
12. A signature by, or other self-identification of, the applicant or his
representative.

The Applicant

The applicant may be a natural or a juridical person. If there are more than one applicant, all of
them should be name as applicant but any one may sign the application for and behalf of all the
applicants.
 The applicant may file and prosecute the application through an attorney or other person
authorized to practice in such matters by the Office. The Office shall not aid on the selection of
an attorney or agent other than the furnishing of the list of attorneys or agents authorized to
practice before the Office.3

If the applicant is not domiciled or has no real and effective commercial establishment in
the Philippines, he shall designate by a written document filed in the Office, the name and
address of a Philippine resident who may be served notices or process in proceedings affecting
the mark. The written document shall be submitted to the Office within 60 days from filling date
without need of notice from the Office. Such notices or services may be served upon the person
so designated by leaving a copy thereof at the address specified in the last designation filed. If
the person so designated cannot be found at the address given in the last designation, such
notice or process may be served upon the Director of Bureau of Trademark(Sec. 125)

When the applicant dies, becomes insane or otherwise incapacitated the legally
appointed executor, administrator, guardian, conservator or representative of the dead or insane
or incapacitated applicant may prosecute the application in behalf of the heirs and successors-in-
interest of the applicant.4

Disclaimers

The Office may allow or require the applicant to disclaim an unregistrable component of an
otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or
owner's rights then existing or thereafter arising in the disclaimed matter, nor such shall
disclaimer prejudice or affect the applicant's or owner's right on another application of later date
if the disclaimed matter became distinctive of the applicant's or owner's goods, business or
services. (Sec. 126)

The basic purpose of disclaimers is to make of record, that a significant element of a

composite mark is not being exclusively appropriated apart from the composite. The following
portions of mark when forming part of the composite mark, must be disclaimed to permit
registration namely: (a) a generic term; (b) a descriptive matter in the composite mark; (c) a
matter which does not function as a trademark, or service mark or a trade name. such disclaimer
shall not prejudice or affect the applicant’s rights then existing under some other law or
thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the
applicant’s rights to registration on another application of late date, where the disclaimed matter
has become distinctive of the applicant’s goods, business or services. 5

Declaration of Actual Use

The applicant or the registrant shall file a declaration of actual use of the mark with the evidence
to that effect, as prescribed by the Regulations within three years from the filling date of the
application. Otherwise, the application shall be refused or the mark shall be removed from the
Register by the Director of Trademarks. (Sec. 124.2)

Filing Date
Section 127 Requirements. — 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;

3
Rules and Regulations on Trademarks, Rule 303
4
Rules and Regulations on Trademarks, Rule 305
5
Rules and Regulations on Trademarks, Rule 608
 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.
No filing date shall be accorded until the required fee is paid. (n)

On receipt of the application, an examiner checks if the application includes the following
requirements:
1. Require for a Philippine registration of mark;
2. Identity of applicant;
3. Indication sufficient to contact the applicant;
4. Reproduction of the mark; and
5. List of goods or services

Note: No filling date until the required fee is paid.

Before starting to examine the registrability of a mark, the Examiner or such other
personnel as the Director may authorize, shall examine whether the application satisfies the
requirements for the grant of filing date as provided in these Regulations. If the application
does not satisfy the filing date requirements, the Bureau shall notify the applicant who shall,
within a period of one month from mailing date of the notice, complete or correct the
application as required; otherwise the application shall be considered withdrawn. (Sec 132.1)

If the application did not satisfy the requirements for grant for grant of a filling date
at the time the filling fee and other indications were received by the Office, the filling date
that was given shall be cancelled and a new filling date shall be entered in the records of the
Office. The new filling date shall be the date on which the Office received the completed or
corrected application as specified in the notice to the applicant. (Sec 132.2)

Reviving Abandoned Application

An abandoned application may be revived as a pending application within three months

from the date of abandonment, upon good cause shown and the payment of the required
fee.(Sec 133.4)

Opposing an Application

Any person who believes that he would be damaged by the registration of a mark may,
upon payment of the required fee and within 30 days after the publication referred to in
subsection 133.2 file with the Office an opposition application.

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. (Sec. 134)

Upon the filling of an opposition, the Office shall reserve the notice of the filling on the
applicant, and of the date of the hearing thereof upon the applicant and the oppositor and all
other person having any right, title or interest in the mark covered by the application, as appear
of record in the Office. (Sec. 135)

Prima Facie Evidence of Validity

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)

It shall be a prima facie evidence of:

1. Validity of registration;
2. Registrant’s ownership of the mark; and
3. The registrant’s exclusive right to use the same in connection with the goods or services
and those that are related thereto

General Rule
The trademark protection extends only to goods or services related to those specified in the
certificate.

