12. [마닐라] Trademark Guidebook of the Philippines.hwp

Chapter Ⅰ. Introduction

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The following terms have the following meanings:

"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; (Sec. 38, R. A. No. 166a)

Authors note: services marks are usually also referred to as trademarks.

"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; (Sec. 40, R. A. No. 166a)

"Trade name" means the name or designation identifying or distinguishing an

enterprise; (Sec. 38, R. A. No. 166a)

"Bureau" means the Bureau of Trademarks;

"Director" means the Director of Trademarks;

"Regulations" or “IRR” means the Rules of Practice in Trademarks and

Service Marks formulated by the Director of Trademarks and approved by

the Director General; and

"Examiner" means the trademark examiner. (Sec. 38, R. A. No. 166a)

“IPOPHL” means Intellectual Property Office of the Philippines

Definitions

Trademark Guidebook of the Philippines

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CONTENTS

Chapter Ⅰ. Introduction 1

Section 1. What is Intellectual Property? 3

Section 2. Brief History of Philippine Trademark Law 3

Section 3. What is a Trademark? 5

Section 4. What is Goodwill? 6

Section 5. Why should l get a Trademark in the Philippines? 6

Section 6. How Marks are Acquired? 7

Section 7. Marks must be visible 7

Section 8. Marks must be Distinctiveness 12

Section 9. What marks cannot be registered? 13

Section 10. When Trademark’s exclusive right is created? 38

Section 11. Term of Protection 38

Chapter Ⅱ. Philippines’ Trademark principle 39

Section 1. Principle of first to file rule 41

Section 2. International treaties that Philippines joined 41

Chapter Ⅲ. Application for Trademark Registration 43

Section 1. Intellectual Property Office of the Philippines 45

Section 2. Pre-filing of Trademark 46

Section 3. Application of Trademark 46

Section 4. Additional Requirements for Trademark Registration 50

Section 5. Examination (Office Action) 50

Section 6. Trademark Publication (Opposition) 51

Section 7. Post-filing 53

Section 8. IPOPHL’s Trademark application and registration statistics 59


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CONTENTS

Chapter Ⅳ. Utilization of Trademark 61

Section 1. Licensing, franchising, sale, rent 63

Section 2. Procedure 65

Chapter Ⅴ. Countermeasure to Trademark Infringement 69

Section 1. What is Trademark Infringement? 71

Section 2. How to respond to trademark infringement 71

Section 3. Countermeasures of Trademark infringement case 72

Section 4. IPOPHL’s mediation 72

Section 5. Criminal sanction 72

Chapter Ⅵ. Trademark Infringement cases 73

Chapter Ⅶ. Trademark related Government office and organization 101

Chapter Ⅷ. Frequent FAQ 107

Chapter

ⅠIntroduction


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Section 1. What is Intellectual Property?

According the World Intellectual Property Office, Intellectual property

“refers to creations of the mind, such as inventions; literary and artistic works;

designs; and symbols, names and images used in commerce.” Intellectual

property rights are rights granted by the state in order to develop and encourage

innovation, works, and businesses in the economy.

Intellectual Property is protected by law because it (1) “enable[s] people

to earn recognition or financial benefit from what they invent or create.”1) and (2)

It also strives to promote and create a community where innovation and creativity

can flourish.2) Intellectual Property strikes a balance between the interest of the

Intellectual Property owners and public and general.

Section 2. Brief History of Philippine Trademark Law

Even before recorded history marks have been used to indicate the source of

ownership of various articles of goods. Anything from prehistoric potteries, cave

drawings, and other archaeological artifacts would reveal that humans have been

using marks as a sign to indicate where the goods came from or who it belongs to.3)

Previously, the primary use of marks was to allow the government to

regulate the goods coming in and out of its territory. It was a badge of origin used

to weed out fake and foreign goods from the market. Marks have been also used

to indicate that the goods have passed the standards or other regulations imposed

by government, e.g. gold stamps, tax payments, etc.4)

1) WIPO

2) Pearl and Dean v. Shoemart,G.R. No. 148222. August 15, 2003, see also WIPO

3) Anuradha Maheshwari nuradha Maheshwari, Trademark Basics,

https://www.wipo.int/edocs/mdocs/sme/en/wipo_smes_hyd_07/wipo_smes_hyd_07_www_91793.pdf,

History of Trademarks: Everything You Need to Know,

https://www.upcounsel.com/history-of-trademarks, Negre, Ferdinand, Trademark Law in a Knotshell:

From Caves to Cyberspace, September 20, 2007,

http://www.iplaw.ph/ip-views/Trademark-Law-From-Caves-to-Cyberspace.html, Accessed April 29,

2019 Paster, Benjamin, Trademarks-Their Early History, Trademark Reporter Issue 8, August 1969, pp. 552-559.

4) Negre, Id.; Paster, Id.

Ⅰ Introduction


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The industrial period also gave a bigger role to trademarks. Trademarks by

that time were not only used to identify the source of the goods but also indicate its

quality. A trademark affixed on the goods would now also indicate that the goods are

at par to the quality of the goods which the customer is accustomed to.5) It should

be noted that before the late 19’ century, trademark law was primarily driven by common law.6)

In the Philippines, the earliest codified trademark law was the Spanish

trademark law was enacted on October 1888.7)

After losing the Spanish-American war and after accession to the United

States, the Philippine Commission passed its own trademark law entitled the

“Trademark and Tradename Law of the Philippine Island” or Act No. 666 which

was based on United States Trademark Law. Under this law, an owner of a mark

acquires the mark through actual use of the mark in commerce.8)

In 1930, “Revised Penal Code” criminalized some forms of trademark

infringement and unfair competition.9)

In 1946, the Philippines passed Republic Act 166,10) which was

substantially similar to the Lanham Act enacted by the United States in 1945.11)

Republic Act 166 did not deviate away from the first to use system enunciated

in the Act No. 666.

In 1994, the Philippine acceded to the TRIPS agreement. Said agreement

is an international treaty which sets down minimum standards for the regulation

of Intellectual Property by the national law. It should be noted that the TRIPS

agreement does not require countries to enact laws prohibiting the registration of

disparaging and immoral trademarks, rather, it merely allows countries to enact

laws prohibiting the registration of disparaging and immoral marks.12)

5) Negre, Id.

6) Paster, Supra Note 1.

7) Negre, Supra Note 1.

8) Negre, Id.;The Trademark and Trade Name Law of the Philippine Islands, Act No. 666 (1903).

9) Art. 188-189, An Act Revising The Penal Code And Other Penal Laws, Act No. 3815, (1930).

10) An Act To Provide For The Registration And Protection Of Trade-Marks, Trade-Names And

Service-Marks, Defining Unfair Competition And False Marking And Providing Remedies Against The

Same, And For Other Purposes, Republic Act No. 166 (1947).

11) Fredco v. Havard, G.R. No. 185917, June 2011

12) Agreement on Trade-Related Aspects of Intellectual Property Rights


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In 1998, the “Intellectual Property Code of the Philippines” (“Intellectual

Property Code”) was passed, during this time the Philippines shifted from the first

to use system to the first to register system.13) However, it should be noted that

the law maintained essentially the same previously unregistrable marks from the

previous laws.

Republic Act No. 9502, otherwise known as the “Cheaper Medicines Act”

was passed on 2008.14) The Cheaper Medicines Act did not substantial amend the

provisions of the Intellectual Property Code. The Cheaper Medicines Act only

affected the pharmaceutical industry and their marks. The purpose of the Cheaper

Medicines Act was to make it easier for pharmaceutical companies to do business

in the Philippines even though there is a chance that it would impinge locally

established marks. In short, the Cheaper Medicines Act was passed in order to

promote the right to health of individuals by making it easier for them to acquire

life-saving or life-changing medicines.15)

Author’s note : The Intellectual Property Office of the Philippines

periodically amends its Internal Rules and Regulations (“IRR”) which interprets and

implements the above laws, the latest amendments for the trademark IRR was

made on 2017.

Section 3. What is a Trademark?

A trademark is visual sign, which can be represented as 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.16)

13) An Act Prescribing The Intellectual Property Code And Establishing The Intellectual Property Office,

Providing For Its Powers And Functions, And For Other Purposes [Intellectual Property Code of the

Philippines] Republic Act 8293 (1998)

14) An Act Providing For Cheaper And Quality Medicines, Amending For The Purpose Republic ACT

NO. 8293 or the Intellectual Property Code, Republic Act No. 6675 or the Generics Act Of 1988,

And Republic Act No. 5921 Or The Pharmacy Law, And For Other Purposes, [Cheaper Medicines

Act] Republic Act No. 9502(2008).

15) Id.

16) WIPO, IPOPHL, IP Code


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Author’s note : The term “trademark” is often interchanged and confused

with the different types of registered marks such as service marks, collective

marks, and trade names)

Trademarks also act as a badge of a certain quality or characteristic. It can

be used to identify certain non-business characteristic such as political, social, or

religious affiliation.

Section 4. What is Goodwill?

Goodwill is an intangible asset that arises when one company purchases

another for a premium value. The value of a company’s brand name, solid

customer base, good customer relations, good employee relations, and any

patents or proprietary technology represent goodwill.17)

Section 5. Why should I get a Trademark in the Philippines?

Having an active trademark in the Philippines ensures that your brand

and/or logo will be protected in the Philippines from people trying to exploit an

identical or similar brand or logo. This mean that the goodwill of the brand is

better protected from scrupulous persons.

If a person registers your mark and they sell fake or adulterated products,

chances are, your goodwill will be affected negatively. The person may also try

and block you in selling or distributing your products here in the Philippines. Said

persons may also take the brand name for ransom. They will ask you to pay a

hefty price for them to transfer or license the mark which should belong to you.

Author’s note : Trademark squatting is not a criminal offense in the

Philippines. This means that trademark squatters have nothing to lose in

registering the trademark of third parties, especially registering the marks of

foreign corporations. Thus, having an active trademark is also the best way to

avoid litigation involving an identical or similar mark in the future.

17) Goodwill, Investopedia https://www.investopedia.com/terms/g/goodwill.asp#ixzz5UR3l9iKq (last

accessed at October 20, 2018)


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Having an active trademark also makes it easier to distribute the goods

in the Philippines, since, some Philippine companies require that the goods to be

distributed are trademarked.

Having trademarks for non-business purposes is also good since

trademarks can be used for social, religious, or political matters. (e.g. registering

the name of a church or social club)

In addition, marks are also used by almost every social circles, from

religion, sports, aliases, music, and even recreation groups. For example we have

marks such as Iglesia ni Kristo, CloudNine, etc.

Section 6. How Marks are Acquired?

Valid marks are only acquired through registration made validly in

accordance with the provisions of the Intellectual Property Code of the Philippines.

Unless otherwise indicated in Philippine trademark law, local law, or international

law, a mark that is not registered in the Philippine Trademark registry will not be

considered as valid in the Philippines. This is because intellectual property law is

territorial in nature. Being territorial in nature, the effectiveness of the Philippine

registered marks only extend within the jurisdiction of Philippines.

However, foreign marks and local marks which are considered

internationally well-known trademarks are PROTECTED in and out the Philippines.

Section 7. Marks must be visible

In the Philippines, only visible marks are capable of being protected under

trademark law.

A non-visual sign which may be represented in a visually representation

cannot be registered. This is because “the visual representation would not change

the inherent nature of that sign, which cannot be perceived by the sense of sight

when used as a mark in the course of trade.”18)

18) ASEAN Common Guidelines for Substantive Examination of Trademarks.


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No. Example

1The catchy tunes of Selecta’s ice cream bell, even if placed on

sheet music will not be allowed trademark registrationNOT ALLOWABLE

2 The sound used by THX during the start of movies NOT ALLOWABLE

3 The MGM lion’s roar NOT ALLOWABLE

Registrable visually perceptible signs will generally fall under the following

categories:

Two-dimensional signs

Three-dimensional signs

Two-dimensional signs

Two-dimensional signs are visually-perceptible signs in a 2-D plane. The usual

two-dimensional signs are symbols or letters that can be read. They can also be

drawings or pictures. Although videos or animations can be considered as two-dimensional

signs, the Intellectual Property Office of the Philippines current does not accept

long videos or animations as valid marks subject to trademark registration.

Words, letters, digits, numerals, ideograms, slogans (“word marks”)

“This type of [two-dimensional] sign contains only elements that can be

read, including signs consisting of one or more words (with or without meaning),

letters, digits, numerals or recognizable ideograms, or a combination thereof,

including slogans and advertisement phrases.”19)

“This type of sign may be presented in ‘standard’ characters or in special,

fanciful, non-standard characters that may pertain to any alphabet, and may have

one or more colors. They will not contain any figurative element, frame or

background.”20)

19) ASEAN Common Guidelines for Substantive Examination of Trademarks.

20) Id.


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Example

OXO

APPLE COMPUTERS

Αλφάβητο

120938102947

Some of the examples above came from ASEAN Common Guidelines for

Substantive Examination of Trademarks (“ASEAN Trademark Guidelines”)

Figurative signs

“This type of sign will consist of one or more two-dimensional figurative

elements. They may represent existing creatures (animals, flowers, etc.), real or

fictitious persons or characters (portraits, cartoon characters, etc.), and real or

imaginary objects or creatures (sun, stars, mountains, flying saucers, dragons,

etc.). They may also consist of fanciful, abstract or geometrical shapes, devices,

figures, logos or other purposely-created two-dimensional shapes. Ideograms and

characters that are not understood or have no meaning for the average consumer


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in the country where registration is sought may be regarded as figurative signs or

figurative elements of signs.

Figurative signs may have one or more colors but will not contain any

words, letters, digits, numerals or ideograms.”

Examples:

The examples above came from the ASEAN Trademark Guidelines.


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Mixed signs

“This type of sign will consist of a combination of one or more words, letters,

digits, numerals or ideograms with one or more figurative sign or non-word

element. The figurative element may be embodied within the word element, be

adjacent to or superposed on the word element, or be a background or a frame.

The non-figurative elements (words, numerals, etc.) may be presented in

‘standard’ Characters or in special, fanciful characters, and the sign may have one

or more colours.”

Example

Author’s notes : Are foreign characters (non-Latin characters) considered

as word marks? Yes and no, foreign characters are registered as figurative marks

in the Philippines. However, during examination they are treated like word marks.

If I do not add figurative marks, logos or other embellishments to my

word mark, do I have greater risk?

Yes, generic mark, customary, and descriptive marks using lightly stylized

words may be denied registration by the trademark examiner. (generic marks will

be discussed later on)

Does the IPOPHL allow the registration of .gif or movement marks?

No, due to system limitations, the IPOPHL does not current allow the

registration of .gif or movement marks.


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Does the Intellectual Property Office of the Philippines allow the

registration of textured marks?

No, even if the textures can be visually seen, the IPOPHL does not allow

the registration of textures.

Does the Intellectual Property Office of the Philippines allow position

marks?

Yes, the IPOPHL has allowed the registration of some position marks.

Example:

Adidas’

Picture from ASEAN Trademark Guidelines

Section 8. Marks must be Distinctive

In order to be registered as a valid mark a sign has to be distinctive in

respect of the goods or services for which it will be used in trade. “This means

that the sign must be capable of distinguishing goods and services in the course

of trade. The distinctiveness of a sign for purposes of its registration as a mark

must be established on a case-by-case basis with regard to the particular goods

and services for which the mark will be used and for which registration is sought.

Also, distinctiveness must be determined taking into account the perception of the

sign by the public to whom the mark will be addressed, that is, the relevant sector

of the public.”


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The lack of distinctiveness of a mark may result from:

“(i) the fact that the sign’s constituent features make it unintelligible or

imperceptible by the average consumer when used as a trademark, or the

fact that the average consumer will not understand or recognize that the

sign is intended as a mark; or

(ii) the relationship between the mark and the particular goods or services

to which it is applied in the course of trade, or the legal, social or

economic context in which the mark would be used.”

