Republic Act  8293, the Intellectual Property Code (IP Code), defines "Marks", "Trademark" and "Service Mark" as follows:

"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.

 

"Trade name"

 

-  means the name or designation identifying or distinguishing an enterprise.

The value and functions of a mark

A mark is an indispensable instrument for communicating to the public the origin of goods and services.

Still, a mark is more than a label of identification.  It also signifies a company's guarantee of consistent quality.  It is a symbol of a set of distinctive values associated with a product or service and is an essential instrument of communication with consumers through advertising and publicity.

It carries with a company's reputation which it puts at stake in every product it manufactures or service it gives.  A mark also becomes a company's visual representation of its assets, enabling it to hold on to or acquire market shares.

How are rights to a mark acquired?

The rights to a mark are acquired through registration with the Bureau of Trademarks (BT) of the Intellectual Property Office (IPO).

Which marks may be registered?

A mark must be: first, a visible sign (not sounds or scents), and second, capable of distinguishing one's goods and services from those of another.

Example are:

• words (invented or belonging to a known language);
• names and first names;
• signatures;
• letters, numbers;
• acronyms, combinations of letters, number and signs, logos;
• slogans;
• designs, figure and pictographs;
• portraits of people;
• collections of words and graphics and complex signs associating verbal and graphic signs, e.g. labels;
• three-dimensional trademarks such as shapes of goods and their packaging; and 
• color or combination of colors defined by a given form.

Is prior use of the mark in commerce in the philippines before filing the application a requirement for its registration?

It is not necessary to use the mark in commerce in the Philippines (or elsewhere) before filing the application with BT.  The use of a mark becomes necessary only after it has been filed. 

May foreigners obtain registration of a mark in the philippines?

All natural or juridical persons who are:

• domiciled or have a real and effective commercial establishment in a country which is bound by treaty (such as the Paris Convention and the TRIPS Agreement) to grant Filipinos the same rights it grants its own national, and

• national, and

may obtain registration of a mark in the Philippines.

Where none of these conditions are met, the registration in the Philippines of marks remains possible if the applicant's country also accepts applications for registration of marks of Filipino nationals.

Representation before the bureau of trademark

The BT is an office open to the public.  Any applicant is free to deal directly with it.

An applicant who is not a Filipino national or not domiciled or has no real or effective commercial establishment in the Philippines must be represented by a Philippine resident, usually a legal practitioner.

Only lawyers are authorized to represent applicants before the BT to file and prosecute applications of marks.

In what language must the application for a mark be presented?

The application for the registration of a mark must be in Filipino or in English.

How to prepare an application for a mark: the choice of a mark

When choosing a mark, there is an obvious advantage in hiring a group of specialized professionals.

The advertising expert and the graphic designer will help choose a sign which is both recognizable and creates an impact.  The marketing expert will ensure that the sign is effective as a tool of communication and promotion in the mass media which aims to individualize the company's goods and services, including its future developments.

The legal adviser will ensure the registration of the sign is not likely to be refused.

A search report on prior rights drawn up usually by a law practitioner based on a search conducted in the records of the BT is essential at this stage.

How to complete the application

To complete the application for the registration of a mark, indicate in the application;

• the goods and/or services in connection with which the mark will be used;
• name and address of the applicant or his representative;

and enclose the reproduction of the mark.

It is advisable to obtain and use the application form prepared by the BT.

The Filing Fees

The amount of the filing fees would depend on the number of classes (as Classification) to which the goods/services specified in the application belong; and whether the applicant is a small entity (total assets of less than P15,000,000.00) or a big entity (total assets of P15,000,000.00 or more).  The fees payable by a big entity is substantially more than the fees due from a small entity.

Where to file the application for registration of a mark

The application for registration of a mark must be filed with the Bureau of Trademarks of the Intellectual Property Office (IPO) which is located at 351 Sen. Gil J. Puyat Avenue, Makati City with telephone numbers: 89-4937 and 890-4878.  The application may be handed in personally at the BT or sent by mail or fax.

13.1   Date of Filing

On receipt of the application, an examiner checks if the application includes all the requirements needed to get the filing date (pls. see 10. How to Complete the Application.

The date of filing is very important under the current "first to file" system because it serves to determine, in case of a dispute with another applicant for the same or similar mark, who has the prior right, and therefore, entitled to the registration of a mark.

13.2   Grounds For Refusal

13.2.1  Absolute Grounds

The examiner checks if the mark can distinguish the goods and services of one person from those of another.  It must not:

• be a generic term for the goods or services specified in the application;
• design the quality, quantity, value, geographic origin or other characteristics of the goods; 
• become a customary sign in everyday language in a bona fide and established trade practice;
• consist of shapes that may be necessitated by technical factors or by the nature of or the intrinsic value of the goods or services;
• consist of color alone; and 
• be contrary to public order or morality.

13.2.2   Relative Grounds for Refusal

The examiner also checks if the mark does not violate the rights of others, It must not:

• consist the flag or coat-of-arms of other insignia of the Philippines or of any other foreign nation;
• consist of a name, portrait or signature identifying a living individual or the name, signature of a deceased president of the Philippines during the life of his window (written waivers are allowed to obtain their registration);
• be identical with or nearly resembles a prior registered mark or a mark with an earlier filing date with respect of the same or closely related goods or services as to likely deceive or confuse the consumers regarding the source or origin of the goods or services;
• be identical with or confusingly similar to an internationally well-known mark, whether or not registered in the Philippines, provided that:

     -  if is not registered in the Philippines , it can be a basis to refuse the registration of a mark only if the goods or services specified in the application are identical or similar to those in respect of which the internationally well-known mark is known or used in the Philippines, and ;

     -  If it is registered in the Philippines, it can be a basis to refuse the registration of a mark even if the goods or services specified in the application are not identical or similar with those in respect of which the internationally well-known mark is registered in the Philippines.

