THE LAW OF
TRADEMARK
Terminal Objectives
At the end of the session, the
participants will be able to
distinguish whether a mark is
registrable or not.
Enabling Objectives
• Differentiate trade name, trademark and service mark
from one another;
• Give the functions of a trademark;
• Examine if the goods and services are registrable or not;
• Enumerate the requirements for registration;
• Evaluate the rights conferred by a trademark; and
• Determine when to file an action when the rights of an
owner were opposed.
“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;
A trademark is a word, a group of words,
sign, symbol, logo or a combination thereof
that identifies and differentiates the source
of the goods or services of one entity from
those of others.
"Trade name" means the name or
designation identifying or distinguishing
an enterprise.
Trademark Trade Name
McDonal
d’s
“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
Question:
Why is it important for us to use
a given trademark or service
mark?
Examples
FUNCTIONS OF
TRADEMARK
Mirpuri v. Court of Appeals, G.R. No. 114508, 19
November 1999
They They They
indicate guarantee advertis
origin or that those e the
ownership articles articles
of the come up to they
articles to a certain symboliz
which they standard of e
The protection of trademarks as
intellectual property is intended
not only to preserve the goodwill
and reputation of the business
established on the goods bearing
the mark through actual use over
a period of time, but also to
safeguard
(Berris Agricultural the public
Co., Inc. as G.R.
vs. Norvy Abyadang,
No. 183404, October 13, 2010)
consumers against confusion
on these goods.
Trade Name
A name or designation may not be used as a trade name if
by its nature or the use to which such name or designation
may be put, it is contrary to public order or morals and
if, in particular, it is liable to deceive trade circles or the
public as to the nature of the enterprise identified by
that name.
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.
Registration of
marks
REQUIREMENTS FOR A
MARK
TO BE REGISTERED
•A visible sign; and
•Capable of
distinguishing one’s
goods and services from
another
VISIBLE SIGNS
• Words
• Letters
• Numerals
•
Figures/Pictures
• Shapes
• Colors
• Logos
• Three
dimensional
• Objects
•
Combinations
NOT VISIBLE
SIGNS
• Scents
• Sounds
FAQs on
Registration
Who may apply for registration?
Only the owner of the mark or trade
name may apply for its registration.
Where should trademarks be registered?
Trademarks, trade names, service marks and names
or other marks of ownership are applied for
registration and are registered in the Intellectual
Property Office (IPO) of the Philippines. Registration
of marks is the function of the Bureau of
Trademarks in the IPO.
When is the filing date of an application?
The filing date of an application shall be the date on which
the Intellectual Property Office (IPO) received the following
indications and elements:
(a) An express or implicit indication that the registration of
a mark is sought;
(b) The identity of the applicant;
(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.
NON-
REGISTRABLE
MARK
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;
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;
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;
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:
a) The same goods or services, or
b) Closely related goods or services – (e.g. same class, same nature and/or
characteristics )
c) 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;
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;
7. Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services;
8. Consists exclusively of signs that are generic for the goods
How long is a trademark
valid for in the Philippines?
• A trademark can be protected in
perpetuity if regularly monitored
and properly maintained. The period
of protection is ten (10) years from
the date of registration and is
renewable for a period of ten (10)
years at a time.
• Must present Document of Actual
RIGHTS
CONFERRED BY A
TRADEMARK
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.
The exclusive right of the owner of a well-known mark 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
TRADEMARK
INFRINGEMENT
Any person who shall, without the consent of the
owner of the registered mark:
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
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
Counterfei Colorable
ting imitation
LIKELIHOOD OF CONFUSION
Types of Confusion
• Confusion of goods- As to the
goods themselves
• Confusion of business- As to the
source or origin of such goods
TEST OF CONFUSION
Dominancy Test focuses on the prevalent features
of the competing marks.
TEST OF CONFUSION
Totality Test is determined on the
basis of visual, aural, connotative
comparisons and overall
impressions engendered by the
marks in controversy as they are
encountered in the marketplace.
FAK ORIGINAL
E
OTHER FACTORS
Idem Sonans Rule – aural effects of the word and
letters contained in the marks are also considered in
determining the issue of confusing similarity.
Examples:
1. “Pycogenol” vs. “PCO-GENOL” (Prosource vs.
Horphag)
2. “Dermaline” vs. “Dermalin” {Dermaline Inc. vs.
Myra Pharmaceuticals)
3. “Nanny” vs. “Nan” (Nestle S.A. vs. Dy Jr.)
Coffee Partners, Inc. v. San Francisco
Coffee & Roastery, Inc.,
(G.R. No. 169504, 03 March 2010)
Does the trademark “SAN FRANCISCO COFFEE” constitute an
infringement of the tradename ‘SAN FRANCISCO COFFEE &
ROASTERY, INC.” even if the tradename is not registered with
the IPO?
A trade name need not be registered with the IPO before an
infringement suit may be filed by its owner against the owner of
an infringing trademark. All that is required is that the trade
name is previously used in trade or commerce in the
Philippines.
McDonalds Corporation v. L. C. Big Mak
Burger, Inc.,
G.R. No. 143993, 18 August 2004
Failure to present proof of actual confusion
does not negate their claim of trademark
infringement. Trademark infringement
requires the less stringent standard of
“likelihood of confusion” only. While proof of
actual confusion is the best evidence of
infringement, its absence is inconsequential.
VS
Kolin Electronics Co., Inc. vs. Kolin
Philippines International, Inc.
KPII’s Kolin mark resembles KECI’s Kolin
mark because the word “Kolin” is the
prevalent feature of both marks. Phonetically
or aurally, the marks are exactly the same and
as the court explained, the manner of
pronouncing the word “Kolin” does not
change just because KPII’s mark is in
lowercase and contains and italicized orange
letter “I.” And in terms of connotation and
overall impression, there seems to be no
De la Salle Montessori International of
Malolos, Inc.
vs. De La Salle Brothers Inc.
Petitioner De La Salle Montessori International
of Malolos, Inc. was asked by respondents De
La Salle Brothers, Inc. De La Salle University,
Inc. La Salle Academy, Inc.. De La Salle-
Santiago Zobel School, Inc. (formerly De La
Salle-South, Inc. ), and De La Salle Canlubang,
Inc. (formerly De La Salle University-
Canlubang, Inc. ) to change its corporate name.
Alleged misleading or confusing similar.
“Simplicity is the
trademark of GENIUS”
-Robin
Sharma