Refusals based on lack of distinctiveness shall be discussed in the next

section.

Section 9. What marks cannot be registered?

The following are marks which cannot be registered:

(a) 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;

(b) 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;

(c) 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;

(d) 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, or

(ii) Closely related goods or services, or


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(iii) If it nearly resembles such a mark as to be likely to deceive

or cause confusion;

(a) 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;

(b) 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;

(c) Is likely to mislead the public, particularly as to the nature, quality,

characteristics or geographical origin of the goods or services;

(d) Consists exclusively of signs that are generic for the goods or

services that they seek to identify;

(e) Consists exclusively of signs or of indications that have become

customary or usual to designate the goods or services in everyday

language or in bona fide and established trade practice;

(f) 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;


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(g) 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;

(h) Consists of color alone, unless defined by a given form; or

(i) Is contrary to public order or morality.

The above non-registrable marks can be divided into two categories.

Marks which cannot be registered based on Absolute grounds and Marks which

cannot be registered based on Relative grounds.

Absolute grounds are founded on the principles that the mark should not

be allowed registration because the mark violates the very principles and purpose

of trademark law, violates core principles of the state or its citizens, or violates

other laws relating public order or morality.

Usually marks are denied based on absolute grounds because (1) the

mark does not conform to the Philippine definition of a trademark, (2) the mark

lacks the distinctive characteristics of a trademark, (3) the mark is functional, (4)

the mark does not act as a trademark, or (5) the mark is immoral or against public

order.

To sum it up, refusal based absolute grounds is due to the inherent defect of the

mark.

Relative grounds are refusals based on a existing right of a third party.

An existing right can be based on an existing Philippine registered trademark,

foreign registered mark, and unregistered marks. They are called relative grounds

because these only exist upon the contingency of an already existing third party

right.

When an objection is raised based on relative grounds, the examiner

bases his judgment based on how the registration of the mark will affect the

market.


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1) ABSOLUTE GROUNDS

The following are the Absolute grounds expressed written in the

Intellectual Property Code Section 123.1:

(a) 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


(b) 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,


(c) 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;

(d) xxx

(e) (g) Is likely to mislead the public, particularly as to the nature, quality,

characteristics or geographical origin of the goods or services;

(f) (h) Consists exclusively of signs that are generic for the goods or

services that they seek to identify;

(g) Consists exclusively of signs or of indications that have become

customary or usual to designate the goods or services in everyday

language or in bona fide and established trade practice;

(h) 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;

(i) 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;


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(j) Consists of color alone, unless defined by a given form; or

(k) Is contrary to public order or morality.

Although not included in the list above, a mark which is not visible cannot

be registered in the Philippines. The discussion on visible perceptive marks has

already been discussed previously. (See discussion on Marks Must Be Visible)

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


The above provision can be divided into two parts (1) Disparaging marks

and (2) False connection.

(1) Disparaging marks

The Intellectual Property Office does not allow the registration of

disparaging terms or logos, unless, it can be proven that the general use of the

word can be used in a non-immoral or non-degrading manner.

No. Example

1

PUTO

(Puto in Spanish is an immoral word while Puto in Tagalog is a type

of steamed rice cake)

ALLOWABLE

2NIGGER

(This word is an extremely racist and disparaging word)

NOT

ALLOWABLE

3NEGRO

(Negro means black in spanish and is a place in the Philippines)ALLOWABLE

4

GAY

(Gay is both used both in a neutral and derogatory tone in the

Philippine)

ALLOWABLE


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(2) False Connection Clause

The Intellectual Property Office does not allow the registration of terms or

symbols which falsely suggest a connection person, living or dead, institutions,

beliefs, or national symbols. Unless, it can be proven that the use of the mark will

not bear a logical or malicious connection between.

No. Examples

1

American Eagle mark is allowed even though American eagles are symbols associated

closely with American freedom. The registration of was also allowed despite the same

appearing in the Philippine President’s coat of arms.

2Dutch Boy mark is allowed even though it refers to a young Dutch national and even

though it was not proven that the products came from Germany.

3

“Filipinos” mark used for sweets by an American company was disallowed for False

Connection, Immorality and against public order since the mark tended (1) was not

connected to Filipinos (2) was not connected to the Philippines (3) improper cultural

appropriation and (4) the term is a functional.21)

Marks that contain a particular place, persons, living or dead, institutions,

beliefs, or national symbols may be allowed if the use of the same will not lead

to a false connection with the said place, persons, living or dead, institutions,

beliefs, or national symbols.

21) see “Filipino” case decided by ODG 2019


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No. Examples of marks allowed:

1Precious Jesus registered for jewelries,

clothing and handicrafts

2 God Make Disciples registered for shirts

3 DEVIL MAY CRYDevil May Cry registered for games and

entertainment

4

Rizal Super registered for Cement

(Note: the figure on the background is the

Office Philippine monument of the Philippines

national hero Jose Rizal)

5 BUDDHA-BAR Buddha-bar registered for restaurant services

Author’s note : The IPOPHL usually refuses marks based on false

connection if the mark would tend to shed a negative light on a person, institution,

belief, or national symbol. Said clause is also used to deny marks which are

intentionally defraud customers by passing off the mark as something else.

Example

The previous mark “Buddha bar” was not allowed registration. However,

Buddha-bar was allowed registration.


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Connection to a person

If a name of a person is used, the IPOPHL will inquire whether or not you

are authorized to use the name of the person used. If you are using a name of

a real person, the IPOPHL will require you to submit an affidavit or evidence

showing that you were expressly allowed to use the name of that person or

allowed by the kin if the said person is deceased.

If the name used is the name of a fictitious person, you may submit an

affidavit or letter stating that the name indicated in the mark is a name of a

fictitious person.

Names of famous deceased persons are usually accepted as a valid mark

even without the authorization of the kin.

Example:

Source : IPOPHL database

Happy Einstein registered for Cellphone chargers

Author’s note : Even with authorization, the IPOPHL will not allow you to

register the mark if the use of the same will likely mislead the public as to the

origin of the goods or services.


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Location or geographical sign as a trademark

Location or “Geographical signs are names, terms, figurative or mixed

signs that indicate or convey a sense of geographical origin. Geographical terms

include the names of any geographical location, not only political demarcations but

also the names of geographic or topographic phenomena including rivers,

mountains, deserts, forests, oceans, lakes, etc.”

Examples

America, Philippines, Georgia, Atlanta

Jeju, Gangnam, Taal Volcano

Source :

https://www.conceptdraw.com/How-To-Guide/geo-map-asia-philippines

Philippine Map


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Source :

https://www.amazon.in/Samurai-Emblem-Kamon-Sticker-Mountain/dp/B00PFQPT8C

Drawing of Mt. Fuji

The IPOPHL in some cases will allow the registration of a location or

geographical sign if the same will not lead to a false or misleading connection and

if the same is not considered descriptive or generic.

No. Example

1An American company using the mark “Manila”

for american made chocolates.

NOT ALLOWABLE

(false advertising and immoral)

2Korean company using the mark “Oxo's Gangnam

Parmigiano-Reggiano”

NOT ALLOWABLE

(Parmigiano-Reggiano can only

be made in Italy)

3An American company using the mark “Oxo’s Manila

envelope” for american made Manila paper

ACCEPTABLE

(Manila paper is a generic term)

4Philippine company using the mark “Manila Paint” for

paintACCEPTABLE


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The descriptiveness of a location or a geographical sign will be assessed

by the examiner using the following factors:

(a) the extent to which the relevant sector of the public in the country

know or recognize the sign as a geographical term or a sign that

indicates a geographical location;

(b) the extent to which that sector of the public associate the place

designated or indicated by the geographical sign with the goods or

services specified in the application.

According to the ASEAN Trademark Guidelines, “If the geographical sign

is not known to the public, or is known but is not recognized as an actual or

plausible place of origin of the specified goods or services, the sign should not

be regarded as geographically descriptive.”

No. Example

5

Philippine company using the mark

“ ” for cosmetic productsACCEPTABLE

6Korean company using the mark “ ”

for clothing and toys

ACCEPTABLE


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Location or geographical names which do not “normally refer to a likely or

plausible place of origin of particular products, and cannot be regarded as

descriptive of any characteristic of the goods or services by reason of their

geographic origin.” This means that a location or geographical mark to be

registered must convey no likely connection to the place of origin.

No. Examples

1 Alaska for Milk ALLOWABLE

2 Mont Blanc for pens ALLOWABLE

3 Everest for cars ALLOWABLE

A mark cannot be registered if it consists of the flag or coat of arms or other

insignia of the Philippines or any its political subdivisions, or of any foreign nation,


A person may not use 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:

Example:


Combination of Brazil and Philippine Flag - NOT ALLOWABLE

No. Examples

1 “ATLANTIC” for prawn and salmon NOT ALLOWABLE

2 “PILSEN” for beer NOT ALLOWABLE


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However, a person is allowed to use elements of the Philippine flag or

coat of arms or other insignia of the Philippines or any of its political subdivisions,

or of any foreign nation.


Mark inspired by the Philippine flag – ALLOWABLE

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;

A person using a name of a real person, the IPOPHL will be required to

submit an affidavit or evidence showing that he or she was expressly allowed to

use the name of that person or allowed by the kin if the said person is deceased.

Is likely to mislead the public, particularly as to the nature, quality, characteristics

or geographical origin of the goods or services;

A person is not allowed to use indications which will mislead the public

as to the nature, quality, characteristics or geographical origin of the goods or

services.

No. Examples

1

An American company registers for the mark

“FILIPINOS”, goods bearing the mark are made

abroad

NOT ALLOWABLE

2Philippine company using “GUIMARAS” for mangoes

produced outside GuimarasNOT ALLOWABLE


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Consists exclusively of signs that are generic for the goods or services that

they seek to identify;&

Consists exclusively of signs or of indications that have become customary or

usual to designate the goods or services in everyday language or in bona fide

and established trade practice;

What is a generic mark? A generic mark is a generic term which is

descriptive for the goods and/or services. They terms are understood among the

interested business circles, consumers and the public at large to identify goods

and services generically. Generic mark is “a sign that consists exclusively or

essentially of a word that is a generic, customary, common, scientific or technical

name or designation of a particular product or service, or of a category of goods

or services”.

No. Examples

3Company registers for the mark “2 Liters” used for

one liter bottlesNOT ALLOWABLE

4Korean company registers for the mark “Oxo's

Gangnam Parmigiano-Reggiano”

NOT ALLOWABLE

(Parmigiano-Reggiano can

only be made in Italy)

5Korean company registers for the mark “Oxo's

Gangnam Parmesan”

ACCEPTABLE

(Parmigiano-Reggiano can

only be made in Italy)

6

Philippine company registers “Axa

mango” along with a drawing of the map of Jeju” for

Philippine grown mangoes

NOT ALLOWABLE

7Company registers “Oxo’s Leather goods” for faux

leatherNOT ALLOWABLE

8 Philippine company registers “Axa pears” for apples NOT ALLOWABLE


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No. Examples

1 “Apple” for Apples NOT ACCEPTABLE

2 “Hardware” for Hardware NOT ACCEPTABLE

3 “Milk tea” for Milk tea NOT ACCEPTABLE

4 “Driller” for Construction equipment NOT ACCEPTABLE

5 “Sheet” for Accounting textbook NOT ACCEPTABLE

Generic marks are disallowed registration because the marks need to

remain free for use by all. This is to ensure smooth transactions within the market

place and avoid the exclusive use of functional marks by third- parties. Note that

“The assessment of this ground for refusal necessarily requires consideration of

the specific goods or services, or type of goods or services, to which the sign

would apply. A term that is common or generic for a particular type of goods or

services may be highly distinctive for a different type of goods or services.”

No. Examples

1 “Apple” for Computers ACCEPTABLE

2 “Caterpillar” for Construction equipment ACCEPTABLE

Generic marks “applies not only to the common or standard names of

goods and services but also names that have become the usual o customary

designation, or have linguistically acquired a new meaning for a product or

service.” Marks which are used commonly in the usual trade or practice by custom

are called Customary Terms.

No. Examples

1 “Sunnies” for SunglassesNOT ACCEPTABLE

(Sunnies is a slang for sunglasses)

2 “Soba” for Noodles NOT ACCEPTABLE

3 “Sliders” for Burgers NOT ACCEPTABLE


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Generic marks cover the scientific and technical designations of goods or

services. Even if the general public are not aware or familiar with the terms, the

same will still be considered generic because the informed business circles and

specialized consumers use the terms in generic manner. Nonetheless, this

limitation is industry or market specific. This is means that technical terms may

registered in industries which do not use the term in a technical manner.

No. Examples

1 “Lex” for Law firms NOT ACCEPTABLE

2 “Lux” for Lighting NOT ACCEPTABLE

3 “Tussin” for Cough syrup NOT ACCEPTABLE

4 “Resistor” for Electronics NOT ACCEPTABLE

5 “Levo or L-” for Pharmaceutical products NOT ACCEPTABLE

6 “Comedone extractor” for Beauty products NOT ACCEPTABLE

7 “Lux” for Apartments ACCEPTABLE

8 “Lex” for Lighting ACCEPTABLE

9 “Resistor” for Entertainment ACCEPTABLE

It is important to note that the limitation on generic marks apply only if

the mark is exclusively comprised of generic or customary signs. This means that

a person may include a generic term in his or her mark as long as the generic

term is accompanied or is sufficiently modified by other signs and symbols,

making the mark as a whole distinctive.

Nonetheless, the person using a generic or customary term must be

DISCLAIMED. A disclaimed term will signify that the term cannot be exclusively

used or appropriated by the applicant or registrant.

No. Examples

1 OXO's Korean PlumACCEPTABLE

(Disclaimed terms : KOREAN and PLUM)

2 Korean Plum NOT ACCEPTABLE

3 Apple ComputerACCEPTABLE

(Disclaimed term : Computer)


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Can I register a generic mark if the same is in foreign characters or is a

transliteration of a foreign character?

No, the Intellectual Property Office of the Philippines does not allow the

registration of a generic or customary foreign term when used alone.

No. Examples

1 한국 자두 NOT ACCEPTABLE

2 OXO's 한국 자두ACCEPTABLE

(Disclaimed characters: 한국 and 자두)

Can a figurative mark be considered a generic or customary mark?

Yes, figurative marks can be considered as a generic or customary mark.

“Certain figurative signs have, by convention or by custom, a particular meaning

that is widely understood in the relevant business circles and by the consumers,

or by a significant portion of consumers, in respect of all or specific goods or

services. As with common or generic names of goods and services, such

figurative signs cannot function as trademarks in respect of the goods or services

that they identify.”

Examples

Source :

https://www.wbbarber.com/wp-content/uploads/2020/01/1000x1000-01-1.png

Image of a barber’s pole for barber shops - NOT ALLOWABLE


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Source: Wikipedia

Caduceus staff for medical institutions - NOT ALLOWABLE

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;

Descriptive Mark

Descriptive marks are “signs consisting of one or more words that

describe, in particular, the nature, subject matter, quality, quantity, size, purpose,

use or any other characteristic of the specified goods or services should be

objected by the examiner.”

In order to ascertain if a word is descriptive, the word must be considered

in conjunction with the goods or services for which the mark will be used. Words

that relate to value or size are usually treated as descriptive words.

No. Example

1 “1 L” mark for water bottles

2 “Big” mark for food

3 “Cheap” mark for clothes

A word that does not relate to the characteristics or nature of goods or

services can be considered distinctive with respect to other goods and services.


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No. Example

1 “Horror” for movies NOT ALLOWABLE

2 “Horror” for carbonated drinks ALLOWABLE

Author’s note: Nice class is not a reliable determinant if a mark would be

considered as descriptive.

