IPAP NEWSLETTER MARCH 2017 - Intellectual Property ...

IPAP NEWSLETTER MARCH 2017

Intellectual Property Association of the PhilippinesPromote and Protect Intellectual Property Rights

Intellectual Property Association of the Philippines Property Rights

[email protected] www.ipap.org.ph PHOTO BY DAVID RAGUSA



Internal Vice-President Media Relations OfficerExternal

Assistant Treasurer

Assistant Secretary

Protocol Officer

BOARD OF DIRECTORS


EXECUTIVE OFFICERS 2016- 2017

President Arturo T. Del Rosario, Jr. President Media Relations Officer Maria Trinidad P. Villareal

External Vice-President Enrique T. Manuel Treasurer C. Risel G. Castillo-Taleon

Assistant Treasurer Maria Teresa M. Trinidad Secretary Abelaine T. Alcantara

Assistant Secretary Dennis R. Gorecho Auditor Augusto S. San Pedro

Protocol Officer Dino Vivencio A. Tamayo

BOARD OF DIRECTORS Chairman:

Pablo M. Gancayco

Members: Alonzo Q. Ancheta

Antonio Audie Z. Bucoy Arturo T. Del Rosario, Jr.

Katrina V. Doble Rico V. Domingo

Alex Ferdinand S. Fider Lorna Patajo-Kapunan

Enrique T. Manuel Augusto S. San Pedro, Sr.

Joaquin V. Sayoc C. Risel G. Castillo-Taleon Dino Vivencio A. Tamayo Maria Trinidad P. Villareal Carlos Paulo M. Villaruz

Office Secretary:

Hazel Anne B. Ordoñez

[email protected] www.ipap.org.ph



IPOPHL Memorandum Circular 16Background On 29 November 2016, in the exercise processing of an application for a patent, utility model or industrial design or a mark or a collective mark, geographic indication and other marks of ownership, and for all other services perffurnished by the Office,"' the Director General of the Intellectual Property Office (Memorandum Circular No. 16-012 ("MC 1616-012 set out the Revised Fee Structure of 2017 rates (01January 2017, after publication in a newspaper of general circulation.' It was published in the Daily Inquirer on 02 December 2016. The fee structure of the IPO was last urationalize and streamline the IPO fee structure, and for the following 1. address inflation and rising operational costs and expenses;2. support additional mandates and service3. reduce or abolish redundant fees. Applicability af the Revised Fees The Revised Fees were in effect as of 2017 will be based on the old rates, while those that fall due on or after 01 January 2017 are based on the new rates, except in the following cases: 1. If an extension to pay has been granted prior to 01 January 2017 and the due date falls on or after

01January 2017, the old fees apply; or2. if the payment is due prior to 01 January 2017, but the due date falls on a Sunday, Saturday, holiday or a

non-working day, and the next working day falls on or after 01January 2017, the old fees apply (this second proviso is already moot).'

As an exception to the above exceptions, if an applicant or party paying as a small entity or youth filer, is assessed due to failure to file proof or evidence confirming status as small entity or youth filer, as provided in Sections 5.44 and S.Ss. of MC 016-2012, the new rates will apply even if the prior payment was made, or extension to pay was granted, prior to 01 January 2017.6

1 Section 7, Republic Act No. 8293 or the Intellectual Property Code of the Philippines ("/P Code")2 Section 26, MC 16-012. 3 Section 22, MC 16-012. 4 15.4 An applicant or party paying as small entity may be required to submit proof or evidence confirming registration, finality of decision, or release of documents if the request is not subject of a patent, utility model, industrbefore the Office. Failing so, the IPOPHL shall assess the party and no document shall be released without the party paying the assessed amount.


IPOPHL Memorandum Circular 16-012

On 29 November 2016, in the exercise of her power for the "establishment of fees for the filing and processing of an application for a patent, utility model or industrial design or a mark or a collective mark, geographic indication and other marks of ownership, and for all other services perffurnished by the Office,"' the Director General of the Intellectual Property Office (

"MC 16-012"), as approved by the Secretary of Trade and Industry. MC Structure of 2017 rates ("Revised Fees") and was made effective as of

01January 2017, after publication in a newspaper of general circulation.' It was published in the

The fee structure of the IPO was last updated in January 2004. Thus, the Revised Fees were promulgated to rationalize and streamline the IPO fee structure, and for the following urgent reasons:

address inflation and rising operational costs and expenses; support additional mandates and services, and other developmental programs/projects and

The Revised Fees were in effect as of 01 January 2017. Thus, fee payments that fell due before 01 January on the old rates, while those that fall due on or after 01 January 2017 are based on the

new rates, except in the following cases:

If an extension to pay has been granted prior to 01 January 2017 and the due date falls on or after fees apply; or

t is due prior to 01 January 2017, but the due date falls on a Sunday, Saturday, holiday or a working day, and the next working day falls on or after 01January 2017, the old fees apply (

).'

As an exception to the above exceptions, if an applicant or party paying as a small entity or youth filer, is assessed due to failure to file proof or evidence confirming status as small entity or youth filer, as provided

2012, the new rates will apply even if the prior payment was made, or extension to pay was

Section 7, Republic Act No. 8293 or the Intellectual Property Code of the Philippines ("/P Code")

15.4 An applicant or party paying as small entity may be required to submit proof or evidence confirming such status at any time prior to the grant, registration, finality of decision, or release of documents if the request is not subject of a patent, utility model, industrial design, trademark or case filed

ess the party and no document shall be released without the party paying the assessed amount.


of her power for the "establishment of fees for the filing and processing of an application for a patent, utility model or industrial design or a mark or a collective mark, geographic indication and other marks of ownership, and for all other services performed and materials furnished by the Office,"' the Director General of the Intellectual Property Office ("/PO")1 promulgated

), as approved by the Secretary of Trade and Industry. MC ) and was made effective as of

01January 2017, after publication in a newspaper of general circulation.' It was published in the Philippine

pdated in January 2004. Thus, the Revised Fees were promulgated to

s, and other developmental programs/projects and advocacies;

. Thus, fee payments that fell due before 01 January on the old rates, while those that fall due on or after 01 January 2017 are based on the

If an extension to pay has been granted prior to 01 January 2017 and the due date falls on or after

t is due prior to 01 January 2017, but the due date falls on a Sunday, Saturday, holiday or a working day, and the next working day falls on or after 01January 2017, the old fees apply (NOTE:

As an exception to the above exceptions, if an applicant or party paying as a small entity or youth filer, is assessed due to failure to file proof or evidence confirming status as small entity or youth filer, as provided

2012, the new rates will apply even if the prior payment was made, or extension to pay was

status at any time prior to the grant, ial design, trademark or case filed

ess the party and no document shall be released without the party paying the assessed amount.