Exception
Expansion of Business Rule – also to those goods or services that are related thereto specified in
the certificate

 All cases in which the use by the junior appropriator is likely to lead a to a confusion of
sources as where prospective buyers would be misled into thinking that the complaining
party has extended his business into another field (Sta. Ana v. Mallwat, GR 23023,
August 31 1965)

Issuance and Publication of Certificate

The certificate of registration shall be issued when the period for filing the opposition has
expired, or when the Director of Legal Affairs shall have denied the opposition and upon
payment of the required fee. (Sec. 136)

The registered mark shall be issued, in the form and within the period fixed by the
Regulations. Marks registered at the Office may be Inspected free of charge and any person
may obtain copies thereof at his own expense. This provision shall also be applicable to
transactions recorded in respect of any registered mark. (Sec 138)

Cancellation or Amendment of Certificate

Upon application of the registrant, the Office may permit any registration to be surrendered for
cancellation, and upon cancellation the appropriate entry shall be made in the records of the
Office. Upon application of the registrant and payment of the prescribed fee, the Office for good
cause may permit any registration to be amended or to be disclaimed in part: Provided, That
the amendment or disclaimer does not alter materially the character of the mark. Appropriate
entry shall be made in the records of the Office upon the certificate of registration or, if said
certificate is lost or destroyed, upon a certified copy thereof. (Sec.140)

Correction in Case of Mistakes of IPO

Mistakes in the certificate of registration may be corrected. If such mistake is incurred through
the fault of the Office, a certificate stating the fact and nature of such mistake shall be issued
without charge., recorded and printed copy thereof shall be attached to each printed copy of the
registration. Such corrected registration shall thereafter have the same effect as the original
certificate; or in the discretion of the Director of the Administrative, Financial and Human
Resource Development Service Bureau a new certificate of registration may be issued without
charge. (Sec. 142)

Whenever mistakes is made in a registration and such mistake occurred in a good faith
through the fault of the applicant, the Office may issue a certificate upon the payment of the
prescribed fee, provided that the correction does not involve any change in the registration that
requires republication of the mark. (Sec. 143)

SECTION 121. Definitions. — As used in Part III, the following terms have the following
meanings:

a) 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;
b) 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;
c) Trade name means the name or designation identifying or distinguishing
an enterprise;
d) Bureau means the Bureau of Trademarks;
e) Director means the Director of Trademarks;
f) Regulations means the Rules of Practice in Trademarks and Service Marks formulated
by the Director of Trademarks and approved by the Director General; and
g) Examiner means the trademark examiner.

SECTION 131. Priority Right. —

1. 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.
2. 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.
3. Nothing in this section shall 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: Provided, That, notwithstanding the foregoing, the owner of a well-
known mark as defined in Section 123.1(e) of this Act, that is not registered in the
Philippines, may, against an identical or confusingly similar mark, oppose its
registration, or petition the cancellation of its registration or sue for unfair
competition, without prejudice to availing himself of other remedies provided for
under the law.
4. In like manner and subject to the same conditions and requirements, the right
provided in this section may be based upon a subsequent regularly filed application in
the same foreign country: Provided, That any foreign application filed prior to such
subsequent application has been withdrawn, abandoned, or otherwise disposed of,
without having been laid open to public inspection and without leaving any rights
outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a
right of priority. (Sec. 37, R.A. No. 166a)

PRIORITY RIGHT
 An application for registration of mark fixed in the Philippines by a person who
qualifies under the reciprocity rule and who previously filed an application for registration of the
same mark in one of those countries shall be considered as filed of the day the application was
first filed in the foreign country

Significance of Priority Right

A Philippine application filed by another applicant after the priority date but earlier than the
foreign applicant’s actual filing may be refused registration if the identical to the mark with a
priority date (The Law, on Trademark, Infringement and Unfair Competition, Agpalo, 2000ed)

Conditions:
1. The application must be filed within 6 months from the date of earliest application. Its
certified copy passed within 3 months from the date of filling in the Philippines.
2. The following should concur, (a) the foreign country / country of origin has allowed the
mark and (b) the country of origin is the applicant’s domicile or has a bona fide
commercial establishment.
3. The owner of the Philippine Registration may not sue prior to the granting of the
registration unless the mark is considered well-known as provided for the IP Code.
4. The priority right may not be passed upon a foreign application that has been
withdrawn , abandoned or otherwise disposed of the country origin(Rule 202,
Trademark Laws)

SECTION 141. Sealed and Certified Copies as Evidence. — Copies of any records, books,
papers, or drawings belonging to the Office relating to marks, and copies of registrations,
when authenticated by the seal of the Office and certified by the Director of the
Administrative, Financial and Human Resource Development Service Bureau or in his name by
an employee of the Office duly authorized by said Director, shall be evidence in all cases
wherein the originals would be evidence; and any person who applies and pays the prescribed
fee shall secure such copies. (n)