No. Example (Nice Class: 9)

1 “HORROR” for Nice Class 9: Software (Horror Game) NOT ALLOWABLE

2 “HORROR” for Nice Class 9: Hardware for optical machines ALLOWABLE

Below are the different types of marks which are considered descriptive:

No. Types of mark Example

1 Descriptive as the nature“Softer” for pillows

“24-7” for computer rental shops / PC bangs

2 Descriptive as to the subject matter“Medical” for books

“RPG” for games

3 Descriptive as to quality

“Fresh” for meats

“Deluxe”, “Best”, “Good”, for goods and

services

4 Descriptive as to quantity“1000 mg” for medicines

“1 L” for beverages

5 Descriptive as to size“BIG” for food

“JUNIOR” for food

6 Descriptive as to purpose or use“Strike” for matches

“Sanitary” for cleaning products

7 Descriptive as to value “2 for 1” for goods

There is a fine line between a mark being considered generic, customary

versus descriptive. Due the hardship involves in determining if a mark is generic,

customary, or descriptive, examiners often interchangeably use generic,


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customary, and descriptive grounds in one argument. This means that there is a

possibility that a descriptive mark will be considered as a generic or customary

mark and vice versa.

Trademark examiners often also disregard any minor changes to the

descriptive mark, such as wrong spelling or using a certain font. This means that

minute changes will often not remove the possibility that the trademark examiner

will consider the mark to be descriptive.

Example

Krocodile - for crocodile meat

Krunch - for rice crispy treats

Unlike generic or customary marks, descriptive marks CAN be registered

if the applicant can prove that the applicant has at least “5” years of uninterrupted

and exclusive use of the descriptive term.

However, the “5” years of uninterrupted and exclusive use of the

descriptive term does not guarantee registration of the mark. Due to the thin line

separating generic, customary, and descriptive marks, there is a chance that the

descriptive mark will be considered as a generic or customary mark by the

examiner. In addition, functionally descriptive marks are still not allowed

registration.

No. Example

1 “Crunch” for chocolates ALLOWABLE

2 “3 in 1” for Coffee NOT ALLOWABLE

Author’s note : Having a highly descriptive mark is not advisable. These

types of trademarks, such as Nestle’s “CRUNCH” mark, have to constantly litigate

to protect the mark against third parties. This is due to the fact the mark is highly

descriptive of the characteristics of a ton of food products.


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If my mark is descriptive in the foreign language but not when translated

directly to English or Tagalog, will the IPOPHL consider it as descriptive?

Yes, the IPOPHL will generally still consider the transliteration or

translation of a foreign character as descriptive.

If I misspell the descriptive mark or add embellishments, will the IPOPHL

approve the registration of the mark?

Depends, if the addition or alteration is sufficiently distinctive then the

IPOPHL will allow the registration of the mark. If the alteration is negligible the

IPOPHL will still most likely disallow the registration of the mark.

Thus, it is better to avoid using descriptive terms as the basis of the mark

altogether.

Does a combination of two descriptive words automatically make it

distinct?

No, the combination of two or more descriptive words can still end up

being descriptive.

No. Example

1 TWIST AND POUR for Paint NOT ALLOWABLE

2 CLEARWIFI for telecommunications NOT ALLOWABLE

3 TRUSTEDLINK for e-commerce software NOT ALLOWABLE

In order to be registrable, the combination of descriptive terms or signs

must be sufficiently distinctive.

Example

BANNAPPLE - for Banana Apple Pies

MR. DIY - for hardware stores


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Laudatory descriptive terms

Common laudatory terms and signs are treated by the IPOPHL as

descriptive or at the very least terms which lack distinctive characteristics.

Laudatory terms are terms which “express desirable or superior characteristics of

the relevant goods or services. They apply or refer directly to the goods or

services.”

Example

SUPER / SUPREME / BEST

EXTRA FINE / FIRST / PRIME

MODERN / ULTIMATE / PREMIUM

(GOLD SEALS)

Terms which paint the mark in positive light but does not directly describe

the goods or services can be registered.

No. Example

1 MASTER ROAST for Coffee ALLOWABLE

2 FAMILY BANK for banks ALLOWABLE

3 BEST BUY for retail stores ALLOWABLE

Author’s note : Stay away from common laudatory terms since these do

not add value to the mark.

Figurative Descriptive marks

Figurative marks can be considered descriptive if the figurative mark looks

like a standard or basic shape of the goods or services.


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Example

Source : ASEAN Examination Guide

Horse figure for horse equipment - NOT ALLOWABLE

Nonetheless, a figurative mark can overcome descriptiveness if the

figurative mark is “different from the usual aspect or shape of the relevant goods

or of good related to the specified services, or is stylized in a manner that

significantly departs from the standard, identical representation of the goods or

services.”

Example

Source : ASEAN Examination Guide

Horse figure for horse equipment – ALLOWABLE

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;

Shape marks are not allowed if the same is functional in nature.

Example

Standard shape of beer bottle - Beer

Standard shape of teddy bear - toys


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A mark consisting only of simple geometrical shapes are also not allowed

registration. These marks are not allowed registration since they are “devoid of any

feature that will give it a special appearance, or attract the attention of consumers

when the sign is used in trade, will generally not be distinctive and cannot

function as a trademark.”

Example

# @ !Consists of color alone, unless defined by a given form

Colors cannot be registered as a valid mark without the color being

attached to a particular form. This means that a person may not claim certain

colors for his exclusive use. It does not matter if said person invented or found

the said color.

Example

Tiffany Blue


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Nonetheless, a person may register a color as a valid mark if said person

can prove that the color has acquired secondary meaning. This means that the

color is uninterruptedly and exclusively use, and known to be attributed to said

business in the Philippine market for at least “5” consecutive years.

Is contrary to public order or morality

According to ASEAN Trademark guidelines, “‘Public policy’ and ‘public

order’ refer to the general legal framework of a particular State, and to the

rationale and purpose underlying that legal framework. The legal framework

includes, in addition to positive legislation and executive provisions in force in a

country, international treaties and other international commitments adopted by a

State, as well as established case law. These legal sources reflect and express the

policy, basic principles and values of the State.”

While “‘Morality’ is a set of socially recognized principles that determine

practices and rules of conduct within a particular society or community. These

principles and rules are not cast in positive legislation or executive norms, and

may vary over time. They may be quite different in different countries or within

different regions and communities inside the same country. Moral principles and

rules reflect values that a national society or community wants to uphold. They are

applied alongside positive legal norms that generally will not deal with the type of

issues or details that are the subject matter of ‘morality’.”

How do I know if my mark is immoral or against public policy?

Provocative, lewd, foul, and debasing language is generally not accepted

by the IPOPHL.

Example

FUCK / WANKER / NIGGER

However, marks which are subject to double meaning or different

interpretations may be registered.


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Example

BOBO

(Stupid in Tagalog - regular name outside Philippines)

PUTO

(Foul word in Spanish - rice cake in Tagalog)

NEGRO

(Foul word in USA - means black in Tagalog and a location in the Philippine)

Section 10. When trademark’s exclusive right is created?

“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” (2017

Trademark IRR)

Section 11. Term of Protection

Trademark registration last “10” years counted from registration. However,

you have to maintain the mark by submitting occasionally proof that the mark is

being used in the Philippines

Chapter

ⅡPhilippines’ Trademark principle

Chapter Ⅱ. Philippines’ Trademark principle

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Section 1. Principle of first to file rule

The Philippines follows the first to file rule. This means that the mark with

the earliest filing or priority date will block all subsequently filed applications. This

means that the first filer will be given the rights to the trademark.

Filing date

Subject to priority right, the filing date of an application shall be the date

on which the IPOPHL received the trademark application and the filing fee.

Priority right / Priority Date

A priority right / date is based on the first filing of the mark in another

country. The subsequent application in the Philippines will be regarded as if they

had been filed on the same day as the first foreign application. However, the

subsequent application in the Philippines must claim the priority right using the

earliest application and must be filed within “6” months from the earliest

application in the foreign country.

Section 2. International treaties that Philippines joined

Protocol Relating to the Madrid Agreement Concerning the International

Registration of Marks

The Madrid System allows the filing of marks in multiple Madrid member

jurisdictions using one application.

Convention Establishing the World Intellectual Property Organization

Treaty which created and established the World Intellectual Property

Organization. WIPO is an intergovernmental organization which in 1974 became

one of the specialized agencies of the United Nations system.

Ⅱ Philippines’ Trademark principle


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The Paris Convention

The Paris Convention provides the basis for the use of "Priority Right" and

“National Treatment”. It also prescribes common rules provisions such as

protection of well-known marks, indications of source, protection of trade names,

and unfair competition.

Chapter

ⅢApplication for Trademark Registration

Chapter Ⅲ. Application for Trademark Registration

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Section 1. Intellectual Property Office of the Philippines (IPOPHL)

The Intellectual Property Office (IPO) which shall have the following

functions:

(a) Examine applications for grant of letters patent for inventions and

register utility models and industrial designs;

(b) Examine applications for the registration of marks, geographic

indication, integrated circuits;

(c) Register technology transfer arrangements and settle disputes

involving technology transfer payments covered by the provisions on

Voluntary Licensing and develop and implement strategies to promote

and facilitate technology transfer;

(d) Promote the use of patent information as a tool for technology

development;

(e) Publish regularly in its own publication the patents, marks, utility

models and industrial designs, issued and approved, and the

technology transfer arrangements registered;

(f) Administratively adjudicate contested proceedings affecting

intellectual property rights; and

(g) Coordinate with other government agencies and the private sector

efforts to formulate and implement plans and policies to strengthen

the protection of intellectual property rights in the country.

Address : Intellectual Property Center, #28 Upper McKinley Road, McKinley

Hill Town Center, Fort Bonifacio, Taguig City 1634 Philippines

Email : General information - [email protected]

Bureau of Trademarks - [email protected]

Documentation, Information, & Technology Transfer Bureau - [email protected]

Contact No. : +63 (2) 7238 6300

Ⅲ Application for Trademark Registration


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Section 2. Pre-filing of Trademark

A. What is a Trademark search, why is it necessary?

Trademark search is necessary in order to determine if the proposed mark

can be registered. This is done to prevent unnecessary wastage of time and

money on applications that cannot be registered.

B. Trademark Search site

The IPOPHL, uses the following databases:

WIPO GLOBAL BRAND DATABASE : https://www3.wipo.int/branddb/ph/en/

ASEAN TM-VIEWER: http://www.asean-tmview.org/tmview/welcome

Section 3. Application of Trademark

A. Filing process

Only online filing is allowed by the Intellectual Property Office

You may access the online application portal at the website of IPOPHL at

https://www.ipophil.gov.ph/ SERVICES > e-Services > eTM File (Trademark)

https://www.ipophil.gov.ph/etm-file-trademark/

B. General Filing Requirements

Name of the Applicant/Registrant

Type of entity of the Applicant

Name and address of the resident agent, if applicable.

Address of the Applicant/Registrant

Reproduction / design of the mark being applied for (includes the claim of

color)

Description of the mark.


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Disclaimer, if applicable.

Nice Classification of Goods and Services and exact description of where the

goods are going to be used or where the services are going to be rendered

Translation and Transliteration, if not in English or Tagalog.

Priority claim and priority document, if any. With English translation if not in

English

Power of Attorney

For reference, the old application form may be accessed:

https://drive.google.com/file/d/1amZi1FD5n1he_bbQbT8goFDo8u5tNSQ1/view

Please note that application forms are no longer accepted by the IPOPHL.

Trademarks must now be filed using e-TM filing, the link for the e-TM filing is

provided below.

E-TM filing link : https://www.ipophil.gov.ph/etm-file-trademark/

Local address is required?

Local Address is not required, it is only required for local authorized

representatives of the applicant/registrant

C. Who can file a Trademark Application?

Any person, whether natural or juridical, who is a national or who is

domiciled or has a real and effective industrial establishment in a country which

is a party to any convention, treaty or agreement relating to intellectual property

rights or the repression of unfair competition, to which the Philippines is also a

party, or extends reciprocal rights to nationals of the Philippines by law, shall be

entitled to benefits to the extent necessary to give effect to any provision of such

convention, treaty or reciprocal law, in addition to the rights to which any owner

of an intellectual property right is otherwise entitled by Philippine Intellectual

Property Code.


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D. Timeline for process

The estimated turnaround time for the filing of the application up to the

issuance of the certificate of registration, given that no office actions nor

oppositions are raised, is around 3-4 months.

E. Fee

The IPOPHL has provided their new schedule of fees last 2017. You may

access the revised version of the fees at the IPOPHL’s website:

https://drive.google.com/file/d/138zRWPEofZJCc5TzJvJ4hwUx8UPM-cPX/view

You may also refer to Annex for the schedule of fees.

Please note that the above only covers IPOPHL’s fees, it does not cover

your lawyers or resident agent’s professional fees.

F. Claim of Priority

Rule 202 in the IPOPHL Memorandum Circular No. 17-010 states that “an

application for registration of a mark filed in the Philippines by a person referred

to in Rule 201, 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.”

Rule 203 further explains the requirements for claiming the priority right:

“An application with a claim of priority right must be filed within six (6)

months from the date the earliest foreign application was filed. If the fact

of filing and/ or registration is verifiable from the official website of the

foreign intellectual property office where the earliest application was filed,

the applicant is not required to submit a certified copy of the foreign

application or registration that serves as basis of the claim of priority right.

Otherwise, the applicant shall be required to submit a photocopy of the

foreign registration and an English translation, if necessary, within six

months from the mailing date of the office action of the Examiner

requiring the same, subject to extension as provided under Rule 615.”


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G. How to register trademark by Madrid protocol

As stated in IPOPHL Memorandum Circular No. 17-011 (“PHILIPPINE

REGULATIONS IMPLEMENTING THE PROTOCOL RELATING TO THE MADRID

AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION MARKS OF

2017”) the requirements for registering a trademark registration via the Madrid

Protocol are the following:

(a) name and address and contact details of the applicant or the address

and contact details of his representative, if any;

(b) the Designated Contracting Parties;

(c) reproduction of the mark; and

(d) indication of the goods and services for which registration of the mark

is sought

The above-mentioned information can be filled up the in Madrid

Application Form or the MM2 Form which can be accessed in this link :

https://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2-edita

ble1.pdf

H. What is a benefit from Paris Convention?

When a foreign application is filed under the Paris Convention in a country

which has ratified this treaty and within the applicable grace period, it is filed with

a claim to "priority". That is, the application in the foreign country will be treated

as if it had been filed on the same date as the first application filed in another

Paris Convention member country. Another way of expressing this concept is to

say that the foreign patent application has an effective filing date which is the

same as the actual filing date of the first application.22)

22) https://www.iatp.org/sites/default/files/THE_PARIS_CONVENTION.htm#:~:text=When%20a%20foreign

%20application%20is,a%20claim%20to%20%22priority%22.&text=The%20benefit%20of%20this%20clai

m,apparent%20to%20Intellectual%20Property%20lawyers.


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Section 4: Additional Requirement for Trademark Registration

A. Statement of Use

The IPOPHL does not require prior use or a statement of use before or

during the trademark application process.

B. Clear Specification of goods / Services

For specificity and accuracy purposes, the applicant can check their goods

and services in the following hyperlinks:

https://www.wipo.int/classifications/nice/nclpub/en/fr/

https://webaccess.wipo.int/mgs/

C. Submission of the Power of Attorney

A signed Power of Attorney must be submitted to the resident agent. The

resident agent in turn will submit said Power of Attorney to the IPOPHL. Without

the Power of Attorney, the resident agent cannot act in your behalf.

Section 5: Examination (Office Action)

A. IPOPHL’s Examinations for trademark registration (Formality Examination

and Substantive Examination)

The Intellectual Property Office’s Actions are issued either due to a formal

defect or due to a substantive examination.

Office Actions relating to formal defects are issued in order to complete

missing or defective information or documents in the application. The applicant

will be given two months from the electronic signature, to complete the missing

information or document or fix the said information or document.