Overview of Revised fees As a general statement, the Revised Fees indicate an upward trend of up to 20"Ai, prescribed for Big Entities. On the other hand, the range of increase for the fees prescribed for Small Entities varies, but none exceed 20"Ai. Notably, the range of increase in the fees for Small Entities are grouped around the 15% range. The following tables illustrate the trend in the case of filing fees and routine transactions:

Filing Fee for:

2004 rates (in

Small Big

Patents (Invention) 1,800

Patents (UM and ID) 1,500

Trademarks 1,080

Invention Potent Transactions (Pre-Examination)

Type of Fee:

2004 rates

(in PhP)

Small Big

For each claim in

excess of five (5)

150

Request for right of priority

900

1,800

Request for Extension of Time to File Priority

Documents

650

1,300

Divisional 1,800 3,600

5 5.5 A youth filer shall pay fees at the rate listed under the column "SMALL". When the schedule provides for a single rate, tfiler shall pay only fifty percent (SO%) of the prescribed fee. This applies to all the fees in connection with the application and, if registered, the maintenance, extension or renewal of registration and all the fees in connection with any case before the OffBureau where the application, or if already registered, the registered intellectual property is directiy involved; Provided that ownerthe application or registration remains with the youth fileri Provided, Further, that in case of any assignment, transfer ochange in the owner of the application or registration, the age requirement specified above is met by all the subsequent assitransferees, or additional applicants or registrants. Subject to the conditions under Section 5.4, aapplication by submitting a statement that he is a group, all of them shall, individually or together,6 Section 22, MC 16-012 7 Amount of change


As a general statement, the Revised Fees indicate an upward trend of up to 20"Ai, prescribed for Big Entities. On the other hand, the range of increase for the fees prescribed for Small Entities varies, but none exceed 20"Ai. Notably, the range of increase in the fees for Small Entities are grouped

The following tables illustrate the trend in the case of filing fees and routine transactions:

(in PhP) 2017 rates (in PhP) 6.72 (in PhP)

Big Small Big Small Big

3,600 2,000 4,320 200 720

3,000 1,720 3,600 220 600

2,160 1,200 2,592 120 432

Examination)

rates

PhP)

2017 rates

(in PhP)

6. (in PhP)


300

180

360

30

60

1,800

1,000

2,160

100

360

1,300

740

1,560

90

260

3,600 2,000 4,320 200 720

5.5 A youth filer shall pay fees at the rate listed under the column "SMALL". When the schedule provides for a single rate, ty percent (SO%) of the prescribed fee. This applies to all the fees in connection with the application and, if

registered, the maintenance, extension or renewal of registration and all the fees in connection with any case before the Offere the application, or if already registered, the registered intellectual property is directiy involved; Provided that owner

the application or registration remains with the youth fileri Provided, Further, that in case of any assignment, transfer ochange in the owner of the application or registration, the age requirement specified above is met by all the subsequent assi

additional applicants or registrants.

a youth filer may claim to pay the rates as provided above or she has not reached his or her twenty-second (22nd)

together, submit the statement.


As a general statement, the Revised Fees indicate an upward trend of up to 20"Ai, especially for the fees prescribed for Big Entities. On the other hand, the range of increase for the fees prescribed for Small Entities varies, but none exceed 20"Ai. Notably, the range of increase in the fees for Small Entities are grouped

The following tables illustrate the trend in the case of filing fees and routine transactions:

6.%

Small Big

11.11% 20%

14.67% 20";6

11.11% 20%

6.%

Small Big

20";6

20%

11.11%

20%

13.85%

20%

11.11% 20%

5.5 A youth filer shall pay fees at the rate listed under the column "SMALL". When the schedule provides for a single rate, the youth y percent (SO%) of the prescribed fee. This applies to all the fees in connection with the application and, if

registered, the maintenance, extension or renewal of registration and all the fees in connection with any case before the Offtce or any ere the application, or if already registered, the registered intellectual property is directiy involved; Provided that ownership of

the application or registration remains with the youth fileri Provided, Further, that in case of any assignment, transfer or any other change in the owner of the application or registration, the age requirement specified above is met by all the subsequent assignees,

above at the time of filing the (22nd) birthday. If the youth filer



Application (for each

division)

Conversion From

Utility Model to Invention

600

1,200

Early Publication: Request for

publication before the expiration of 18

months from filing date or priority date

5,550

5,550

Publication Fee 800

Utility Model and Industrial Design (Pre

Type of Fee:

2004 rate (in PhP)

Small Big

For each sheet in

excess of thirty {30)

15

30

For each claim in

excess of five (5) in

Utility Model

100

200

For each

embodiment in

excess of one (1) in

Ind. Design

750

1,500

Request for right of

priority

750

1,500

Divisional

Application (for each

division)

1,500

3,000

Conversion From Invention to Utility

Model

275

550


1,200

690

1,440

90

240

5,550

6,600

6,600

1050

1050

800 920 960 120 160

Utility Model and Industrial Design (Pre-Examination)

2004 rate (in PhP)

2017 rates (in PhP)

f1 (in PhP)


30

18

36

3

6

200

120

240

20

40

1,500

860

1,800

110

300

1,500

860

1,800

110

300

3,000

1,720

3,600

220

600

550

330

660

55

110


15%

20%

18.92%

18.92%

15% 20%

!1%

Small Big

20%

20%

20%

20%

14.67%

20%

14.67%

20%

14.67%

20%

20%

20%



Trademarks(Pre-Examination)

Type of Fee:

2004

(in PhP)

Small

Priority claim 750

Claim of Color 250

Request for priority

exam

2600

However, this trend is not applied across the board. In some cases, the old fees are retained, as in the case of 1" assignments from Small to Big Entities (for both applications and subsisting registrations, across all IP matters), motions for extensions in inter partesOrganizations. In the case of applications for deposit of copyrightable works, the Revised fees generally retained the old fees for Big Entities, but indicated a reduction in the fees for sm Copyright

Type of Fee:

2004

Small

Deposit- Manila 625

Deposit- Regions 750

Deposit- Bulk (per

certificate)

200

Amendment/Correction of Certificate - Manila

625

Amendment/Correction of

Certificate - Region

625

Amendment/Correction of

Certificate- Bulk

625


2004 rates

PhP) 2017 rates

(in PhP)

!'.(in PhP)


1500 860 1800 110 300

500 280 600 30 100

5200

2990

6240

390

1040

However, this trend is not applied across the board. In some cases, the old fees are retained, as in the case of 1" assignments from Small to Big Entities (for both applications and subsisting registrations, across all IP

inter partes cases, and fees relating to Collective Management

In the case of applications for deposit of copyrightable works, the Revised fees generally retained the old fees for Big Entities, but indicated a reduction in the fees for small entities, thus:

2004 rates

(in PhP) 2017 rates

(in PhP)

!'.(in PhP)

Small Big Small Big Small Big

625 625 450 625 -175 0

750 750 550 750 -200 0 -

200

200

200

200

0

0

625

625

200

625

-425

0

625

625

300

750

-325

125

625

625

100

200

-525 -425


!'.%

Small Big

14.67% 20",6

12% 20%

15%

20%

However, this trend is not applied across the board. In some cases, the old fees are retained, as in the case of 1" assignments from Small to Big Entities (for both applications and subsisting registrations, across all IP

cases, and fees relating to Collective Management

In the case of applications for deposit of copyrightable works, the Revised fees generally retained the old fees

!'.%

Small Big

-28% 0%

-26.67% 0%

()",{;

0%

-68%

0%

-52%

20%

-84%

-68%



New Fees The Revised Fees prescribed new fees for the following transactions: Voluntary Licensing, Information and Search Services

Type of Fee:

Clearance prior to Recorda! ofTTA

Patent Mapping

Patent (Invention)

Type of Fee:

Early substantive examination

Revival Fee for non-payment of 1st

Request for accelerated substantive

Accelerated substantive examination

Trademarks

Type of Fee:8

Madrid- Application for Renewal w/

Madrid- Request for Extension of time

Inter Partes Cases

Type of Fee:

Arbitral Award Scrutiny Fee-Trademarks

Arbitral Award Scrutiny Fee- Utility

Arbitral Award Scrutiny Fee-Technology

Early Mediation Fee9

8 These fees were not indicated in Office Order 163, series of 2012, prescribing the fees for Madrid Protocolrelated transact9 Subject to promulgation of new implementing rules/regulations.