For priority right, if the foreign application has not been registered at the

time of allowance or if the foreign intellectual property office does not have an

online trademarks database, the Examiner shall, in the Notice of Allowance and


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Deferment, require the applicant to submit a photocopy of the foreign registration

within six (6) months from mailing date of such notice

Substantive examination Office Actions are registrability reports, which

provisionally or finally, deny a registration of a mark due to absolute or relative

grounds (see Section 123.1 of the Intellectual Property Code). See discussion

regarding Absolute Grounds and Relative Grounds/ Similarity issues.

The applicant will be given two months from the electronic signature to submit

his response to the Office Action. The response must completely, clearly indicate,

and prove that the mark to be applied does not fall under any of the grounds

under Section 123.1 of the Intellectual Property Code.

Can I request for an extension to submit my response?

You may request for a two-month extension to submit your response

subject to payment of required fees If you still need additional time, you may

subsequently request for another two-month extension again subject to fees.

For submission of priority documents, you may request an additional

period of one year.

B. What should applicant do when the examination report/office action (with

rejection) is received?

If you receive an examination report or an office action, you should ask

assistance from you lawyer on the next steps which should be taken. Please note

that responses of non-Philippine residents will not be processed by the IPOPHL

until a resident agent has been appointed.

Section 6: Trademark Publication (Opposition)

A. Opposition procedure

Once the Verified Notice of Opposition is timely and properly filed with

the Bureau of Legal Affairs (BLA), a Notice to Answer will be served to the


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Respondent-Applicant to file their Verified Answer within thirty (30) days from

their receipt. The Respondent-Applicant can request for a maximum period of one

hundred twenty (120) days from receipt of the Notice to Answer within which to

file the same (Three “30 day” Extension Request to File Answer). After which, the

case shall be submitted for Mediation. If the parties fail to settle, Preliminary

Conference shall be held, and the parties shall be ordered to submit their

respective Position Papers. The case shall then be submitted for Decision before

the Adjudication Officer of the BLA - Intellectual Property Office of the Philippines

(IPOPHL). Said Decision may be appealed to the Director of the BLA, then to the

Director General of the IPOPHL, which can be further appealed to the Court of

Appeals (CA), and finally to the Supreme Court (SC), as illustrated in the attached

flow chart:

In all cases, the Opposition shall be verified for and on behalf of the

Petitioner by a specifically authorized person who has personal knowledge of the

facts required to be established by the document.

Please note that the rules on inter partes cases requires that the Verified

Opposition shall be filed together with the affidavits of witnesses and all

documentary exhibits. Aside from the SPA and the Secretary’s Certificate, the

originals of documents submitted can be filed during Preliminary Conference.


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Section 7. Post-filing

A. Renewal, Assignment/Transmission, Registered User and Post Registration

Changes of Registered User

(1) Renewal of Trademark(s)

Request for Renewal. - A registration may be renewed for periods of ten

(10) years at its expiration upon filing of a request and payment of the prescribed

fee. The request shall contain the following indications and/or supporting

documents:

(a) An indication that renewal is sought;

(b) The name, address and other contact details of the registrant or

successor-in-interest, hereafter referred to as the "right holder";

(c) The registration number;

(d) The filing date of the application which resulted in the registration to

be renewed;

(e) Where the right holder has an authorized representative or agent, the

name and address of that representative or agent;

(f) The recorded goods or services for which the renewal is requested,

grouped according to the classes of the Nice Classification; and

(g) A signature by the right holder or the right holder's authorized

representative or agent.

In case of material variations of the mark, a new application must be filed.

When to File Request for Renewal?

The request for renewal may be made at any time within six (6) months

before the expiration of the period for which the registration was issued or

renewed, or within six (6) months after such expiration, subject to the payment

of the prescribed additional fee or surcharge.


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Renewal Filed by Person Who is Not the Resident Agent of Record

If the registrant, assignee or other owner of the mark which is the subject

of a petition for renewal registration is not domiciled in the Philippines, and if the

petition for renewal is filed by a person who is not the authorized representative

or agent of record, the power of attorney appointing the person filing the petition

as the representative of the registrant must be filed and, upon payment of the

required fee, must be recorded before the Office can act upon the petition for

renewal.

Certificate of Renewal of Registration

The Office shall issue a certificate of renewal upon payment of the

required fee for the issuance thereof. The issuance of the certificate of renewal

shall be published in the IPO eGazette and shall be entered in the records of this

Office.

The certificate of renewal of registration shall contain the following:

(a) registration number;

(b) the mark subject of the renewal;

(c) the date of original registration and renewal registration;

(d) the duration of the renewal registration;

(e) all the data required to be contained in a certificate of registration

provided in these Regulations including any limitation contained in the

order of the Director approving the renewal of the registration.

(2) Assignment & transmission of a registered trademarks

An application for registration of a mark, or its registration, may be

assigned or transferred with or without the transfer of the business using the

mark. Such assignment or transfer shall, however, be null and void if it is liable

to mislead the public, particularly as to the nature, source, manufacturing process,

characteristics, or suitability of purpose, of the goods or services to which the

mark is applied.


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Form of Assignment or Transfer

The assignment of the application for registration of a mark, or of its

registration, shall be notarized and require the signature of the applicant,

registrant, or the assignee of record in case of subsequent assignment. Transfers

by mergers or other forms of succession may be evidenced by the deed of

merger or by any document supporting such transfer.

Recordal of Assignment or Transfer

Assignments and transfers shall have no effect against third parties until

they are recorded at the Office. Assignments and transfers of registrations and

applications for registration shall be recorded upon payment of the required fee.

Assignment, Other Instruments Affecting the Registration, or License, and

Translation, to be Submitted in Original Copy.

The original document of assignment, other instrument or license and its

translation, if necessary, is required to be submitted to and shall be retained by

the IPOPHL A notice of recordal shall accordingly be issued to the party filing the

instrument.

Date of Recordal of Documents

The date of recordal of an assignment, license or other document is the

date of receipt of the instrument in proper form and payment of the prescribed

fees.

A New Certificate of Registration will be Issued to Assignee

Upon written request of an assignee of record, and upon payment of the

required fee, a new certificate of registration for the unexpired period of the

registration shall be issued to the assignee.


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Action may be Taken by Assignee of Record in Any Proceeding in the

Office

Any action in any proceeding in the IPOPHL which may or must be taken

by a registrant or applicant may be taken by the assignee to the exclusion of the

original owner, registrant, applicant or earlier assignee, provided the assignment

has been recorded. Unless such assignment has been recorded, no assignee will

be recognized to act on the application or registration.

Clearance of Trademark License Agreement Prior to Recordal

Any trademark license agreement shall be applied for clearance with the

Documentation Information and Technology Transfer Bureau (DITTB) of the Office

and shall be recorded only upon certification by the Director of the DITTB that the

agreement does not violate the prohibited clauses and that it includes the

mandatory provisions under Sections 86 and 87, respectively, of the IP Code.

In order to ascertain whether or not the assignment violates Sections 86

and 87, please contact your lawyer. If the assignment violates Sections 86 and 87,

the lawyer will assist you in drafting the assignment.

(3) Registered users

As long as the trademark owner allows the use of the mark to third

persons, registration of the agreement is not necessary in order effect the

agreement. However, exclusive licensing agreements which are not registered

with the IPOPHL is not considered binding on third parties.

(4) Post-registration amendments

Only change of name, change of address, change of resident agent, and

assignment are allowed. No other post-registration amendments are allowed.


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B. Declaration of Actual Use

In order to maintain your trademark registration, you must submit the

notarized Declaration of Actual Use (“DAU”) form along with proof that you are

using the mark in Philippine commerce.

You may submit any of the following as proof of use:

(a) labels of the mark as these are used;

(b) downloaded pages from the website clearly showing that the goods

are being sold or the services are being rendered in the Philippines;

(c) photographs (including digital photographs printed on ordinary paper)

of goods bearing marks as these are actually used or of the stamped

or marked container of goods and of the establishment/s where the

services are being rendered;

(d) brochures or advertising materials showing the actual use of the

mark on the goods being sold or services being rendered in the

Philippines;

(e) receipts or invoices of sale of the goods or services rendered or

other similar evidence of use, showing that the goods are placed on

the market or the services are available in the Philippines;

(f) copies of contracts for services showing the use of the mark.

Can my lawyer sign and notarize the DAU form?

Yes, you may allow the trademark lawyer to execute and notarize the

Declaration of Actual Use form in your behalf. However, this will entail addition

cost.

Do I have to submit evidence for each and every good and service listed

in my trademark?

No, you only need to submit “1” proof of use per Nice Class.


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No. Example

1 Nice Class 9Software

Hardware computers for ATMS

2 Nice Class 35Advertising for others

Online Retail services

When should I submit the DAU form and proof of use?

(1) Within three (3) years from the filing date of the application;

(2) Within one (1) year from the fifth anniversary of the registration;

(3) Within one (1) year from date of renewal;

(4) Within one (1) year from the fifth anniversary of each renewal;

Note: the trademark lawyer will timely remind you if there is upcoming

DAU due.

Can I recycle previously submitted evidence or proof of use?

No, the Intellectual Property Office does not accept recycled evidence.

New evidence of use must be submitted each time.

What if I fail to submit the DAU form or proof of use?

Your mark will be removed from the trademark registry. If the mark is

removed from the trademark registry due to non-submission of the DAU form

and/or proof of use or non-compliance with the prescribed evidence of use, the

only solution to regain protection is to refile the trademark application.

You may also submit Declaration of Non-Use if you prove that the

non-use is due to act of god or government restriction.

Can I file all the types of Declaration of Actual Use all at the same time?

No, the IPOPHL does not allow the filing of the different types of

Declaration of Actual Use at the same time.


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Section 8. IPOPHL’s Trademark application and registration statistics23)

How many trademark applications were in the last “5” years?

27,122 applications in 2015,



35,674 applications in 2018, and

39,399 applications in 2019.

How many trademark applications, direct and Madrid filings were filed by

foreigners in the last “5” year in the Philippines?


11, 930 applications in 2016,

13, 412 applications in 2017,

14,060 applications in 2018, and

15,894 applications in 2019.

How may trademark applications were granted trademark registrations in

the last “5” years?

22,002 in 2015

27,014 in 2016

21,966 in 2017

25,639 in 2018

28,167 in 2019

23) https://www.ipophil.gov.ph/reference/statistics/


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The statistics above would show that around 75% of the total filed

application are granted trademark registration. Please note that the chances of

registration of an application greatly varies per application.

Chapter

ⅣUtilization of Trademark

Chapter Ⅳ. Utilization of Trademark

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Section 1. Licensing, franchising, sale, rent

As long as the trademark owner allows the use of the marks, registration

of the agreement is not necessary in order effect the agreement (licensing,

franchising, sale, rent). However, exclusive licensing agreements which are not

registered with the Documentation, Information, Technology Transfer Bureau

(DITTB) is not considered binding on third parties. Please note that rent is treated

as licensing / franchising.

Below is a Supreme Court case explaining the difference between

franchising and employment.

G.R. No. 16994, March 12, 2014

TESORA V. METRO MANILA RETREADERS

Facts : Ashmor M. Tesoro, Pedro Ang, and Gregorio Sharp used to work as

salesmen for Metro Manila Retreaders, Inc., Northern Luzon Retreaders, Inc., or

Power Tire and Rubber Corporation, apparently sister companies, collectively

called "Bandag." Bandag offered repair and retread services for used tires. In

1998, however, Bandag developed a franchising scheme that would enable

others to operate tire and retreading businesses using its trade name and

service system.

Ashmor M. Tesoro, Pedro Ang, and Gregorio Sharp quit their jobs as salesmen

and entered into separate Service Franchise Agreements (SFAs) with Bandag

for the operation of their respective franchises. Under the SFAs, Bandag would

provide funding support to Ashmor M. Tesoro, Pedro Ang, and Gregorio subject

to a regular or periodic liquidation of their revolving funds. The expenses out

of these funds would be deducted from Ashmor M. Tesoro, Pedro Ang, and

Gregorio’s sales to determine their incomes.

At first, Ashmor M. Tesoro, Pedro Ang, and Gregorio Sharp managed and

operated their respective franchises without any problem. After a length of

time, however, they began to default on their obligations to submit periodic

Ⅳ Utilization of Trademark


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liquidations of their operational expenses in relation to the revolving funds

Bandag provided them. Consequently, Bandag terminated their respective SFA.

Aggrieved, Ashmor M. Tesoro, Pedro Ang, and Gregorio Sharp filed a complaint

for constructive dismissal, non-payment of wages, incentive pay, 13th month

pay and damages against Bandag with the National Labor Relations

Commission (NLRC). Ashmor M. Tesoro, Pedro Ang, and Gregorio Sharp

contend that, notwithstanding the execution of the SFAs, they remained to be

Bandag’s employees, the SFAs being but a circumvention of their status as

regular employees.

For its part, Bandag pointed out that Ashmor M. Tesoro, Pedro Ang, and

Gregorio Sharp freely resigned from their employment and decided to avail

themselves of the opportunity to be independent entrepreneurs under the

franchise scheme that Bandag had. Thus, no employer-employee relationship

existed between Ashmor M. Tesoro, Pedro Ang, Gregorio and Bandag.

Issue : Whether or not Ashmor M. Tesoro, Pedro Ang, and Gregorio Sharp

remained to be Bandag’s salesmen under the franchise scheme it entered into

with them.

Held : Franchising is a business method of expansion that allows an individual

or group of individuals to market a product or a service and to use of the

patent, trademark, trade name and the systems prescribed by the owner. In

this case, Bandag’s SFAs created on their faces an arrangement that gave

Ashmor M. Tesoro, Pedro Ang, and Gregorio the privilege to operate and

maintain Bandag branches in the way of franchises, providing tire repair and

retreading services, with Ashmor M. Tesoro, Pedro Ang, and Gregorio earning

profits based on the performance of their branches.

When Ashmor M. Tesoro, Pedro Ang, and Gregorio Sharp agreed to operate

Bandag’s franchise branches in different parts of the country, they knew that

this substantially changed their former relationships. They were to cease

working as Bandag’s salesmen, the positions they occupied before they

ventured into running separate Bandag branches. They were to cease receiving

salaries or commissions. Their incomes were to depend on the profits they

made. Yet, Ashmor M. Tesoro, Pedro Ang, and Gregorio Sharp did not then


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Section 2. Procedure

Trademark license agreement clearance is filed with the Documentation

Information and Technology Transfer Bureau. The agreement will be recorded only

upon certification by the Director of the DITTB that the agreement does not violate

the prohibited clauses and that it includes the mandatory provisions under

Sections 87 and 88, respectively, of the IP Code. The DITTB requires at least “2”

notarized copies of the agreement.

The following the Mandatory and Prohibited Provisions in the IP Code:

Sec. 87. Prohibited Clauses. - Except in cases under Section 91, the

following provisions shall be deemed prima facie to have an adverse on

competition and trade:

87.1. Those which impose upon the licensee the obligation to acquire

from a specific source capital goods, intermediate products, raw materials,

and other technologies, or of permanently employing personnel indicated

by the licensor;

87.2. Those pursuant to which the licensor reserves the right to fix the

sale or resale prices of the products manufactured on the basis of the license;

87.3. Those that contain restrictions regarding the volume and structure

of production;

complain of constructive dismissal. They took their chances, ran their branches,

Gregorio Sharp in La Union for several months and Ashmor Tesoro in Baguio

and Pedro Ang in Pangasinan for over a year. Clearly, their belated claim of

constructive dismissal is quite hollow.

But uniformity in prices, quality of services, and good business practices are

the essence of all franchises. A franchisee will damage the franchisor’s

business if he sells at different prices, renders different or inferior services, or

engages in bad business practices. These business constraints are needed to

maintain collective responsibility for faultless and reliable service to the same

class of customers for the same prices.