The Revised Fees prescribed new fees for the following transactions:

Voluntary Licensing, Information and Search Services

Amount (in

Small

N/A

N/A

Amount (in

Small

2,500

1st publication fee 920

substantive examination 500

examination fee 6600

Amount

w/ Surcharge

time to submit copy of home registration

Amount

Trademarks and Industrial Designs

Utility Models and Copyrights

Technology Transfer and Inventions

These fees were not indicated in Office Order 163, series of 2012, prescribing the fees for Madrid Protocolrelated transactSubject to promulgation of new implementing rules/regulations.


(in PhP)

Big

3000

65250

(in PhP)

Big

5,000

960

1,000

13,320

Amount (in PhP)

13140

1200

Amount (in PhP)

3000

4000

5000

15000

These fees were not indicated in Office Order 163, series of 2012, prescribing the fees for Madrid Protocolrelated transactions.



Exceptions Some notable exceptions to the trend are listed below:

Description

2004 rates PhP)

Small

IPO Box annually 1000

Consultation with Examiner per hour

125

Comprehensive Search 10,350

Resident Agent or Representative (Annual Re-enlistment)

1,500

20'" Year Annuity 27,150

Invention Other Charges Fees which are no longer applicable were Act No. 165and some fees in relations to Republic Act. No. 166. For State of the Art Searches I Related Searches, the fees appear to have been unified. The fees for crowded art searches were not indicated, but the amount thereof (PhP 14,500) appears to have been transposed into the comprehensive search fee (Small Entities). Word mark searches are not indicated, and only the complex trademark search fee is retained (increased by 20"/o for Bi

1 It appears that thils may be a clerical error. The 19'" Year Annuity for Small Entities is likewise 26040. Furthermore, trend19'" year annuities shows a 15% percent increase


Some notable exceptions to the trend are listed below:

rates (in PhP)

2017 rates (in

PhP) l1 (in PhP)

Big

Small Big

Small Big

1000 3000 3000 2000 2000

125 125 250 0 125

10,350 14,500 17,400 4,150 7,050

1,500 2,000 2,000 500 500

54,300 26,0401 65,160 -1,110 10,860

Fees which are no longer applicable were removed, such as fees for interference proceedings under Republic Act No. 165and some fees in relations to Republic Act. No. 166.

For State of the Art Searches I Related Searches, the fees appear to have been unified. The fees for crowded re not indicated, but the amount thereof (PhP 14,500) appears to have been transposed into

the comprehensive search fee (Small Entities). Word mark searches are not indicated, and only the complex trademark search fee is retained (increased by 20"/o for Big Entities).

It appears that thils may be a clerical error. The 19'" Year Annuity for Small Entities is likewise 26040. Furthermore, trend19'" year annuities shows a 15% percent increase from the old fees.


8%

Big Small Big

2000 200".-6 200%

0% 100%

7,050 40.10% 68.12%

33.33% 33.33%

10,860 -4.09% 20%

removed, such as fees for interference proceedings under Republic

For State of the Art Searches I Related Searches, the fees appear to have been unified. The fees for crowded re not indicated, but the amount thereof (PhP 14,500) appears to have been transposed into

the comprehensive search fee (Small Entities). Word mark searches are not indicated, and only the complex

It appears that thils may be a clerical error. The 19'" Year Annuity for Small Entities is likewise 26040. Furthermore, trend for the s'" to



IPAP presentations during the 66th APAA Council Meeting in Bali, Indonesia

Various issues were presented by IPAP members during committee discussions of the 66th Council Meeting of Asian Patent Attorney Association (APAA) held in Bali Nusa Dua Convention Center from 8 2016 in Denpasar, Bali Island, Indonesia. For the Anti-Counterfeiting Committee, IPAP discussed legal issues and concerns for Plain Packaging Regulations which include (1) whether plain packaging legislation may be a breach of a country’s WTO obligations or the Paris Convention; (2) updates on the plavarious jurisdictions; (3) whether plain packaging facilitate counterfeiting activities; and (4) possible novel measures and solutions to combat the rise of such counterfeiting activities. For the Copyright Committee IPAP discussed the application of copyright in a world where computers may take an integral part in the creative process, producing works where the material form in which the work is embodied is merely a set of electrons For the Designs Committee, IPAP discussed the different tests for infringement relevant to each recognized group, together with what constitutes infringement, and the remedies available to registrants. For the Emerging IP Rights Committee, , IPAP discussed current issueTraditional Knowledge (TK), available measures for protecting TK including their benefits, limitations and possible areas for improvement. For the Patents Committee IPAP discussed patent eligibility which relates not onlymatter is worthy of being granted exclusivity, but also functions as a gatekeeper to proceed to further patentability questions such as novelty/inventiveeligibility criteria in various jurisdictions, highlighting the similarities and differences across APAA member states as well as possible comparison with core jurisdictions such as US and EP. For the Trademarks Committee IPAP discussed Trade dress protection that has continued beyond the traditional concept of product packaging and now also covers store interior designs, among others. The discussion included the concept of trade dress, its scope of protection (traditional & newly protected or discussed), and how it is protected in each recognized group."



Various issues were presented by IPAP members during committee discussions of the 66th Council Meeting of Asian Patent Attorney Association (APAA) held in Bali Nusa Dua Convention Center from 8 2016 in Denpasar, Bali Island, Indonesia.

Counterfeiting Committee, IPAP discussed legal issues and concerns for Plain Packaging Regulations which include (1) whether plain packaging legislation may be a breach of a country’s WTO obligations or the Paris Convention; (2) updates on the plain packaging initiatives, if any, being considered in various jurisdictions; (3) whether plain packaging facilitate counterfeiting activities; and (4) possible novel measures and solutions to combat the rise of such counterfeiting activities.

right Committee IPAP discussed the application of copyright in a world where computers may take an integral part in the creative process, producing works where the material form in which the work is

ommittee, IPAP discussed the different tests for infringement relevant to each recognized group, together with what constitutes infringement, and the remedies available to registrants.

For the Emerging IP Rights Committee, , IPAP discussed current issues relating to the definition of Traditional Knowledge (TK), available measures for protecting TK including their benefits, limitations and

For the Patents Committee IPAP discussed patent eligibility which relates not only matter is worthy of being granted exclusivity, but also functions as a gatekeeper to proceed to further patentability questions such as novelty/inventive-step. The discussion included patent subject matter

rious jurisdictions, highlighting the similarities and differences across APAA member states as well as possible comparison with core jurisdictions such as US and EP.

For the Trademarks Committee IPAP discussed Trade dress protection that has continued beyond the traditional concept of product packaging and now also covers store interior designs, among others. The discussion included the concept of trade dress, its scope of protection (traditional & newly

protected in each recognized group."



Various issues were presented by IPAP members during committee discussions of the 66th Council Meeting of Asian Patent Attorney Association (APAA) held in Bali Nusa Dua Convention Center from 8 – 11 October

Counterfeiting Committee, IPAP discussed legal issues and concerns for Plain Packaging Regulations which include (1) whether plain packaging legislation may be a breach of a country’s WTO

in packaging initiatives, if any, being considered in various jurisdictions; (3) whether plain packaging facilitate counterfeiting activities; and (4) possible novel

right Committee IPAP discussed the application of copyright in a world where computers may take an integral part in the creative process, producing works where the material form in which the work is

ommittee, IPAP discussed the different tests for infringement relevant to each recognized group, together with what constitutes infringement, and the remedies available to registrants.

s relating to the definition of Traditional Knowledge (TK), available measures for protecting TK including their benefits, limitations and

to whether the subject matter is worthy of being granted exclusivity, but also functions as a gatekeeper to proceed to further

step. The discussion included patent subject matter rious jurisdictions, highlighting the similarities and differences across APAA member

For the Trademarks Committee IPAP discussed Trade dress protection that has continued to expand beyond the traditional concept of product packaging and now also covers store interior designs, among others. The discussion included the concept of trade dress, its scope of protection (traditional & newly



THE PHILIPPINES ON BAD FAITH TRADEMARKSby Joaquin V. Sayoc and Justin Vincent J. La Chica The Intellectual Property Code of the Philippines has no provision on bad faith trademarks. Bad faith, however, is defined in Philippine jurisprudence as “a state of mind affirmatively operating with furtive design or with some motive of self interest or ill will or for ulterior purpose.”judgment or negligence; it [rather] imputes a da wrong; a breach of sworn duty through some motive or intent or ill will; [and] it partakes of the nature of fraud.”3 As early as more than a century ago, the Philippine Supreme Court alreIn 1909, the denial of a claim for damages by a trial court was brought up to the High Court in the case of Ubeda vs. Agapito Zialcita4. The Supreme Court denied Mr. Ubeda’s claims for damages against Mr.allegedly infringing his GINERBRA DE TRES CAMPANAS upon finding that the former’s trademark was in fact a fraudulent imitation of the GINEBRA DE LA CAMPANA trademark of Van Den Bergh & Co.’s distillery, a nonto the case. The Court ruled that the fraudulent imitation by Mr. Ubeda of the GINEBRA DE LA CAMPANA trademark of Van Den Bergh & Co. distillery, even if the latter has long ceased to import its product into the Philippines, is considered bad faith. The Court thereafter pointed out trademark in bad faith may not be injured by the use in bad faith of yet another person of the same trademark, hence does not have any cause of action to claim for any damages. Almost 80 years after Ubeda, came the Kabushiki Kaisha failed to initiate any challenge against Pagasa Industrial Corp.’s registration of the YKK trademark, one which is identical to its registered trademark, for seven yearsonly the rule that the registration of a trademark, which is identical to another trademark, for the same type of goods, by a person who has prior actual knowledge of the fact of its existence, is considered bad faith; butthe tenet that a person who registers or uses a trademark in bad faith cannot seek protection under the mantle of equity. The deliberateness of a particular act has also been used as a measure by the Supreme Court to cancel registered trademarks. A lawfully registered and longfaith. In the case of Heirs of Gabriel-Almoradie vs. Court of Appeals, et al.ownership of the WONDER trademark, tunrelated person, a trademark which was registered even prior to the contested WONDER trademark and which was, until procured, previously used for an unrelated product, which she thereafter product of the winning party. The procurement tainted with bad faith, the Supreme Court struck down the once legally-registered-andused WONDER GH trademark.

2 Air France vs. Carrascoso (G.R. No. L-21438, 28 September 1966); Balbuena vs. Sabay (G.R. No. 154720, 4 September 2009)3 Llorente, Jr. vs. Sandiganbayan, et al. (G.R. No. 122166, 11 March 1998); Yamson vs. Castro (G.R. Nos. 1947634 G.R. No. 4392, 17 February 1909 5 G.R. No. L-54158, 19 November 1982, 31 August 19846 G.R. No. 91385, 4 January 1994


THE PHILIPPINES ON BAD FAITH TRADEMARKS by Joaquin V. Sayoc and Justin Vincent J. La Chica

The Intellectual Property Code of the Philippines has no provision on bad faith trademarks.

defined in Philippine jurisprudence as “a state of mind affirmatively operating with furtive design or with some motive of self interest or ill will or for ulterior purpose.”2 It “does not simply connote bad judgment or negligence; it [rather] imputes a dishonest purpose or some moral obliquity and conscious doing of a wrong; a breach of sworn duty through some motive or intent or ill will; [and] it partakes of the nature of

As early as more than a century ago, the Philippine Supreme Court already recognized bad faith in trademark use. In 1909, the denial of a claim for damages by a trial court was brought up to the High Court in the case of

. The Supreme Court denied Mr. Ubeda’s claims for damages against Mr.allegedly infringing his GINERBRA DE TRES CAMPANAS upon finding that the former’s trademark was in fact a fraudulent imitation of the GINEBRA DE LA CAMPANA trademark of Van Den Bergh & Co.’s distillery, a non

d that the fraudulent imitation by Mr. Ubeda of the GINEBRA DE LA CAMPANA trademark of Van Den Bergh & Co. distillery, even if the latter has long ceased to import its product into the Philippines, is considered bad faith. The Court thereafter pointed out that a person who registers or uses a trademark in bad faith may not be injured by the use in bad faith of yet another person of the same trademark, hence does not have any cause of action to claim for any damages.

, came the case of Pagasa Industrial Corp. vs. Court of AppealsKabushiki Kaisha failed to initiate any challenge against Pagasa Industrial Corp.’s registration of the YKK trademark, one which is identical to its registered trademark, for seven years. The Supreme Court laid down not only the rule that the registration of a trademark, which is identical to another trademark, for the same type of goods, by a person who has prior actual knowledge of the fact of its existence, is considered bad faith; butthe tenet that a person who registers or uses a trademark in bad faith cannot seek protection under the mantle of

The deliberateness of a particular act has also been used as a measure by the Supreme Court to cancel registered A lawfully registered and long-used trademark can still be cancelled if it is subsequently used in bad

Almoradie vs. Court of Appeals, et al.6, after a long-ownership of the WONDER trademark, the losing party bought the rights over the WONDER GH from a third unrelated person, a trademark which was registered even prior to the contested WONDER trademark and which was, until procured, previously used for an unrelated product, which she thereafter used to market an identical product of the winning party. The procurement tainted with bad faith, the Supreme Court struck down the once

andused WONDER GH trademark.

21438, 28 September 1966); Balbuena vs. Sabay (G.R. No. 154720, 4 September 2009)Llorente, Jr. vs. Sandiganbayan, et al. (G.R. No. 122166, 11 March 1998); Yamson vs. Castro (G.R. Nos. 194763

54158, 19 November 1982, 31 August 1984

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The Intellectual Property Code of the Philippines has no provision on bad faith trademarks.

defined in Philippine jurisprudence as “a state of mind affirmatively operating with furtive It “does not simply connote bad

ishonest purpose or some moral obliquity and conscious doing of a wrong; a breach of sworn duty through some motive or intent or ill will; [and] it partakes of the nature of

ady recognized bad faith in trademark use. In 1909, the denial of a claim for damages by a trial court was brought up to the High Court in the case of Patricio

. The Supreme Court denied Mr. Ubeda’s claims for damages against Mr. Zialcita for allegedly infringing his GINERBRA DE TRES CAMPANAS upon finding that the former’s trademark was in fact a fraudulent imitation of the GINEBRA DE LA CAMPANA trademark of Van Den Bergh & Co.’s distillery, a non-party

d that the fraudulent imitation by Mr. Ubeda of the GINEBRA DE LA CAMPANA trademark of Van Den Bergh & Co. distillery, even if the latter has long ceased to import its product into the

that a person who registers or uses a trademark in bad faith may not be injured by the use in bad faith of yet another person of the same trademark,

Pagasa Industrial Corp. vs. Court of Appeals5. Yoshida Kogyo Kabushiki Kaisha failed to initiate any challenge against Pagasa Industrial Corp.’s registration of the YKK

. The Supreme Court laid down not only the rule that the registration of a trademark, which is identical to another trademark, for the same type of goods, by a person who has prior actual knowledge of the fact of its existence, is considered bad faith; but also the tenet that a person who registers or uses a trademark in bad faith cannot seek protection under the mantle of