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87.4 Those that prohibit the use of competitive technologies in a

non-exclusive technology transfer agreement;

87.5. Those that establish a full or partial purchase option in favor of the

licensor;

87.6. Those that obligate the licensee to transfer for free to the licensor

the inventions or improvements that may be obtained through the use of

the licensed technology;

87.7. Those that require payment of royalties to the owners of patents for

patents which are not used;

87.8. Those that prohibit the licensee to export the licensed product

unless justified for the protection of the legitimate interest of the licensor

such as exports to countries where exclusive licenses to manufacture

and/or distribute the licensed product(s) have already been granted;

87.9. Those which restrict the use of the technology supplied after the

expiration of the technology transfer arrangement, except in cases of early

termination of the technology transfer arrangement due to reason(s)

attributable to the licensee;

87.10. Those which require payments for patents and other industrial

property rights after their expiration, termination arrangement;

87.11. Those which require that the technology recipient shall not contest

the validity of any of the patents of the technology supplier;

87.12. Those which restrict the research and development activities of the

licensee designed to absorb and adapt the transferred technology to local

conditions or to initiate research and development programs in connection

with new products, processes or equipment;

87.13. Those which prevent the licensee from adapting the imported

technology to local conditions, or introducing innovation to it, as long as

it does not impair the quality standards prescribed by the licensor;


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87.14. Those which exempt the licensor for liability for non-fulfillment of

his responsibilities under the technology transfer arrangement and/or

liability arising from third party suits brought about by the use of the

licensed product or the licensed technology; and

87.15. Other clauses with equivalent effects. (Sec. 33-C[2], R. A. 165a)

Sec. 88. Mandatory Provisions. - The following provisions shall be

included in voluntary license contracts:

88.1. That the laws of the Philippines shall govern the interpretation of

the same and in the event of litigation, the venue shall be the proper

court in the place where the licensee has its principal office;

88.2. Continued access to improvements in techniques and processes

related to the technology shall be made available during the period of the

technology transfer arrangement;

88.3. In the event the technology transfer arrangement shall provide for

arbitration, the Procedure of Arbitration of the Arbitration Law of the

Philippines or the Arbitration Rules of the United Nations Commission on

International Trade Law (UNCITRAL) or the Rules of Conciliation and

Arbitration of the International Chamber of Commerce (ICC) shall apply

and the venue of arbitration shall be the Philippines or any neutral

country; and

88.4. The Philippine taxes on all payments relating to the technology

transfer arrangement shall be borne by the licensor.

150.1. Any license contract concerning the registration of a mark, or an

application therefor, shall provide for effective control by the licensor of

the quality of the goods or services of the licensee in connection with

which the mark is used. If the license contract does not provide for such

quality control, or if such quality control is not effectively carried out, the

license contract shall not be valid. (If the licensing involves trademarks,

150.1 is treated as an additional mandatory provision by the DITTB)

In order to ascertain whether or not the agreement violates Sections 87


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and 88, please contact your lawyer. If the agreement violates Sections 87 and 88,

the lawyer will assist you in drafting the agreement. For assignments please see

Section III, G.

If my licensing agreement does not conform with sections 87 and 88 is

it valid?

Yes, the agreement is still considered valid but it is unenforceable in the

Philippines. An unenforceable contract in the Philippines renders a valid contract

useless since the party may not enforce the contract in the Philippines. However,

an unenforceable contract can be enforced if the party claiming can prove that

they have already conducted partial performance.

If I do not record my trademark licensing agreement is it considered valid?

Yes, however, the contract cannot be used against third parties.

Can I claim exemption for sections 87 and 88?

Yes, however, you must prove that the licensing or franchise agreement

must be about any of the following: substantial benefits will accrue to the

economy, such as high technology content, increase in foreign exchange earnings,

employment generation, regional dispersal of industries and/or substitution with or

use of local raw materials, or in the case of Board of Investments, registered

companies with pioneer status. Please note employment of a few hundred is not

considered as employment generation.

Chapter

ⅤCountermeasure to Trademark Infringement

Chapter Ⅴ. Countermeasure to Trademark Infringement

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Section 1. What is Trademark Infringement?

Trademark Infringement is committed by the use of a registered mark or

a colorable imitation of a registered mark and such use would result in the

likelihood of confusion.

The elements of Trademark Infringement under RA 8293 are:

(1) The trademark being infringed is registered in the Intellectual Property

Office;

(2) The trademark is reproduced, counterfeited, copied, or colorably

imitated by the infringer;

(3) The infringing mark is used in connection with the sale, offering for

sale, or advertising of any goods, business or services; or the

infringing mark is applied to labels, signs, prints, packages, wrappers,

receptacles or advertisements intended to be used upon or in

connection with such goods, business or services;

(4) The use or application of the infringing mark is likely to cause

confusion or mistake or to deceive purchasers or others as to the

goods or services themselves or as to the source or origin of such

goods or services or the identity of such business; and

(5) The use or application of the infringing mark is without the consent

of the trademark owner or the assignee thereof.

Counterfeiting is a form of trademark infringement where the goods or

services are intentionally made to look identical or almost identical to a registered

trademark.

Section 2. How to respond to trademark infringement

1. Sending of demand/cease and desist letter to infringing party.

Ⅴ Countermeasure to Trademark Infringement


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2. Filing appropriate administrative/civil/criminal case upon their refusal

of failure to cease infringement.

3. Making a publication that the infringing products/services are not the

products/services of the trademark owner.

If you think your mark has been infringed in the Philippines, it is best to

consult your lawyer on the matter.

Section 3. Countermeasures of Trademark infringement case

1. Filing an administrative case with the IPOPHL for trademark

infringement (IPV Case)

2. Request for an injunction in either the IPOPHL or regular courts.

3. Request for impoundment and subsequent destruction of infringing

goods.

4. There are also remedies in the ordinary courts (filing civil and/or

criminal case for trademark infringement)

Section 4. IPOPHL’s mediation

No mediation in IPV cases. But at most, parties may possibly have an

amicable settlement during Pre-Trial.

Section 5. Criminal sanction

An individual found guilty in a criminal case for trademark infringement

(unfair competition, and/or false designation) may be imprisoned up to two (2) to

five (5) years, and may be ordered to pay a fine ranging from P50,000 to

P200,000.

Chapter

ⅥTrademark Infringement cases

Chapter Ⅵ. Trademark Infringement cases

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Case 1. CANON KABUSHIKI KAISHA v. CA and NSR RUBBER CORP

G.R. NO. 120900, July 20, 2000

CANON (Class 2) v. CANON (Class 25)

Facts : NSR Rubber Corp., filed a trademark application for the mark CANON

for sandals (Class 25) The application was opposed by Canon Kabushiki Kaisha

(CKK), a Japanese corporation.

CKK’s deals and sells goods belonging to Class 2 (paints, chemical products,

toner and dyestuff) and has foreign trademark registrations relating to said

class.

CKK’s Opposition was dismissed by both the IPOPHL and the Court of

Appeals. Hence, CKK appealed to the Philippine Supreme Court.

Issues :

(1) Whether or not the trademark of CKK was violated.

(2) Whether or not NSR Rubber Corp’s trademark application infringes the

tradename of CKK “CANON”.

Held : Supreme Court stated that the mark of CKK was not violated and

further held that the tradename of CKK was not violated by the registration of

the mark of NSR Rubber corp.

The Court stated that there are the goods of both NSR Rubber and CKK are

too dissimilar to merit confusion. No person will confuse paints, chemical

products, toner, and dyestuff with sandals.

In addition, the certificate of registration confers upon the trademark owner the

exclusive right to use its own symbol only to those goods specified in the

certificate, subject to the conditions and limitations stated therein.

The Supreme Court also stated that foreign trade names are only automatically

protected in the Philippines if said trade name is internationally well-known,

the subject of the right must be a trademark, must be used for the same or

similar goods, and the person claiming must be the owner of the mark.

Ⅵ Trademark Infringement cases


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Case 2. Wilton Dy v. Koninklijke Philips Electronics

G.R. No. 186088, March 22, 2017

PHILIPS v. PHILITES

Facts : PHILITES filed a trademark application covering its fluorescent bulb,

incandescent light, starter and ballast. After publication, Koninklijke Philips

Electronics, N.V. ("PHILIPS") Opposed the mark based on confusing similarity to

its internationally well-known trademark which are used for the same goods as

PHILITES application.

The IPOPHL, in both the Bureau of Legal Affairs level and the Director General

level, dismissed the Opposition filed by PHILIPS. The held that the mark of

“PHILITES” was not confusing similar to the mark “PHILIPS”.

PHILIPS appealed the decision to the Court of Appeals. The Court of Appeals

reversed the decision of the IPOPHL.

Issue : Whether or not the mark “PHILITES” is confusingly similar to the mark

“PHILIPS”

Held : The Supreme Court held that the mark “PHILITES” is confusingly similar

to the mark “PHILIPS”. Applying both Dominancy and Holistic test (Dominancy

and Holistic test are similarity test), the Supreme Court stated that the mark is

confusingly similar to wit:

Applying the dominancy test to this case requires us to look only at the mark

submitted by petitioner in its application, while we give importance to the

aural and visual impressions the mark is likely to create in the minds of the

buyers. We agree with the findings of the CA that the mark "PHILITES" bears

an uncanny resemblance or confusing similarity with respondent's mark

"PHILIPS," to wit:

Applying the dominancy test in the instant case, it shows the uncanny

resemblance or confusing similarity between the trademark applied for by

respondent with that of petitioner's registered trademark. An examination of

the trademarks shows that their dominant or prevalent feature is the

five-letter "PHILI", "PHILIPS" for petitioner, and "PHILITES" for respondent.


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The marks are confusingly similar with each other such that an ordinary

purchaser can conclude an association or relation between the marks. The

consuming public does not have the luxury of time to ruminate the

phonetic sounds of the trademarks, to find out which one has a short or

long vowel sound. At bottom, the letters "PHILI" visually catch the attention

of the consuming public and the use of respondent's trademark will likely

deceive or cause confusion. Most importantly, both trademarks are used in

the sale of the same goods, which are light bulbs.

The confusing similarity becomes even more prominent when we examine

the entirety of the marks used by petitioner and respondent, including the

way the products are packaged. In using the holistic test, we find that

there is a confusing similarity between the registered marks PHILIPS and

PHILITES, and note that the mark petitioner seeks to register-is vastly

different from that which it actually uses in the packaging of its products.

We quote with approval the findings of the CA as follows:

Applying the holistic test, entails a consideration of the entirety of the

marks as applied to the products, including the labels and packaging, in

determining confusing similarity. A comparison between petitioner's

registered trademark "PHILIPS" as used in the wrapper or packaging of its

light bulbs and that of respondent's applied for trademark "PHILITES" as

depicted in the container or actual wrapper/packaging of the latter's light

bulbs will readily show that there is a strong similitude and likeness

between the two trademarks that will likely cause deception or confusion to

the purchasing public. The fact that the parties' wrapper or packaging

reflects negligible differences considering the use of a slightly different font

and hue of the yellow is of no moment because taken in their entirety,

respondent's trademark "PHILITES" will likely cause confusion or deception

to the ordinary purchaser with a modicum of intelligence.


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Case 3. La Chemise Lacoste v. Fernandez

G.R. No. L-63796-97, May 2, 1984

La Chemise Lacoste v. Fernandez

Facts : La Chemise Lacoste is a foreign corporation, organized and existing

under the laws of France and not doing business in the Philippines. It is the

actual owner of the trademarks ‘Lacoste,’ ‘Chemise Lacoste,’ and ‘Crocodile

Device’ used on clothing and other goods that are sold in many parts of the

world and which have been marketed in the Philippines since 1964.

In 1975, Hemandas & Co., a duly licensed domestic firm applied for and was

issued Reg. No. SR-2225 (SR stands for Supplemental Register) for the

trademark "CHEMISE LACOSTE & CROCODILE DEVICE" by the Philippine

Patent Office for use on T-shirts, sportswear and other garment products of

the company. Two years later, it applied for the registration of the same

trademark under the Principal Register

The Patent Office eventually issued an order dated March 3, 1977 which

states that:

xxx xxx xxx

... Considering that the mark was already registered in the Supplemental

Register in favor of herein applicant, the Office has no other recourse but

to allow the application, however, Reg. No. SR-2225 is now being

contested in a Petition for Cancellation docketed as IPC No. 1046, still

registrant is presumed to be the owner of the mark until after the

registration is declared cancelled.

Thereafter, Hemandas & Co. assigned to Gobindram Hemandas all rights, title,

and interest in the trademark "CHEMISE LACOSTE & DEVICE".

On November 21, 1980, the La Chemise Lacoste filed its application for

registration of the trademark "Crocodile Device" (Application Serial No. 43242)

and "Lacoste" (Application Serial No. 43241).The former was approved for

publication while the latter was opposed by Games and Garments in Inter

Partes Case No. 1658. In 1982, the La Chemise Lacoste filed a Petition for


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the Cancellation of Reg. No. SR-2225 docketed as Inter Partes Case No.

1689. Both cases have now been considered by this Court in Hemandas v.

Hon. Roberto Ongpin (G.R. No. 65659).

On March 21, 1983, the La Chemise Lacoste filed with the National Bureau of

Investigation (NBI) a letter-complaint alleging therein the acts of unfair

competition being committed by Hemandas and requesting their assistance in

his apprehension and prosecution. The NBI conducted an investigation.

Hemandas opposed and alleged that the trademark used by him was different

from La Chemise Lacoste’s trademark and that pending the resolution of IPC

No. 1658 before the Patent Office, any criminal or civil action on the same

subject matter and between the same parties would be premature. The main

basis is its claim of alleged prior registration.

Issue : Whether or not La Chemise Lacoste’s trademark is a well-known mark

which is protected in the Paris Convention

Held : Yes, La Chemise Lacoste’s trademark is a well-known mark.

There is more than enough evidence to sustain a finding that the La Chemise

Lacoste is the owner of the trademarks "LACOSTE", "CHEMISE LACOSTE", the

crocodile or alligator device, and the composite mark of LACOSTE and the

representation of the crocodile or alligator.

The records show that the goodwill and reputation of the La Chemise

Lacoste’s products bearing the trademark LACOSTE date back even before

1964 when LACOSTE clothing apparels were first marketed in the Philippines.

To allow Hemandas to continue using the trademark Lacoste for the simple

reason that he was the first registrant in the Supplemental Register of a

trademark used in international commerce and not belonging to him is to

render nugatory the very essence of the law on trademarks and tradenames.


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Case 4. Asia Brewery, Inc. v. CA

G.R. No. 103543, July 5, 1993

Asia Brewery, Inc. v. CA

Facts : On September 15, 1988, San Miguel Corporation (SMC) filed a

complaint against Asia Brewery Inc. (ABI) for infringement of trademark and

unfair competition on account of the latter's BEER PALE PILSEN product which

has been competing with SMC's SAN MIGUEL PALE PILSEN for a share of the

local beer market.

Issue : Did ABI commit infringement of SMC’s trademark?

Held : The words PALE PILSEN, as part of ABI’s trademark, does not

constitute infringement of SMC’s trademark.

The fact that the words pale pilsen are part of ABI's trademark does not

constitute an infringement of SMC's trademark: SAN MIGUEL PALE PILSEN, for

"pale pilsen" are generic words descriptive of the color ("pale"), of a type of

beer ("pilsen"), which is a light bohemian beer with a strong hops flavor that

originated in the City of Pilsen in Czechoslovakia and became famous in the

Middle Ages. (Webster's Third New International Dictionary of the English

Language, Unabridged. Edited by Philip Babcock Gove. Springfield, Mass.: G &

C Merriam Co., [c] 1976, page 1716.) "Pilsen" is a "primarily geographically

descriptive word," (Sec. 4, subpar. [e] Republic Act No. 166, as inserted by

Sec. 2 of R.A. No. 638) hence, non-registerable and not appropriable by any

beer manufacturer.

The words "pale pilsen" may not be appropriated by SMC for its exclusive use

even if they are part of its registered trademark: SAN MIGUEL PALE PILSEN,

any more than such descriptive words as "evaporated milk," "tomato ketchup,"

"cheddar cheese," "corn flakes" and "cooking oil" may be appropriated by any

single manufacturer of these food products, for no other reason than that he

was the first to use them in his registered trademark

ABI has neither infringed SMC's trademark nor committed unfair competition

with the latter's SAN MIGUEL PALE PILSEN product. While its BEER PALE

PILSEN admittedly competes with the latter in the open market, that

competition is neither unfair nor fraudulent.


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Case 5. MCDONALD’S CORP. v. MACJOY

G.R. NO. 166115, February 2, 2007

MCDONALD’S CORP. v. MACJOY

Facts : On 14 March 1991, MacJoy Fastfood Corporation, a domestic

corporation engaged in the sale of fast food products in Cebu City, filed with

the then Bureau of Patents, Trademarks and Technology Transfer (BPTT), now

the Intellectual Property Office (IPO), an application, thereat identified as

Application Serial No. 75274, for the registration of the trademark “MACJOY &

DEVICE” for fried chicken, chicken barbecue, burgers, fries, spaghetti, palabok,

tacos, sandwiches, halo-halo and steaks under classes 29 and 30 of the

International Classification of Goods. McDonald’s Corporation, a corporation duly

organized and existing under the laws of the State of Delaware, USA, filed a

verified Notice of Opposition against the MacJoy Fastfood Corporation’s

application claiming that the trademark “MACJOY & DEVICE” so resembles its

corporate logo, otherwise known as the Golden Arches or “M” design, and its

marks “McDonalds,” McChicken,” “MacFries,” “BigMac,” “McDo,” “McSpaghetti,”

“McSnack,” and “Mc,” (hereinafter collectively known as the MCDONALD’S

marks) such that when used on identical or related goods, the trademark

applied for would confuse or deceive purchasers into believing that the goods

originate from the same source or origin.

The McDonald Corporation likewise alleged that the MacJoy Fastfood

Corporation’s use and adoption in bad faith of the “MACJOY & DEVICE” mark

would falsely tend to suggest a connection or affiliation with McDonald’s

Corporation’s restaurant services and food products, thus, constituting a fraud

upon the general public and further cause the dilution of the distinctiveness of

McDonald’s Corporation’s registered and internationally recognized

MCDONALD’S marks to its prejudice and irreparable damage.

MacJoy Fastfood Corporation denied the aforementioned allegations of

McDonald’s Corporation and averred that it has used the mark “MACJOY” for

the past many years in good faith and has spent considerable sums of money

for said mark’s extensive promotion in tri-media, especially in Cebu City where

it has been doing business long before McDonald’s Corporation opened its

outlet thereat sometime in 1992; and that its use of said mark would not


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confuse affiliation with McDonald’s Corporation’s restaurant services and food

products because of the differences in the design and detail of the two (2)

marks.

Issue : Whether or not there is a confusing similarity between the

MCDONALD’S marks of the MCDONALD’S CORP and the MCJOY’S “MACJOY

& DEVICE” trademark.

Held : Applying the dominancy test to the instant case, the Court found that

“MCDONALD’S” and “MACJOY” marks are confusingly similar with each other

such that an ordinary purchaser can conclude an association or relation

between the marks.

Both marks use the corporate “M” design logo and the prefixes “Mc” and/or

“Mac” as dominant features. The first letter “M” in both marks puts emphasis

on the prefixes “Mc” and/or “Mac” by the similar way in which they are

depicted i.e. in an arch-like, capitalized and stylized manner. It is the prefix

“Mc,” an abbreviation of “Mac,” which visually and aurally catches the attention

of the consuming public. Most importantly, both trademarks are used in the

sale of fastfood products. Likewise, the MCDONALD’S marks in the Philippines

covers goods which are similar if not identical to those covered by MacJoy

Fastfood Corporation’s application.


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Case 6. Prosource v. Horphag Research

G.R. No. 180073, November 25, 2009

Prosource v. Horphag Research

Facts : Horphag Research Management SA is a corporation duly organized and

existing under the laws of Switzerland and the owner of trademark

PYCNOGENOL, a food supplement sold and distributed by Zuellig Pharma

Corporation. Horphag Research Management SA later discovered that Prosource

International, Inc. was also distributing a similar food supplement using the

mark PCO-GENOLS since 1996. This prompted Horphag Research Management

SA to demand that Prosource International, Inc. cease and desist from using

the aforesaid mark.

Prosource, without notifying Horphag Research Management SA, discontinued

the use of, and withdrew from the market, the products under the name

PCO-GENOLS as of June 19, 2000. It, likewise, changed its mark from

PCO-GENOLS to PCO-PLUS.

On August 22, 2000, Horphag Research Management SA filed a Complaint for

Infringement of Trademark with Prayer for Preliminary Injunction against

Horphag Research Management SA, praying that the latter cease and desist

from using the brand PCO-GENOLS for being confusingly similar with Horphag

Research Management SA’s trademark PYCNOGENOL.

Issue : Whether or not there is confusing similarity between PYCNOGENOL

and PCO-GENOLS.

Held : Under the dominancy test, both the words PYCNOGENOL and

PCO-GENOLS have the same suffix "GENOL" which on evidence, appears to

be merely descriptive and furnish no indication of the origin of the article and

hence, open for trademark registration by the plaintiff thru combination with

another word or phrase such as PYCNOGENOL,

Although the letters "Y" between P and C, "N" between O and C and "S" after


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L are missing in Prosource’s mark PCO-GENOLS, nevertheless, when the two

words are pronounced, the sound effects are confusingly similar not to

mention that they are both described by their manufacturers as a food

supplement and thus, identified as such by their public consumers.

Although there were dissimilarities in the trademark due to the type of letters

used as well as the size, color and design employed on their individual

packages/bottles, still the close relationship of the competing products' name

in sounds as they were pronounced, clearly indicates that purchasers could be

misled into believing that they are the same and/or originates from a common

source and manufacturer

The dominancy test focuses on the similarity of the prevalent features of the

competing trademarks that might cause confusion and deception, thus

constituting infringement. If the competing trademark contains the main,

essential and dominant features of another, and confusion or 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. The question is whether the use of

the marks involved is likely to cause confusion or mistake in the mind of the

public or to deceive purchasers. Courts will consider more the aural and visual

impressions created by the marks in the public mind, giving little weight to

factors like prices, quality, sales outlets, and market segments.


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Case 7. SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP.

G.R. NO. 112012, April 4, 2001

SOCIETE DES PRODUITS NESTLE, S.A. v CA and CFC CORP.

Facts : On January 18, 1984, CFC Corporation filed with the BPTTT an

application for the registration of the trademark “FLAVOR MASTER” for instant

coffee. Societe Des Produits Nestle, S.A., a Swiss company registered under

Swiss laws and domiciled in Switzerland, filed an Opposition, claiming that the

mark of CFC Corporation’s product is confusingly similar to its trademarks

“MASTER ROAST” and “MASTER BLEND” for coffee and coffee extracts.

In answer to the two oppositions, CFC argued that its trademark, FLAVOR

MASTER, is not confusingly similar with the former’s trademarks, MASTER

ROAST and MASTER BLEND, alleging that, “except for the word MASTER, the

other words that are used respectively with said word in the three trademarks

are very different from each other – in meaning, spelling, pronunciation, and

sound”. CFC further argued that its trademark, FLAVOR MASTER, “is clearly

very different from any of Nestle’s alleged trademarks MASTER ROAST and

MASTER BLEND, especially when the marks are viewed in their entirety, by

considering their pictorial representations, color schemes and the letters of

their respective labels.”

Issue : Whether or not the mark FLAVOR MASTER is a confusingly similar to

the trademarks MASTER ROAST and MASTER BLEND.

Held : Yes, FLAVOR MASTER is confusingly similar to MASTER ROAST and

MASTER BLEND.

It must be emphasized that the products bearing the trademarks in question

are “inexpensive and common” household items bought off the shelf by

“undiscerningly rash” purchasers. As such, if the ordinary purchaser is

“undiscerningly rash”, then he would not have the time nor the inclination to

make a keen and perceptive examination of the physical discrepancies in the

trademarks of the products in order to exercise his choice.


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Case 8. FRUIT OF THE LOOM, INC. v. CA and GENERAL GARMENTS CORP.

G.R. No. L-32747, November 29, 1984

FRUIT OF THE LOOM, INC. v. CA and GENERAL GARMENTS CORP.

Facts : FRUIT OF THE LOOM, INC., a corporation duly organized and existing

under the laws of the State of Rhode Island, United States of America, is the

registrant of a trademark, FRUIT OF THE LOOM, in the Philippines Patent Office

and was issued two Certificates of Registration Nos. 6227 and 6680, on

November 29, 1957 and July 26, 1958, respectively. The classes of merchandise

covered are, among others, men's, women's and children's underwear, which

includes women's panties, etc.

GENERAL GARMENTS CORP., a domestic corporation, is the registrant of a

trademark FRUIT FOR EVE in the Philippine Patent Office and was issued a

Certificate of Registration No. 10160, on January 10, 1963 covering garments

similar to the products of FRUIT OF THE LOOM, INC. like women's panties and

pajamas.

On March 31, 1965 FRUIT OF THE LOOM, INC. filed before the lower court, a

complaint for infringement of trademark and unfair competition against GENERAL

GARMENTS CORP.

FRUIT OF THE LOOM, INC. principally alleged in the complaint that the trademark

of GENERAL GARMENTS CORP. ”FRUIT FOR EVE”, is confusingly similar to its

trademark FRUIT OF THE LOOM used also on women's panties and other textile

products. Furthermore, it was also alleged therein that the color get-up and

general appearance of GENERAL GARMENTS CORP’s hang tag consisting of a big

red apple is a colorable imitation to the hang tag of FRUIT OF THE LOOM, INC.

GENERAL GARMENTS CORP. filed an answer invoking the defense that its

registered trademark is not confusingly similar to that of FRUIT OF THE LOOM,

INC. Likewise, GENERAL GARMENTS CORP. stated that the trademark FRUIT

FOR EVE is being used on ladies' panties and pajamas only whereas FRUIT OF

THE LOOM, INC.’s trademark is used even on men's underwear and pajamas.


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Issue : Whether or not the trademark of GENERAL GARMENTS CORP.,FRUIT FOR

EVE is confusingly similar to the trademark of FRUIT OF THE LOOM, INC., FRUIT

OF THE LOOM.

Held : There is no confusing similarity which would deceive buyers. In the

trademarks FRUIT OF THE LOOM and FRUIT FOR EVE, the lone similar word is

FRUIT and by mere pronouncing the two marks, it could hardly be said that it will

provoke a confusion, as to mistake one for the other. Standing by itself, FRUIT

OF THE LOOM is wholly different from FRUIT FOR EVE.

The similarities of the competing trademarks in this case are completely lost in

the substantial differences in the design and general appearance of their

respective hang tags. The trademarks FRUIT OF THE LOOM and FRUIT FOR EVE

do not resemble each other as to confuse or deceive an ordinary purchaser. The

ordinary purchaser must be thought of as having, and credited with, at least a

modicum of intelligence to be able to see the obvious differences between the

two trademarks in question.


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Case 9. Diaz v. People of the Philippines

G.R. No. 180677, February 18, 2013

Diaz v. People of the Philippines

Facts : Levi Strauss Philippines, Inc. (Levi’s Philippines) is a licensee of Levi’s.

After receiving information that Diaz was selling counterfeit LEVI’S 501 jeans in

his tailoring shops in Almanza and Talon, Las Piñas City, Levi’s Philippines hired

a private investigation group to verify the information. Surveillance and the

purchase of jeans from the tailoring shops of Diaz established that the jeans

bought from the tailoring shops of Diaz were counterfeit or imitations of LEVI’S

501. Levi’s Philippines then sought the assistance of the National Bureau of

Investigation (NBI) for purposes of applying for a search warrant against Diaz to

be served at his tailoring shops. The search warrants were issued in due course.

Armed with the search warrants, NBI agents searched the tailoring shops of Diaz

and seized several fake LEVI’S 501 jeans from them. Levi’s Philippines claimed

that it did not authorize the making and selling of the seized jeans; that each of

the jeans were mere imitations of genuine LEVI’S 501 jeans by each of them

bearing the registered trademarks, like the arcuate design, the tab, and the leather

patch; and that the seized jeans could be mistaken for original LEVI’S 501 jeans

due to the placement of the arcuate, tab, and two-horse leather patch.

On his part, Diaz admitted being the owner of the shops searched, but he denied

any criminal liability. Diaz stated that he did not manufacture Levi’s jeans, and that

he used the label “LS Jeans Tailoring” in the jeans that he made and sold; that

the label “LS Jeans Tailoring” was registered with the Intellectual Property Office;

that his shops received clothes for sewing or repair; that his shops offered

made-to-order jeans, whose styles or designs were done in accordance with

instructions of the customers; that since the time his shops began operating in

1992, he had received no notice or warning regarding his operations; that the

jeans he produced were easily recognizable because the label “LS Jeans

Tailoring,” and the names of the customers were placed inside the pockets, and

each of the jeans had an “LSJT” red tab; that “LS” stood for “Latest Style;” and

that the leather patch on his jeans had two buffaloes, not two horses.

Issue : Whether or not Diaz is liable for trademark infringement.


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Held : No. Diaz did not commit trademark infringement.The likelihood of confusion

is the gravamen of the offense of trademark infringement. There are two tests to

determine likelihood of confusion, namely: the dominancy test, and the holistic

test. The contrasting concept of these tests was explained in Societes Des

Produits Nestle, S.A. v. Dy, Jr. (G.R. No. 172276, August 9, 2010), thus:

x x x. The dominancy test focuses on the similarity of the main, prevalent or

essential features of the competing trademarks that might cause confusion.

Infringement takes place when the competing trademark contains the essential

features of another. Imitation or an effort to imitate is unnecessary. The question

is whether the use of the marks is likely to cause confusion or deceive

purchasers.

The holistic test considers the entirety of the marks, including labels and

packaging, in determining confusing similarity. The focus is not only on the

predominant words but also on the other features appearing on the labels.

The holistic test is applicable here considering that the herein criminal cases also

involved trademark infringement in relation to jeans products. Accordingly, the

jeans trademarks of Levi’s Philippines and Diaz must be considered as a whole

in determining the likelihood of confusion between them. The maong pants or

jeans made and sold by Levi’s Philippines, which included LEVI’S 501, were very

popular in the Philippines. The consuming public knew that the original LEVI’S 501

jeans were under a foreign brand and quite expensive. Such jeans could be

purchased only in malls or boutiques as ready-to-wear items, and were not

available in tailoring shops like those of Diaz’s as well as not acquired on a

“made-to-order” basis. Under the circumstances, the consuming public could

easily discern if the jeans were original or fake LEVI’S 501, or were manufactured

by other brands of jeans.

Diaz used the trademark “LS JEANS TAILORING” for the jeans he produced and

sold in his tailoring shops. His trademark was visually and aurally different from

the trademark “LEVI STRAUSS & CO” appearing on the patch of original jeans

under the trademark LEVI’S 501. The word “LS” could not be confused as a

derivative from “LEVI STRAUSS” by virtue of the “LS” being connected to the

word “TAILORING”, thereby openly suggesting that the jeans bearing the

trademark “LS JEANS TAILORING” came or were bought from the tailoring shops


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of Diaz, not from the malls or boutiques selling original LEVI’S 501 jeans to the

consuming public.

Moreover, based on the certificate issued by the Intellectual Property Office, “LS

JEANS TAILORING” was a registered trademark of Diaz. He had registered his

trademark prior to the filing of the present cases. The Intellectual Property Office

would certainly not have allowed the registration had Diaz’s trademark been

confusingly similar with the registered trademark for LEVI’S 501 jeans. Given the

foregoing, it should be plain that there was no likelihood of confusion between the

trademarks involved.


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Case 10. TAIWAN KOLIN CORPORATION, LTD. v. KOLIN ELECTRONICS CO., INC.