The deliberateness of a particular act has also been used as a measure by the Supreme Court to cancel registered used trademark can still be cancelled if it is subsequently used in bad

-drawn dispute over the he losing party bought the rights over the WONDER GH from a third

unrelated person, a trademark which was registered even prior to the contested WONDER trademark and which used to market an identical

product of the winning party. The procurement tainted with bad faith, the Supreme Court struck down the once

21438, 28 September 1966); Balbuena vs. Sabay (G.R. No. 154720, 4 September 2009) Llorente, Jr. vs. Sandiganbayan, et al. (G.R. No. 122166, 11 March 1998); Yamson vs. Castro (G.R. Nos. 194763-64, 20 July 2016)



In 2007, the Supreme Court, in a landmark decision, refused to proteca new entrant upon finding that the former was registered in bad faith. Before the Shangriwas able to register its SHANGRI-LA trademark in the Philippines, the Developers Group of Companieregistered substantially identical mark which it used for its Chinese restaurant business. When ShangriInternational Group came into the Philippines and attempted to register its trademark, the restaurant owners objected and sought protection of its trademark which the High Court denied. In defending insinuations that its decision, in the case of Companies, Inc.7, in effect diminishes the protection afforded by the State, the Court held in a “the Decision does not in any way diminish the protection afforded to valid trademark registrations made under said law” since “[i]t was glaringly obvious … [that the] registration of the subject mark and logo was void due to the existence of bad faith […]”. As a general rule in Philippine jurisdiction, any void act is deemed never to have existed from the very beginning, hence the net effect is there is no reason for the law to protect any void mark even from owners of newly registered, or Also in 2007, the Supreme Court issued its Decision in Out Burger, Inc. filed cancellation and unfair competition actions against Sehwani, Inc. for the latrademark registration “IN N OUT” (THE INSIDE OF THE LETTER “O” FORMED LIKE A STAR). The Supreme Court affirmed that In-N-Out Burger, Inc.’s “INthat Sehwani, Inc. used the IN-NOUT Burger trademark for the name of its restaurant but also used an identical/confusingly similar mark for its hamburgers wrappers and French fries receptacles, thereby effectively misrepresenting the source of the goods and servicesSehwani, Inc. was affirmed. It would seem in the ruling that a confusingly similar mark that effectively misrepresents the source of the goods and services partakes of a bad faith mark. Protection against bad faith trademarks is not limited to unregistered but internationally wellas that in the Shangri-la and In-N-Out cases, the Director-General of the IntellectualCanners Ltd. vs. Frabelle Fishing Corporationlaw, and hence, his office, protects is the ownership of trademarks and notbetween ownership and registration, the Directorown a trademark, and, in such a scenario, the firstperson who registers a trademark in bad faith may not be deemed as its owner, hence will not has any rights even if it is the first who has filed for its registration. A survey of Philippine decisions declaring trademarks to be registeredconcept revolves around the deliberate and malicious copying of marks of a third person. With respect to trademark registration, “[b]ad faith means that the applicant or registrant has knowledge of prior creation, and/or registration by another of an identical or similar trademark. In other words, it is copying and using somebody else’s trademark.”11

7 G.R. No. 159938, 31 March 2006 8 Ibid., 22 January 2007 9 536 SCRA 225 10 Appeal No. 14-06-26, 13 March 2008 11 Mustang-Bekleidungswerke GMBH+Co.KG vs. Hung Chiu Ming (Appeal No. 14


In 2007, the Supreme Court, in a landmark decision, refused to protect a previously registered trademark against a new entrant upon finding that the former was registered in bad faith. Before the Shangri

LA trademark in the Philippines, the Developers Group of Companieregistered substantially identical mark which it used for its Chinese restaurant business. When ShangriInternational Group came into the Philippines and attempted to register its trademark, the restaurant owners

f its trademark which the High Court denied.

In defending insinuations that its decision, in the case of Shangri-la International vs. Developers Group of , in effect diminishes the protection afforded by the State, the Court held in a

“the Decision does not in any way diminish the protection afforded to valid trademark registrations made under said law” since “[i]t was glaringly obvious … [that the] registration of the subject mark and logo was void due to

of bad faith […]”. As a general rule in Philippine jurisdiction, any void act is deemed never to have existed from the very beginning, hence the net effect is there is no reason for the law to protect any void mark even from owners of newly registered, or even unregistered and unknown, marks.

Also in 2007, the Supreme Court issued its Decision in Sehwani, Incorporated v. In-N-Out Burger, IncOut Burger, Inc. filed cancellation and unfair competition actions against Sehwani, Inc. for the latrademark registration “IN N OUT” (THE INSIDE OF THE LETTER “O” FORMED LIKE A STAR). The Supreme Court

Out Burger, Inc.’s “IN-N-OUT” family of marks are well-known. The Supreme Court also found NOUT Burger trademark for the name of its restaurant but also used an

identical/confusingly similar mark for its hamburgers wrappers and French fries receptacles, thereby effectively misrepresenting the source of the goods and services. The cancellation of the questioned trademark registration of Sehwani, Inc. was affirmed. It would seem in the ruling that a confusingly similar mark that effectively

the source of the goods and services partakes of a bad faith mark.

st bad faith trademarks is not limited to unregistered but internationally well cases, but also those which are not as known. A year following the said

General of the Intellectual Property Office of the Philippines declared, in the case of RD Canners Ltd. vs. Frabelle Fishing Corporation10 which pitted two parties over the DIANA trademark, that what the law, and hence, his office, protects is the ownership of trademarks and not its registration. By driving a wedge between ownership and registration, the Director-General ruled that while it may be possible for two persons to own a trademark, and, in such a scenario, the first-to-file rule (the first to file will have the rights) person who registers a trademark in bad faith may not be deemed as its owner, hence will not has any rights even if it is the first who has filed for its registration.

A survey of Philippine decisions declaring trademarks to be registered or used in bad faith thus shows that the concept revolves around the deliberate and malicious copying of marks of a third person. With respect to trademark registration, “[b]ad faith means that the applicant or registrant has knowledge of prior creation, and/or registration by another of an identical or similar trademark. In other words, it is copying and using

Bekleidungswerke GMBH+Co.KG vs. Hung Chiu Ming (Appeal No. 14-06-20, 29 August 2007)

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t a previously registered trademark against a new entrant upon finding that the former was registered in bad faith. Before the Shangri-la International group

LA trademark in the Philippines, the Developers Group of Companies, Inc. registered substantially identical mark which it used for its Chinese restaurant business. When Shangri-La International Group came into the Philippines and attempted to register its trademark, the restaurant owners

la International vs. Developers Group of , in effect diminishes the protection afforded by the State, the Court held in a Resolution8 that

“the Decision does not in any way diminish the protection afforded to valid trademark registrations made under said law” since “[i]t was glaringly obvious … [that the] registration of the subject mark and logo was void due to

of bad faith […]”. As a general rule in Philippine jurisdiction, any void act is deemed never to have existed from the very beginning, hence the net effect is there is no reason for the law to protect any void mark

Out Burger, Inc9. Here, In-N-Out Burger, Inc. filed cancellation and unfair competition actions against Sehwani, Inc. for the latter’s violating trademark registration “IN N OUT” (THE INSIDE OF THE LETTER “O” FORMED LIKE A STAR). The Supreme Court

known. The Supreme Court also found NOUT Burger trademark for the name of its restaurant but also used an

identical/confusingly similar mark for its hamburgers wrappers and French fries receptacles, thereby effectively ation of the questioned trademark registration of