G.R. No. 209843, March 25, 2015

TAIWAN KOLIN CORPORATION, LTD. v. KOLIN ELECTRONICS CO., INC.

Facts : On February 29, 1996, Taiwan Kolin filed with the Intellectual Property

Office (IPO), then Bureau of Patents, Trademarks, and Technology Transfer, a

trademark application, docketed as Application No. 4-1996-106310, for the use of

“KOLIN” on a combination of goods, including colored televisions, refrigerators,

window-type and split-type air conditioners, electric fans and water dispensers.

Said goods allegedly fall under Classes 9, 11, and 21 of the Nice Classification

(NCL).

Application No. 4-1996-106310 would eventually be considered abandoned for

Taiwan Kolin’s failure to respond to IPO’s Paper requiring it to elect one class of

good for its coverage. However, the same application was subsequently revived

through Application Serial No. 4-2002-011002, with Taiwan Kolin electing Class 9

as the subject of its application, particularly: television sets, cassette recorder,

VCD Amplifiers, camcorders and other audio/video electronic equipment, flat iron,

vacuum cleaners, cordless handsets, videophones, facsimile machines, teleprinters,

cellular phones and automatic goods vending machine. The application would in

time be duly published.

On July 13, 2006, Kolin Electronics Co., Inc. (Kolin Electronics) opposed Taiwan

Kolin’s revived application, docketed as Inter Partes Case No. 14-2006-00096. As

argued, the mark Taiwan Kolin seeks to register is identical, if not confusingly

similar, with its “KOLIN” mark registered on November 23, 2003, covering the

following products under Class 9 of the NCL: automatic voltage regulator,

converter, recharger, stereo booster, AC-DC regulated power supply, step-down

transformer, and PA amplified AC-DC.

Issue : Whether or not Taiwan Kolin is entitled to its trademark registration of

"KOLIN" over its specific goods of television sets and DVD players.

Held : Yes, identical marks may be registered for products from the same

classification if the goods are not similar nor related.


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Whether or not the products covered by the trademark sought to be registered

by Taiwan Kolin, on the one hand, and those covered by the prior issued

certificate of registration in favor of Kolin Electronics, on the other, fall under the

same categories in the NCL is not the sole and decisive factor in determining a

possible violation of Kolin Electronics’ intellectual property right should Taiwan

Kolin ‘s application be granted.

Emphasis should be on the similarity of the products involved and not on the

arbitrary classification or general description of their properties or characteristics.

The mere fact that one person has adopted and used a trademark on his goods

would not, without more, prevent the adoption and use of the same trademark by

others on unrelated articles of a different kind.

The products covered by Taiwan Kolin’s application and Kolin Electronics’

registration are unrelated. A certificate of trademark registration confers upon the

trademark owner the exclusive right to sue those who have adopted a similar

mark not only in connection with the goods or services specified in the certificate,

but also with those that are related.


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Case 11. UFC PHILIPPINES, INC. (NOW MERGED WITH NUTRI-ASIA, INC.,

WITH NUTRI-ASIA, INC. AS THE SURVIVING ENTITY) v. FIESTA BARRIO

MANUFACTURING CORPORATION

G.R. No. 198889, January 20, 2016

UFC PHILIPPINES, INC. (NOW MERGED WITH NUTRI-ASIA, INC., WITH

NUTRI-ASIA, INC. AS THE SURVIVING ENTITY) v. FIESTA BARRIO

MANUFACTURING CORPORATION

Facts : On April 4, 2002, FIESTA BARRIO MANUFACTURING CORPORATION filed

Application No. 4-2002-002757 for the mark "PAPA BOY & DEVICE" for goods

under Class 30, specifically for "lechon sauce" (liver sauce). The Intellectual

Property Office (IPO) published said application for opposition in the IP Phil.

e-Gazette released on September 8, 2006.

The UFC PHILIPPINES INC. contended that "PAPA BOY & DEVICE" is confusingly

similar with its "PAPA" marks inasmuch as the former incorporates the term

"PAPA”. UFC PHILIPPINES INC. averred that FIESTA BARRIO MANUFACTURING

CORPORATION’s use of "PAPA BOY & DEVICE" mark for its lechon sauce product,

if allowed, would likely lead the consuming public to believe that said lechon

sauce product originates from or is authorized by UFC PHILIPPINES INC. and that

the "PAPA BOY & DEVICE" mark is a variation or derivative of UFC PHILIPPINES

INC.’s "PAPA" marks.

UFC PHILIPPINES INC. argued that this was especially true considering that UFC

PHILIPPINES INC.’s ketchup product and FIESTA BARRIO MANUFACTURING

CORPORATION’s lechon sauce product are related articles that fall under the

same Class 30.

UFC PHILIPPINES INC. alleged that the registration of FIESTA BARRIO

MANUFACTURING CORPORATION’s challenged mark was also likely to damage

UFC PHILIPPINES INC. considering that its former sister company, Southeast Asia

Food, Inc., and the latter's predecessors-in-interest, had been major

manufacturers and distributors of lechon and other table sauces since 1965, such

as products employing the registered "Mang Tomas" mark.


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In its Verified Answer, FIESTA BARRIO MANUFACTURING CORPORATION’s

argued that there is no likelihood of confusion between UFC PHILIPPINES INC ‘s

family of "PAPA" trademarks and FIESTA BARRIO MANUFACTURING

CORPORATION’s "PAPA BOY & DEVICE" trademark.

Issue : Whether or not FIESTA BARRIO MANUFACTURING CORPORATION’s mark

"PAPA BOY & DEVICE" for goods under Class 30, specifically for "lechon sauce”

can be registered.

Held : FIESTA BARRIO MANUFACTURING CORPORATION’s mark "PAPA BOY &

DEVICE" cannot be registered for goods under Class 30.

A scrutiny of ' UFC PHILIPPINES INC. and FIESTA BARRIO MANUFACTURING

CORPORATION’s respective marks would show that the IPO-BLA and the IPO

Director General correctly found the word "PAPA" as the dominant feature of UFC

PHILIPPINES INC ‘s mark "PAPA KETSARAP." Contrary to FIESTA BARRIO

MANUFACTURING CORPORATION’s contention, "KETSARAP" cannot be the

dominant feature of the mark as it is merely descriptive of the product.

Furthermore, it is the "PAPA" mark that has been in commercial use for decades

and has established awareness and goodwill among consumers.

The Supreme Court agreed with the IPO-BLA that the word "PAPA" is the

dominant feature of FIESTA BARRIO MANUFACTURING CORPORATION’s "PAPA

BOY & DEVICE" mark subject of the application, such that "the word 'PAPA' is

written on top of and before the other words such that it is the first word/figure

that catches the eyes.” The Court also noted that the ordinary purchasers will

recall the dominant feature “PAPA” as coming form UFC PHILIPPINES INC.


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Case 12. Daiso Industries Co., LTD. v. Tan

PC No. 14-2012-00365

Opposition to: Appln. Serial No. 4-2012-002507

Date Filed: 29 February 2012

TM: "MY SHOP- ALL

Case Decided by the Intellectual Property Office, Philippines

Daiso Industries Co., LTD. v. Tan

Facts : DAISO INDUSTRIES CO. LTD. ("Opposer") filed an opposition against the

makr "MY SHOP-ALL DAISO" which filed by Ma. Olivia D. Tan

(Respondent-Applicant). Respondent-Applicant’s mark is used for "retail stores or

online stores for household goods, home products, bathwares, electronics,

hardware, kitchenware, general merchandise, management and franchising of

retail services" under Class 35 of the International Classification of Goods and

Services.

Issue : Whether or not the Opposition should be granted.

Held : The mark "MY SHOP-ALL DAISO" should not be granted registration as it

is confusing similar to the mark “DAISO”.

A comparison of the competing marks reproduced below shows that confusion is

likely to occur.

Even with the accompanying words MY, SHOP and ALL, and hyphen (-) in

between SHOP and ALL before the word DAISO, the IPOPH stated that the top

of the mind recall would be the word DAISO. In addition, trademark application


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covers services that are similar and/or closely related to the Opposer's,

particularly, retail stores or retail services under Class 35, it is likely that the

consumers will have the impression that these services originate from single

source or origin.

Public interest therefore requires, that two marks, identical to or closely

resembling each other and used on the same and closely related goods or

services, but utilized by different proprietors should not be allowed to co-exist.

Confusion, mistake, deception, and even fraud, should be prevented.

It is emphasized that the function of trademark is to point out distinctly the origin

or ownership of the goods to which it is affixed; to secure to him, who has been

instrumental in bringing into the market superior article of merchandise, the fruit

of his industry and skill; to assure the public that they are procuring the genuine

article; to prevent fraud and imposition; and to protect the manufacturer against

substitution and sale of an inferior and different article as his product.


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Case 13. SUPERIOR COMMERCIAL ENTERPRISES, INC. v. KUNNAN

ENTERPRISES LTD.

G.R. NO. 169974, April 20, 2010

SUPERIOR COMMERCIAL ENTERPRISES, INC. v. KUNNAN ENTERPRISES LTD.

Facts : Superior Commercial Enterprises, Inc. filed a complaint for trademark

infringement and unfair competition with preliminary injunction against Kunnan

Enterprises Ltd. and Sports Concept & Distributor, Inc. with the Regional Trial

Court.

In support of its complaint, SUPERIOR first claimed to be the owner of the

trademarks, trading styles, company names and business names “KENNEX”,

“KENNEX & DEVICE”, “PRO KENNEX” and “PRO-KENNEX” . Second, it also

asserted its prior use of these trademarks, presenting as evidence of ownership

the Principal and Supplemental Registrations of these trademarks in its name.

Third, SUPERIOR also alleged that it extensively sold and advertised sporting

goods and products covered by its trademark registrations. Finally, SUPERIOR

presented as evidence of its ownership of the disputed trademarks pursuant to a

Distributorship Agreement dated October 1, 1982.

KUNNAN disputed SUPERIOR’s claim of ownership and maintained that

SUPERIOR is mere distributor and fraudulently registered the trademarks in its

name. KUNNAN alleged that it was incorporated in 1972, under the name

KENNEX Sports Corporation for the purpose of manufacturing and selling

sportswear and sports equipment; it commercially marketed its products in

different countries, including the Philippines since 1972. It created and first used

"PRO KENNEX," derived from its original corporate name, as a distinctive

trademark for its products in 1976. KUNNAN also alleged that it registered the

"PRO KENNEX" trademark not only in the Philippines but also in other countries,

and widely promoted the "KENNEX" and "PRO KENNEX" trademarks through

worldwide advertisements in print media and sponsorships of known tennis

players.

Issues : Whether or not KUNNAN committed infringement and/or unfair competition


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Held : KUNNAN did not commit infringement and/or unfair competition as it was

the rightful owner of the mark.

To establish trademark infringement, the following elements must be proven: (1)

the validity of plaintiff’s mark; (2) the plaintiff’s ownership of the mark; and (3) the

use of the mark or its colorable imitation by the alleged infringer results in

“likelihood of confusion.”

The Supreme Court stated that SUPERIOR COMMERCIAL ENTERPRISES was not

the proper owner of the mark since SUPERIOR COMMERCIAL ENTERPRISES was

a mere distributor of the true owner.


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Case 14. MCDONALDS CORPORATION v. L.C BIG MAK BURGER.

G.R. No. 143993, August 18, 2004

MCDONALDS CORPORATION v. L.C BIG MAK BURGER.

Facts : L.C. Big Mak Burger tried to register the mark “BIG MAK” and engaged

in the sale and distribution of burgers and other food products bearing the brand

“BIG MAK” in the Philippine market.

McDonalds also filed an Opposition case with the IPOPHL and at the same time

filed a trademark infringement and unfair case with the Regional Trial Court.

McDonalds also filed a request for temporary restraining order and injuction in the

Regional Trial Court to stop L.C. Big Mak Burger from using the “BIG MAK” in the

market.

McDonalds’ argument was that the mark “BIG MAK” is confusingly similar to its

internationally well-known trademark “BIG MAC” which is used for burgers.

The Regional Trial Court granted the injunction and held that L.C. Big Mak Burger

was liable for trademark infringement and unfair competition.

L.C. Big Mak Burger appealed the decision of the Regional Trial Court to the Court

of Appeals. The Court of Appeals reversed the decision of the Regional Trial Court

and held that there was no confusion.

Issues : Whether or not McDonalds is entitled to injuctive relief

Whether or not the use of the mark “BIG MAK” constitutes trademark

infringement.

Held : The Supreme Court held that the use of the mark constitutes trademark

infringement and unfair competition. In holding L.C. Big Mak Burger, the Court

held that the use of the “BIG MAK” mark was calculated to deceive the public into

believing that the goods and business of McDonalds is related to the goods and

business of L.C. Big Mak Burger, to wit:

Applying the dominancy test, the Court finds that respondents' use of the "Big

Mak" mark results in likelihood of confusion. First, "Big Mak" sounds exactly the

same as "Big Mac." Second, the first word in "Big Mak" is exactly the same as


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the first word in "Big Mac." Third, the first two letters in "Mak" are the same as

the first two letters in "Mac." Fourth, the last letter in "Mak" while a "k" sounds

the same as "c" when the word "Mak" is pronounced. Fifth, in Filipino, the letter

"k" replaces "c" in spelling, thus "Caloocan" is spelled "Kalookan."

In short, aurally the two marks are the same, with the first word of both marks

phonetically the same, and the second word of both marks also phonetically the

same. Visually, the two marks have both two words and six letters, with the first

word of both marks having the same letters and the second word having the

same first two letters. In spelling, considering the Filipino language, even the last

letters of both marks are the same.

Clearly, respondents have adopted in "Big Mak" not only the dominant but also

almost all the features of "Big Mac." Applied to the same food product of

hamburgers, the two marks will likely result in confusion in the public mind.xxx

Absent proof that respondents' adoption of the "Big Mak" mark was due to honest

mistake or was fortuitous, the inescapable conclusion is that respondents adopted

the "Big Mak" mark to "ride on the coattails" of the more established "Big Mac"

mark. This saves respondents much of the expense in advertising to create

market recognition of their mark and hamburgers.

The Supreme Court also reinstated the injunction issued by the RTC and held that

a party who is able to successfully prove trademark infringement or unfair

competition is entitled to injuctive reliefs.

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ⅦTrademark related Government office and organization

Chapter Ⅶ. Trademark related Government office and organization

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1. Securities and Exchange Commission24)

Tasked with the registration and regulation of companies, including

business names. The Securities and Exchange Commission (SEC) or the

Commission is the national government regulatory agency charged with

supervision over the corporate sector, the capital market participants, and the

securities and investment instruments market, and the protection of the investing

public.25)

Address : Secretariat Building, PICC Complex, Roxas Boulevard, Pasay City,

1307

Public Assistance : [email protected]

- Change of Corporate Name, Business Purpose, Principal Office Address and Other Ordinary Amendments to the Articles of Incorporation and Bylaws : [email protected]

Contact No. : 8818-0921

- Company Registration and Monitoring Department: 8818-5811 / 8818-5319 (local extension 212)

Website: https://www.sec.gov.ph/ and https://www.sec.gov.ph/contact-us/

2. Department of Trade and Industry (DTI)26)

DTI is “the primary coordinative, promotive, facilitative and regulatory arm

of the Executive Branch of government in the area of trade, industry and

investments. It shall promote and develop an industrialization program effectively

controlled by Filipinos and shall act as catalyst for intensified private sector activity

in order to accelerate and sustain economic growth through: (a) comprehensive

industrial growth strategy, (b) a progressive and socially responsible liberation

program, (c) policies designed for the expansion and diversification of trade, and

(d) policies to protect Filipino enterprises against unfair foreign competition and

24) https://www.sec.gov.ph/

25) https://www.sec.gov.ph/about-us/mandate-mission-values-and-vision-2/

26) https://www.dti.gov.ph/

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trade practices.”27) DTI is tasked with the registration of tradenames and

registration of sole proprietorship and partnerships

Address : Trade & Industry Building, 361 Sen. Gil J. Puyat Ave., 1200 Makati

City, Philippines

Email : [email protected]

Contact No. : (Telephone) 1-DTI (384) / (Mobile) 0917.834.3330

Business Name Registration: https://bnrs.dti.gov.ph/

3. Intellectual Property Office of the Philippines (IPOPHL)28)

The IPOPHL is the government agency tasked to administer and

implement the State policy, laws, rules and regulations on Intellectual Property and

to strengthen the protection and enforcement of Intellectual Property Rights in the

country.29)

Address : Intellectual Property Center, #28 Upper McKinley Road, McKinley

Hill Town Center, Fort Bonifacio, Taguig City 1634 Philippines

Email : General information – [email protected]

Bureau of Trademarks – [email protected]

Documentation, Information, & Technology Transfer Bureau -

[email protected]

Contact No. : +63 (2) 7238-6300

- Public Information Desk Local : 5405, 5406

Website : https://www.ipophil.gov.ph/services/trademark/

4. Department of Justice30)

The Department of Justice (DOJ) is the “principal law agency which shall

be both its legal counsel and prosecution arm; (mandated to) administer the

27) Section 2, Chapter 1, Title X, Book IV, Executive Order No. 292 (or the Administrative Code of 1987)

28) See https://www.ipophil.gov.ph/contact-main-office/, last visited 17 November 2020

29) See https://www.ipophil.gov.ph/mandate-function/, last visited 28 August 2020.