Sehwani, Inc. was affirmed. It would seem in the ruling that a confusingly similar mark that effectively

st bad faith trademarks is not limited to unregistered but internationally well-known marks, such cases, but also those which are not as known. A year following the said

Property Office of the Philippines declared, in the case of RD Tuna which pitted two parties over the DIANA trademark, that what the

its registration. By driving a wedge General ruled that while it may be possible for two persons to

file rule (the first to file will have the rights) will apply, a person who registers a trademark in bad faith may not be deemed as its owner, hence will not has any rights even

or used in bad faith thus shows that the concept revolves around the deliberate and malicious copying of marks of a third person. With respect to trademark registration, “[b]ad faith means that the applicant or registrant has knowledge of prior creation, use and/or registration by another of an identical or similar trademark. In other words, it is copying and using



Bad faith use or registration of trademarks has been recognized to include the following:

a. Trademark Infringement and Misappropriation registration and/or use of a third person’s trademark, whether already registered or not within the jurisdiction, in order to use/ride-on the goodwill/reputatio

b. The registration and/or use of a third person’s trademark with the intent to destroy the goodwill/reputation already obtained by the actual owner.

c. The registration of a third person’s trademark for the same goods oof the jurisdiction, with the intent to sell the trademark to the actual owner once it enters the market.

d. The registration of a large quantity of potentially useful trademarks without the intent to use it for a particular good or service, but rather (1) to create a pool which can later on be scalped to potential buyers, or (2) to wait for third parties to infringe on any of these trademarks and file claims for damages.

e. The registration of trademarks by using deceptiv In 2009, the International Trademark Association (INTA) issued a resolution recommending that the application or procurement of a trademark in bad faith be made available as a ground for contesting the same in those jurisdictions in the world that have not yet carried it. In attempting to define a trademark applied or procured through bad faith, INTA interposed the following requirements: the following requirements be imposed for a finding of bad faith application/registration:

1. the applicant/registrant knew of the thirdsubstantially identical to the mark applied for/registered, where such knowledge is actual or may be inferred from the surrounding circumstances; and

2. the applicant/registrant’s conduct in applying for/registering the mark is inconsistent with norms of reasonable, honest, and fair commercial behavior.

The Association Internationale Pour la Protection de la Propriete Intellectuelle (AIPPI) will have the matter of bad faith trademarks as a study question in its 2017 Sydney World Congress. The AIPPI noted that in some jurisdictions, like the Philippines, there is a lack of clear criteria for what constitutes bad faith. Due to the variability of the criteria for bad faith, there is a lack of predictability regarding what constitutes bad faith. The AIPPI through the study question, will seek to establish c With globalization and the ideal of harmonizing trademark laws on an international basis, there is sure need to amend the IP Code to have it contain provisions on bad faith trademarks and their treatment.

12 Including, among others, the 2013 report of the Ilecture notes of Hon. Karen S. Kuhlke of the US Patent and Trademark Office; the onlineProperty 13 http://www.inta.org/Advocacy/Pages/BadFaithasaGroundforOppositionProceedings.aspx


Bad faith use or registration of trademarks has been recognized to include the following:12

Trademark Infringement and Misappropriation – the most basic of the forms, it is the deliberate registration and/or use of a third person’s trademark, whether already registered or not within the

on the goodwill/reputation already obtained by the actual owner. The registration and/or use of a third person’s trademark with the intent to destroy the goodwill/reputation already obtained by the actual owner. The registration of a third person’s trademark for the same goods or services before it enters the market of the jurisdiction, with the intent to sell the trademark to the actual owner once it enters the market. The registration of a large quantity of potentially useful trademarks without the intent to use it for a

cular good or service, but rather (1) to create a pool which can later on be scalped to potential buyers, or (2) to wait for third parties to infringe on any of these trademarks and file claims for damages. The registration of trademarks by using deceptive means.

In 2009, the International Trademark Association (INTA) issued a resolution recommending that the application or procurement of a trademark in bad faith be made available as a ground for contesting the same in those

t have not yet carried it. In attempting to define a trademark applied or procured through bad faith, INTA interposed the following requirements:

the following requirements be imposed for a finding of bad faith application/registration:

/registrant knew of the third-party’s rights or legitimate interests in a mark identical to or substantially identical to the mark applied for/registered, where such knowledge is actual or may be

rrounding circumstances; and ant/registrant’s conduct in applying for/registering the mark is inconsistent with norms of

reasonable, honest, and fair commercial behavior.13

The Association Internationale Pour la Protection de la Propriete Intellectuelle (AIPPI) will have the matter of bad faith trademarks as a study question in its 2017 Sydney World Congress. The AIPPI noted that in some

there is a lack of clear criteria for what constitutes bad faith. Due to the variability of the criteria for bad faith, there is a lack of predictability regarding what constitutes bad faith. The AIPPI through the study question, will seek to establish criteria for bad faith marks.

With globalization and the ideal of harmonizing trademark laws on an international basis, there is sure need to amend the IP Code to have it contain provisions on bad faith trademarks and their treatment.

Including, among others, the 2013 report of the Intellectual Property Owners Association as compiled by Dr. Elizabeth Houlihan; the lecture notes of Hon. Karen S. Kuhlke of the US Patent and Trademark Office; the online-published article of HFG Law & Intellectual

http://www.inta.org/Advocacy/Pages/BadFaithasaGroundforOppositionProceedings.aspx

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12

the most basic of the forms, it is the deliberate registration and/or use of a third person’s trademark, whether already registered or not within the

n already obtained by the actual owner. The registration and/or use of a third person’s trademark with the intent to destroy the

r services before it enters the market of the jurisdiction, with the intent to sell the trademark to the actual owner once it enters the market. The registration of a large quantity of potentially useful trademarks without the intent to use it for a

cular good or service, but rather (1) to create a pool which can later on be scalped to potential buyers, or (2) to wait for third parties to infringe on any of these trademarks and file claims for damages.

In 2009, the International Trademark Association (INTA) issued a resolution recommending that the application or procurement of a trademark in bad faith be made available as a ground for contesting the same in those

t have not yet carried it. In attempting to define a trademark applied or procured

party’s rights or legitimate interests in a mark identical to or substantially identical to the mark applied for/registered, where such knowledge is actual or may be

ant/registrant’s conduct in applying for/registering the mark is inconsistent with norms of

The Association Internationale Pour la Protection de la Propriete Intellectuelle (AIPPI) will have the matter of bad faith trademarks as a study question in its 2017 Sydney World Congress. The AIPPI noted that in some

there is a lack of clear criteria for what constitutes bad faith. Due to the variability of the criteria for bad faith, there is a lack of predictability regarding what constitutes bad faith. The

With globalization and the ideal of harmonizing trademark laws on an international basis, there is sure need to amend the IP Code to have it contain provisions on bad faith trademarks and their treatment.

ntellectual Property Owners Association as compiled by Dr. Elizabeth Houlihan; the published article of HFG Law & Intellectual



A TALE OF TWO “SAINTS"The Case of Shang Properties Realty Corporation and Shang Properties, Inc. v. St. Francis Development Corporation (G. R. No. 190706, July 21, 2014*) By : Roque Aldrich B. Alvaera Legal Assistant Carag Jamora Somera & Villareal Law Offices “A geographically descriptive term is in the “inform customers of the geographical origin of his goods. As a rule, a geographicallyperceptibly disqualified from trademark registration. The same, however, may be considered for trademark registration, provided that it has acquired a secondary meaning. The following case provides pertinent discussion of geographically-descriptive marks and the doctrine of secondary meaning St. Francis Development Corporation (SFDC) is a domestic corporation engaged in the real estate business and the developer of the St. Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center. SFDC filed separate complaints against Shang Properties Realty Corporation (SPRC) and Shang Properties, Inc. (SPI) before the IPOPHL's Bureau of Legal Affairs for using and filing applications for the registration of the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRIhad used the mark “ST. FRANCIS” to identify its numerous real property development projects located at Ortigas Center, such as the “St. Francis Square Commercial Center” and “St. Francis Square”. SFDC further opined that it has gained substantial goodwill with the public that consumers and traders closely identify the said mark with its real property development projects. Accordingly, SFDC claims that the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRIdevelopment projects constitute unfair competition as well as false or fraudulent declaration. SPRC and SPI, on the other hand, maintained that SFDC cannot claim ownership and exclusive use of the mark “ST. FRANCIS” because it is geographicallyused. They likewise pointed out that the real estate development projects of both companies were located within the Ortigas Center's vicinity, particu In deciding this case, and particularly with respect to the issues on what constitute geographically descriptive terms and what are considered as marks that have acquired secondary meaningCase also involved the matter of whether SPRC/SPI had engaged in acts constituting unfair competition against SFDC, which the Court declared SPRC/SPI had not),being the name of the place or region from wfrom, as one being used in a descriptive sense. Absent any proof that the use of such mark by any source has ripened into a secondary meaning, the same cannot be exclusively attributed What is a “geographically descriptive term”?


“SAINTS" The Case of Shang Properties Realty Corporation and Shang Properties, Inc. v. St. Francis Development Corporation (G. R. No. 190706, July 21, 2014*)

geographically descriptive term is in the “public domain” in the sense that every seller should have the right to inform customers of the geographical origin of his goods. As a rule, a geographically

ark registration. The same, however, may be considered for trademark registration, provided that it has acquired a secondary meaning. The following case provides pertinent discussion

descriptive marks and the doctrine of secondary meaning.”*

St. Francis Development Corporation (SFDC) is a domestic corporation engaged in the real estate business and the developer of the St. Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center.

gainst Shang Properties Realty Corporation (SPRC) and Shang Properties, Inc. (SPI) before the IPOPHL's Bureau of Legal Affairs for using and filing applications for the registration of the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE”. SFDC claimed that since 1992, it had used the mark “ST. FRANCIS” to identify its numerous real property development projects located at Ortigas Center, such as the “St. Francis Square Commercial Center” and “St. Francis Square”. SFDC further

t it has gained substantial goodwill with the public that consumers and traders closely identify the said mark with its real property development projects. Accordingly, SFDC claims that the marks “THE ST. FRANCIS TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE” used by SPRC in their own real estate development projects constitute unfair competition as well as false or fraudulent declaration.

SPRC and SPI, on the other hand, maintained that SFDC cannot claim ownership and exclusive use of the mark FRANCIS” because it is geographically-descriptive of the goods or services for which it is intended to be

used. They likewise pointed out that the real estate development projects of both companies were located within the Ortigas Center's vicinity, particularly along the streets bearing the name “St. Francis”.

In deciding this case, and particularly with respect to the issues on what constitute geographically descriptive terms and what are considered as marks that have acquired secondary meaningCase also involved the matter of whether SPRC/SPI had engaged in acts constituting unfair competition against SFDC, which the Court declared SPRC/SPI had not), the Supreme Court pronounced the ST. FRANCIS mark, being the name of the place or region from which the goods, products and/or services actually come from, as one being used in a descriptive sense. Absent any proof that the use of such mark by any source has ripened into a secondary meaning, the same cannot be exclusively attributed.

graphically descriptive term”?

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The Case of Shang Properties Realty Corporation and Shang Properties, Inc. v. St. Francis

” in the sense that every seller should have the right to inform customers of the geographical origin of his goods. As a rule, a geographically-descriptive mark is

ark registration. The same, however, may be considered for trademark registration, provided that it has acquired a secondary meaning. The following case provides pertinent discussion

St. Francis Development Corporation (SFDC) is a domestic corporation engaged in the real estate business and the developer of the St. Francis Square Commercial Center, built sometime in 1992, located at Ortigas Center.

gainst Shang Properties Realty Corporation (SPRC) and Shang Properties, Inc. (SPI) before the IPOPHL's Bureau of Legal Affairs for using and filing applications for the registration of the

E”. SFDC claimed that since 1992, it had used the mark “ST. FRANCIS” to identify its numerous real property development projects located at Ortigas Center, such as the “St. Francis Square Commercial Center” and “St. Francis Square”. SFDC further

t it has gained substantial goodwill with the public that consumers and traders closely identify the said mark with its real property development projects. Accordingly, SFDC claims that the marks “THE ST.

CE” used by SPRC in their own real estate development projects constitute unfair competition as well as false or fraudulent declaration.

SPRC and SPI, on the other hand, maintained that SFDC cannot claim ownership and exclusive use of the mark descriptive of the goods or services for which it is intended to be

used. They likewise pointed out that the real estate development projects of both companies were located larly along the streets bearing the name “St. Francis”.

In deciding this case, and particularly with respect to the issues on what constitute geographically descriptive terms and what are considered as marks that have acquired secondary meaning (since the Case also involved the matter of whether SPRC/SPI had engaged in acts constituting unfair competition against

the Supreme Court pronounced the ST. FRANCIS mark, hich the goods, products and/or services actually come

from, as one being used in a descriptive sense. Absent any proof that the use of such mark by any source



A geographically descriptive term is in the “public domain” in the sense that every seller should have the right to inform customers of the geographical origin of his goodsgeographical location and would tend to be regarded by buyers as descriptive of the geographic location of origin of the goods or services15. As a general rule, a geographically descriptive mark, due to its general public domain classification, is perceptibly disqualifiedProperty Code, a mark cannot be registered if it consists exclusively of signs or indications that may serve in trade to designate the geographical origin of the goods or serviceexception. Terms that form part of the public domain may be exclusively attributed where the term has acquired a secondary meaning. What is the doctrine of secondary meaning?? Secondary meaning arises when the public identifies a descriptive mark, as an effect, cannot be registered for exclusive use, with a certain good or service over time. When this happens, the descriptive mark that one would not have been able to register at first, may then be exclusively apthat when a word or a phrase originally incapable of exclusive appropriation with reference to an article on the market, because it is geographical or otherwise descriptive, such word or phrase may nevertheless exclusively by one producer with reference to his article, so long as in that trade or to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.is established when a descriptive mark no longer causes the public to associate the goods with a particular place, but to associate goods with a particular source. For a geographically descriptive mark to acquire a secondary meaning, the following requirements must be met: (a) the secondary meaning must have arisen as a result of a substantial commercial use of a mark in the Philippines; (b) such use must result in the distinctiveness of the mark insofar as the goods or the products are concerned; and (c) proof of substantially exclusyears before the date on which the claim of distinctiveness is made.established, a geographically descriptive mark, due to its general public domain clasdisqualified from trademark registration. The mark in dispute, “ST. FRANCIS”, is geographicallydevelopment projects of SFDC have been built. Being such, the mark cannot be subjec

14 Great Southern Bank v. First Southern Bank, 625 So.2d 463 (1993).15 Shang Properties Realty Corporation and Shang Properties, Inc. v. St. Francis Development16 Section 123.1(j), Intellectual Property Code. 17 G. and C. Merriam Co. v. Saalfield, 198 F. 369, 373, cited in Ang v. Teodoro, G.R. No. L18 Burke-Parsons-Bowlby Corporation v. Appalachian Log Homes, Inc., 874 F.2d 590 (1989).19 Section 123.2, Intellectual Property Code. 20 Shang Properties Realty Corporation and Shang Properties, Inc. v. St. Francis Development Corporation, G.R. N 22, 2014.