30) https://doj.gov.ph/index.html

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criminal justice system in accordance with the accepted processes thereof

consisting in the investigation of the crimes, prosecute offenders and

administration of the correctional system; implement the laws on the admission

and stay of aliens, citizenship, land titling system, and settle of land problems

involving small landowners and members of indigenous cultural minorities; and

provide free legal services to indigent members of the society.”31) The DOJ heads

the prosecution Intellectual Property related criminal cases.

Address : Padre Faura Street, Ermita, Manila 1000, Republic of the Philippines


Contact No. : (+632) 8523 8481 to 98

5. Philippine National Police32) and National Bureau of Investigation33)

Philippine National Police and National Bureau of Investigation are tasked

with the investigation of possible criminal activities relating to trademarks. They

may also be tasked to assist other government agencies in the IP enforcement.

(Philippines National Police)

Address : Directorate for Police Community Relations, PNP NHQ Camp

General Crame, Quezon City, Metro Manila. Philippines 1100

Email : [email protected] / [email protected]

Contact No. : +632 723-0401, 8897-8904, 8895-3246

(National Bureau of Investigation)

Address : NBI Building, Taft Avenue, Ermita Manila, Philippines 1000


Contact No. : 5223 8231 to 38

31) Section 1, Chapter 1, Title III, Book IV, Executive Order No. 292 (or the Administrative Code of 1987)

32) http://www.pnp.gov.ph/index.php/office-of-the-ex-officio/contact-us

33) https://nbi.gov.ph/contact-us/


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6. Bureau of Customs34)

The Bureau of Customs (BOC) is a government agency under the

Department of Finance. The Bureau of Customs supervises the country's principal

ports of entry and is composed of the following offices: Internal Administration Group,

Revenue Collection Monitor Group, Assessment and Operations Coordination

Group, Intelligence Group, Enforcement Group, Management Information System

and Technology Group, Post Clearance Audit Group, and Collection Districts.35)

The Bureau of Customs is tasked with checking incoming goods which

may be infringing goods bearing a Philippine registered trademark. Any person

may submit his or her registered trademark with the Bureau of Customs’ watch

list subject to fees.

Address : Customer Assistance & Response Service (BOC-Cares), G/F

OCOM Building, 16th Street, South Harbor, Port Area, Manila


Contact No. : (Hotline) 632) 705-6000 (Mobile) 0905-299-7977, 0929-503-5138

7. Bureau of Food and Drugs or the Food and Drug Administration36)

The Food and Drug Administration (FDA), formerly the Bureau of Food and

Drugs, is an regulatory Office under the Department of Health “mandated to

ensure the safety, efficacy or quality of health products as defined by Republic Act

No. 9711 or the Food and Drug Administration (FDA) Act of 2009, which include

food, drugs, cosmetics, devices, biologicals, vaccines, in-vitro diagnostic reagents,

radiation-emitting devices or equipment, and household/urban hazardous

substances, including pesticides and toys, or consumer products that may have an

effect on health which require regulations as determined by the FDA.”37) The FDA

no longer has regulatory powers when it comes to confusing similarity of marks,

however, all medicines including their brand names must be registered with the FDA.


Contact No. : 0956-4518341 / 0961-6804447

34) https://customs.gov.ph/

35) See https://customs.gov.ph/offices/, last visited 28 August 2020.

36) http://www.fda.gov.ph/

37) See https://ww2.fda.gov.ph/index.php/about-food-and-drug-administration, last visited 28 August 2020.

Chapter

ⅧFrequent FAQ

Chapter Ⅷ. Frequent FAQ

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1. What is the risk of using a brand name without registering a trademark?

Registering the brand name ensures that third parties will be prevented

from using an identical or confusingly similar mark in the future in the Philippines.

2. A trademark that includes words in a Korean language other than

English/Tagalog letter or character can be protected?

Yes, Korean characters are protected in the Philippines. Please note that

the IPOPHL will require a translation and transliteration of the Korean language.

3. Reason to file trademark in the Philippines, if I already registered

trademark in Korea.

Trademark is territorial in nature, generally, this means that your Korean

trademark will not be honored in the Philippines.

4. If a trademark is not used for a certain period of time, will the

trademark registration be cancelled?

Yes, failure to use the mark in the Philippines without justifiable reason

will mean the removal of the mark from the trademark registry upon the lapse of

the period to file the Declaration of Actual Use. (see discussion on Declaration of

Actual Use to know when to submit the DAU)

5. When can I use the trademark symbols TM, SM, and ®?

You may only use the “Registered Mark" and ®, if your mark is registered

in the Philippines. However, imported goods are allowed to bear the TM, SM, and

® stamps as long as the goods bearing the stamps are actually and effectively

registered in the country of origin.

Please note that Philippine trademark law does not recognize TM and SM

a valid trademark registration symbols.

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6. For the renewal of a trademark, is there any remedy if the renewal

fee is not paid within a certain period?

The request for renewal must be made within six (6) months before the

expiration of the period for which the registration was issued or renewed, or

within six (6) months after such expiration, subject to the payment of the

prescribed additional fee or surcharge.

Request for renewal, including any payment after the periods above will

NOT BE ACCEPTED.

7. Is there a way to use/protect my trademark if another person has

registered the trademark first?

You may file an Opposition or Cancellation case arguing any of the

following:

The third person filed the trademark in bad faith

What are considered trademarks filed in bad faith?

Distributor filed in behalf of application without consent or knowledge of the

Licensor / Manufacturer

Third party filed an almost identical mark even though he knew of the

existence of your mark.

Third party filed the mark fraudulently

The third person’s mark is identical or confusing to an internationally

well-known trademark not filed in the Philippines

Assuming you are not interested in filing an Opposition or

Cancellation case in the Philippines. Philippine law allows prior users in

good faith to continue on with the use of the mark in the Philippines.

However, The prior users right may only be transferred or assigned

together with his enterprise or business or with that part of his enterprise

or business in which the mark is used.


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8. Is there a way to cancel the registered trademark when someone

registered the trademark first?

Yes, you may file a cancellation case in any of the following circumstances:

The third person filed the trademark in bad faith

What are considered trademarks filed in bad faith?

Distributor filed in behalf of application without consent or knowledge of the

Licensor / Manufacturer

Third party filed an almost identical mark even though he knew of the

existence of your mark.

Third party filed the mark fraudulently

The third person’s mark is identical or confusing to an internationally

well-known trademark not filed in the Philippines

The registered mark is generic or customary mark

Within “5” years from registration, you may file a Cancellation case based

on previously filed or registered identical or confusing similar mark.

The registered of the mark is identical or similar to a prior registered trade name

If the petitioner believes he will be damaged by the registration of the mark

in some other way.

Mark is used in a fraudulent or unfair manner

Third party filed the mark as a trademark squatter

9. How can the asset value of a trademark be measured?

In order to know the asset value of a trademark, an IP valuation must be

conducted IP valuation uses a myriad to factors, such as financial standing, sales,

etc, to estimate the value of the trademark.

Due to the cost in employing IP valuators, IP valuation is not recommended

for small and medium enterprises.


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10. Does parallel importation of genuine products constitute trademark

infringement in the Philippines?

The law on trade marks in the Philippines, Section 166 of Republic Act

8293, the Intellectual Property Code (IP Code), allows the importation of

merchandise that are genuine products, sourced from the owner and registrant of

the brand that the product bears.

In Yu v Court of Appeals 217 SCRA 329, the exclusive distributor of

House of Mayfair wallcovering products in the Philippines brought

proceedings against his former goods dealer, Unisia Merchandising Co.

They had purchased merchandise from the House of Mayfair in England

and sold it in the Philippines. The Supreme Court ruled:

Injunction is the appropriate remedy to prevent a wrongful interference

with contracts by strangers. Although its liability does not emanate from

the four corners of the contract establishing the exclusive license

agreement, in respect of which Unisia is not a party, its accountability is

an independent act generative of civil liability … To our mind, the right to

perform an exclusive distributorship agreement and to reap the profits

resulting from such performance are proprietary rights which a party may

protect, which otherwise may not be diminished, may be rendered illusory

by the expedient act of utilizing or interposing a person or firm to obtain

goods from the supplier to defeat the very purpose for which the

exclusive distributorship was conceptualized, at the expense of the sole

authorized distributor.

This does not necessarily mean that when a trade mark owner appoints

an exclusive licensee or distributor to market his products in the

Philippines and a person other than the exclusive licensee or distributor

imports the products, that person is liable for damages. The court must

find that fraud or deceit is present. In Yu v Court of Appeals , the court

found: that the House of Mayfair in England was duped into believing that

the goods ordered by the defendant were to be shipped to Nigeria only,

but the goods were actually sent to and sold in the Philippines. A ploy of

this character is akin to the scenario of a third person who induces a party

to renege or violate his undertaking under a contract thereby entitling the

offended part to legal relief (Article 1314, New Civil Code).


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In Solid Triangle Sales Corp v The Sheriff of RTC Quezon City, Branch 93,

370 SCRA 509, a criminal action for unfair competition was brought by

Solid Triangle, the exclusive distributor of Mitsubishi Corporation of Japan,

against Sanly Corporation, the importer of Mitsubishi photographic paper,

under the law on trade marks. The court dismissed the action because

Sanly Corporation did not pass off the Mitsubishi photographic paper it

was selling as the product of another company. Solid Triangle in fact

admitted that the goods Sanly Corporation sold were genuine Mitsubishi

photographic paper.

The trademark law allows the parallel importation of drugs and medical

goods, but the goods are subject to the requirements of the Food, Drug

and Cosmetics Law before they can be sold to the public. Although

imported drugs are genuine, it is vital for them to comply with these

requirements, particularly registration with the Bureau of Food and Drugs.

Otherwise they cannot be sold to consumers. The Special Law on

Counterfeit Drugs, Republic Act 8203, classifies as counterfeit an

unregistered imported drug.

11. When using a trademark, what is a consideration to avoid an

infringement warning from others?

In order to minimize the risk of receiving infringement warning from

others, the before entering the Philippine market, it is best to conduct a due

diligence search for trade names and brands similar, whether registered or not, to

your trade name or brand of goods or services.

If you already have a registered trademark, the chances of receiving an

infringement warning from others is very minimal.

12. If a warning letter has been received or a lawsuit has been filed that the

trademark of another person is infringed, what countermeasures are there? Also,

what disadvantages would there be if the warning letter was left unattended?

Due to the varying factual nature of each case, the appropriate countermeasures

to be taken would vary.


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If a warning letter or lawsuit is received, it would be best to consult a

lawyer on the appropriate measures to be taken.

13. What action can be taken if I found someone is using the same

or similar trademark as mine?

After consulting with a lawyer, the lawyer will usually recommend the

following actions:

Send a demand letter asking the person to cease and desist from using the mark

[File an Opposition or Cancellation case

14. I applied for a trademark, but it's not registered yet. If I found

that a third party is using my trademark without a permission, is

there a way to exercise my rights before registration?

General rule is that you may not exercise your trademark rights before

registration. However, you exercise rights pertaining to unfair competition.

In unfair competition cases, you must prove that the use of the mark by

the third party is done in bad faith. Example, the third party employs tactics to

pass of his goods or services as coming from you.

15. If I produce products at a factory in the Philippines and export

them to a third country, do I need to register a trademark in the

Philippines?

No, Philippine trademark law is only considered with goods and services

for Philippine consumption.

16. Is it possible to register a brand that includes a specific area

name in the Philippines?

Yes, see discussion on location/ geographical origin Absolute grounds.


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17. Is it necessary to register not only the products and services

currently in use, but also the products and services that are likely

to be used in the future at the time of application?

Yes, we recommend registering also goods and services which will be

likely be used in the future and already pertain to the same Nice class.

18. If my company address or personal address is changed, should I

apply for an amendment?

If the personal address or company address is changed, you must apply

for change of name/address with the IPOPHL.

19. The current trademark category(goods and services) and the trademark

category(goods and services) on the registration certification do

not match completely. Do I have to apply for a trademark again?

No, you may ask the IPOPHL to issue a a correct certificate of

registration.

Please note that the IPOPHL adopts the latest Nice classification and

automatically reclassify the goods and services upon the renewal of the mark.

20. How do I proceed with appeals if I get rejected from the trademark

registration?

You may file a petition or a notice of appeal to the Director of the Bureau

of Trademarks. If the petition is not granted, you may file appeal the ruling of the

Director of the Bureau of Trademarks with the Director General.

21. How to judge the similarity of the Korean trademark?

Aside from the requirement of translation and transliteration, Korean

trademarks are judged similarly to English trademarks.


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22. How to judge the similarity of the English trademark?

Similarity of trademarks are judged using either the Dominancy or Holistic

test.

The dominancy test focuses on "the similarity of the prevalent or

dominant features of the competing trademarks that might cause

confusion, mistake, and deception in the mind of the purchasing public.

Duplication or imitation is not necessary; neither is it required that the

mark sought to be registered suggests an effort to imitate. Given more

consideration are the aural and visual impressions created by the marks

on the buyers of goods, giving little weight to factors like prices, quality,

sales outlets, and market segments."

On the other hand, the holistic or totality test necessitates a

"consideration of the entirety of the marks as applied to the products,

including the labels and packaging, in determining confusing similarity.

The discerning eye of the observer must focus not only on the

predominant words, but also on the other features appearing on both

labels so that the observer may draw conclusion on whether one is

confusingly similar to the other." (Wilton Dy v. PHILIPS ELECTRONICS

G.R. No. 186088, March 22, 2017)

23. Is it possible to add the category(goods or services) after

registering the trademark?

No, you may not add goods or services after registration.

24. Can I apply for a trademark directly without hiring a lawyer?

Yes, you may apply for trademark directly without a lawyer. However, if

you are not a resident of the Philippines you are required to appoint a Philippine

resident agent.

KOTRA자료 20-230


발 행 인 : 권 평 오

발 행 처 : KOTRA (해외지재권실, 마닐라무역관(IP-DESK))

발 행 일 : 2020년 12월

주 소 : (06792) 서울시 서초구 헌릉로 13

전 화 : 02-3460-3357

홈페이지 : www.kotra.or.kr

저 자 : Neptali L. Bulilan 변호사Romeo B. Fortea 변호사Sapalo Velez Bundang & Bulilan Law Offices

ISBN979-11-6490-552-2 (93320)979-11-6490-553-9 (95320)(PDF)

Copyright ⓒ by KOTRA, All rights reserved.

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12. [마닐라] Trademark Guidebook of the Philippines.hwp

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