A geographically descriptive term is in the “public domain” in the sense that every seller should have the right to inform customers of the geographical origin of his goods14. It is any noun or adjective that designates geographical location and would tend to be regarded by buyers as descriptive of the geographic location of

. As a general rule, a geographically descriptive mark, due to its general public bly disqualified from trademark registration. As provided by the Intellectual

Property Code, a mark cannot be registered if it consists exclusively of signs or indications that may serve in trade to designate the geographical origin of the goods or services16. This rule, however, is not without exception. Terms that form part of the public domain may be exclusively attributed where the term has

What is the doctrine of secondary meaning??

public identifies a descriptive mark, as an effect, cannot be registered for exclusive use, with a certain good or service over time. When this happens, the descriptive mark that one would not have been able to register at first, may then be exclusively appropriated. In a decided case, it was opined that when a word or a phrase originally incapable of exclusive appropriation with reference to an article on the market, because it is geographical or otherwise descriptive, such word or phrase may nevertheless exclusively by one producer with reference to his article, so long as in that trade or to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.

ive mark no longer causes the public to associate the goods with a particular ods with a particular source.18

For a geographically descriptive mark to acquire a secondary meaning, the following requirements must be condary meaning must have arisen as a result of a substantial commercial use of a mark in the

Philippines; (b) such use must result in the distinctiveness of the mark insofar as the goods or the products are concerned; and (c) proof of substantially exclusive and continuous commercial use in the Philippines for five (5) years before the date on which the claim of distinctiveness is made.19 Unless secondary meaning has been established, a geographically descriptive mark, due to its general public domain classification, is perceptibly disqualified from trademark registration.20

The mark in dispute, “ST. FRANCIS”, is geographically-descriptive of the location in which the realty development projects of SFDC have been built. Being such, the mark cannot be subjec

Great Southern Bank v. First Southern Bank, 625 So.2d 463 (1993). Shang Properties Realty Corporation and Shang Properties, Inc. v. St. Francis Development

G. and C. Merriam Co. v. Saalfield, 198 F. 369, 373, cited in Ang v. Teodoro, G.R. No. L-48226, Dec. 14, 1942. Bowlby Corporation v. Appalachian Log Homes, Inc., 874 F.2d 590 (1989).

Shang Properties Realty Corporation and Shang Properties, Inc. v. St. Francis Development Corporation, G.R. No. 190706, August

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A geographically descriptive term is in the “public domain” in the sense that every seller should have the right . It is any noun or adjective that designates

geographical location and would tend to be regarded by buyers as descriptive of the geographic location of . As a general rule, a geographically descriptive mark, due to its general public

from trademark registration. As provided by the Intellectual Property Code, a mark cannot be registered if it consists exclusively of signs or indications that may serve in

. This rule, however, is not without exception. Terms that form part of the public domain may be exclusively attributed where the term has

public identifies a descriptive mark, as an effect, cannot be registered for exclusive use, with a certain good or service over time. When this happens, the descriptive mark that one would

propriated. In a decided case, it was opined that when a word or a phrase originally incapable of exclusive appropriation with reference to an article on the market, because it is geographical or otherwise descriptive, such word or phrase may nevertheless be used exclusively by one producer with reference to his article, so long as in that trade or to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.17 Secondary meaning

ive mark no longer causes the public to associate the goods with a particular

For a geographically descriptive mark to acquire a secondary meaning, the following requirements must be condary meaning must have arisen as a result of a substantial commercial use of a mark in the

Philippines; (b) such use must result in the distinctiveness of the mark insofar as the goods or the products are ive and continuous commercial use in the Philippines for five (5)

Unless secondary meaning has been sification, is perceptibly

descriptive of the location in which the realty development projects of SFDC have been built. Being such, the mark cannot be subject of exclusive

o. 190706, August



appropriation. SFDC, however, claimed that it had created a secondary meaning for the mark, thereby securing exclusive rights over the mark. While it is true that SFDC had been using the mark since 1992, such use was merely confined to itsprojects within the Ortigas Center. In other words, there was no substantial commercial use of the same recognized all throughout the country, such being that the use of the mark was clearly limited to a certain locality. Neither was there any showing that SFDC had created such mental recognition in buyers’ and potential buyers’ minds that products (services) connected with the mark “ST. FRANCIS” were associated with the same source. The BLA, in their December 19, 2006 decision in the IPV case, evenprojects bearing the name “St. Francis” in other areas such as St. Francis Village Rolling Meadow Phase I and II located at San Bartolome, Novaliches, Quezon City and St. Francis Condominium located at Xavier St., Greenhills, San Juan City. As stated by the Court, “absent any showing that there exists a clear goods/ serviceassociation between the realty projects located in the aforesaid area and [St. Francis Development Corporation] as the developer thereof, the latter cannot be said to have acquired a secondary meaning as to its use of the “ST. FRANCIS” mark. Having failed to support its conclusion and ultimately prove its claim of acquisition of secondary meaning, the Supreme Court ruled that SFDC did not have an excgeographically-descriptive mark.


appropriation. SFDC, however, claimed that it had created a secondary meaning for the mark, thereby securing

While it is true that SFDC had been using the mark since 1992, such use was merely confined to itsprojects within the Ortigas Center. In other words, there was no substantial commercial use of the same recognized all throughout the country, such being that the use of the mark was clearly limited to a certain

ing that SFDC had created such mental recognition in buyers’ and potential ) connected with the mark “ST. FRANCIS” were associated with the same

source. The BLA, in their December 19, 2006 decision in the IPV case, even cited other real estate development projects bearing the name “St. Francis” in other areas such as St. Francis Village Rolling Meadow Phase I and II located at San Bartolome, Novaliches, Quezon City and St. Francis Condominium located at Xavier St.,

hills, San Juan City. As stated by the Court, “absent any showing that there exists a clear goods/ serviceassociation between the realty projects located in the aforesaid area and [St. Francis Development Corporation]

cannot be said to have acquired a secondary meaning as to its use of the

Having failed to support its conclusion and ultimately prove its claim of acquisition of secondary meaning, the Supreme Court ruled that SFDC did not have an exclusive right over the mark “ST. FRANCIS”, such being a

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appropriation. SFDC, however, claimed that it had created a secondary meaning for the mark, thereby securing

While it is true that SFDC had been using the mark since 1992, such use was merely confined to its realty projects within the Ortigas Center. In other words, there was no substantial commercial use of the same recognized all throughout the country, such being that the use of the mark was clearly limited to a certain

ing that SFDC had created such mental recognition in buyers’ and potential ) connected with the mark “ST. FRANCIS” were associated with the same

cited other real estate development projects bearing the name “St. Francis” in other areas such as St. Francis Village Rolling Meadow Phase I and II located at San Bartolome, Novaliches, Quezon City and St. Francis Condominium located at Xavier St.,

hills, San Juan City. As stated by the Court, “absent any showing that there exists a clear goods/ service-association between the realty projects located in the aforesaid area and [St. Francis Development Corporation]

cannot be said to have acquired a secondary meaning as to its use of the

Having failed to support its conclusion and ultimately prove its claim of acquisition of secondary meaning, the lusive right over the mark “ST. FRANCIS”, such being a



Christmas Party 2016


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2017 Annual Meeting


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IPAP NEWSLETTER MARCH 2017 - Intellectual Property ...

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