13.2.2.1  What is an internationally well-known mark?

An internationally well-known mark is that which is determined by a competent authority (the courts or the Bureau of Legal Affairs (BLA) of the IPO when adjudicating infringement cases)  to be well-known internationally and in the Philippines, whether or not it is registered in the Philippines, as being already owned by someone taking into account the knowledge of the relevant sector in the Philippines which has been obtained as a result of the promotion of the mark.

13.3  The Factors that are Considered to Determine Whether a Mark is Conflict with Prior-Filed or Prior-Registered Marks

13.3.1  As to the mark itself

• similarity in sound and appearance
• similarity between the dominant features
• similarity between the marks when considered in their entirety as they appear in their respective labels

13.3.2  As to the factors relating to the purchaser

• Familiarity with the goods or services
• The age, training and education of the purchaser and the circumstances attendant to the acquisition of the goods.

13.3.3  As to the factors relating to the goods

• The nature and cost of the goods
• The trade channels through which the goods flow
• Whether the goods are related

13.4  The Requirement to Use the Mark After the Filing of the Application

After the filing of the application registration, the applicant is required to use the mark in commerce in the Philippines.  To show compliance with this requirement, the applicant must file a declaration of actual use with the BT within three (3) years from the filing date of the application.

13.5   Publication of the Application

After the allowance by the examiner of the application, it is published in the IPO Gazette to give chance to the public to oppose the registration of the mark.  If no opposition is filed, the certificate of registration will issued afterwards.

13.6   The Limit for Opposition Prior to Registration

The period to file an opposition is thirty days from the date of the publication of the application.

This period is extendible provided that it does not exceed four months from the date of the publication.

13.7  Grounds for Opposing the Registration of a Mark

Any person who believes that he would be damaged by the registration of a mark may file an Opposition giving as a ground one of those enumerated as ABSOLUTE GROUNDS FOR REFUSAL or RELATIVE GROUNDS FOR REFUSAL.

13.8  The Bureau that Hears and Adjudicates an Opposition

The BLA has been given the task to hear and adjudicate Opposition cases.

The trademark register

On completion of the registration procedure, the mark is entered in the register and any transfers, licenses, or other rights relating to the mark must be entered in the register to have effect vis-a-vis third parties.  The register is a database which is in the custody of the BT who, together with the Documentation, Information and Technology Transfer Bureau of the IPO, are tasked to make them accessible and/ or disseminate them to the public.  The IPO Gazette publishes every month the information contained in the register.

What rights does the registration of a mark confer?

The registration of a mark gives its proprietor

• protection against the reproduction or imitation or unauthorized use of the mark (the legal term is infringement of mark);
• the right to stop the entry of imported merchandise into the country containing a mark identical or similar to the registered mark; and 
• the right to transfer or license out mark.

Infringement of marks

16.1  Factors that are Considered to Determine Whether There is Infringement of a Mark

The factors that are considered to determine whether a mark is in conflict with a prior-filed or prior-registered marks as discussed in 13.3 also apply to determine whether there is infringement of a mark.

16.1.1  Judicial Proceedings

The registrant can avail himself of civil and criminal remedies to stop the infringement of his mark.  Both these proceeding may be filed with the Regional Trial Courts.

16.1.1.1  Civil Action for Infringement 

To quickly prevent the infringer from causing damage to his business, the owner of a registered mark may, at the early stage of the trial of the case, ask the court to issue a preliminary injunction.  The court usually grants this request if the case for infringement is strong.

In case of a finding that there is an infringement, the court will require the defendant to pay damages to the owner of the mark (provided the defendant is shown to have had notice of the registration of the mark, which is presumed if R within a circle is appended to the mark) and stop him from permanently using the infringing mark.

The requirements to establish an infringement are:

• the mark infringed is registered with the BT, and
• the defendant is using an identical or similar sign which is likely to deceive or confuse consumers that the goods of the infringer are the products of the registrant.  A labels using the registered mark and the goods or labels bearing the infringing mark may be necessary.

16.1.1.2  Criminal Action for Infringement

The first step is to carry out an investigation of the operations of the infringer to determine:

• the identity of the manufacturer or its affiliates;
• where he manufactures the infringing goods; and 
• his marketing network.

After obtaining this information which may be provided by hired professional investigators, the next step is to apply with the court for the issuance of an order to search the places where the infringement is being carried out and to seize the infringing goods.

The judge, after a hearing, issues the search and seizure warrants only if there is "probable cause" that infringement has been committed.

The police or the National Bureau of Investigation (NBI) will conduct the raid and the infringing goods seized will be placed under the custody of the court.

Thereafter, a complaint will be filed with the State Prosecutor who will hold a hearing and, on the basis of evidence presented, decide whether to charge the alleged infringer of the crime of trademark or service mark infringement.  If he decides affirmatively, an appropriate "information" is filed with the court.  A warrant of arrest will then be issued.

The requirements to establish infringements to establish infringement in a criminal action are the same as those in the civil action except that in the criminal action, the infringement must be shown to have been committed deliberately.

The criminal penalty for trademark infringement consists of imprisonment from two (2) years to five (5) years and a fine ranging from P50,000.00 to P200,000.00.

16.1.2  Administrative Remedies

If the amount of  damages claimed is not less than P200,000.00, the registrant may choose to seek redress against the infringer by filing an administrative action against the infringer with the BLA.

The questions that the BLA will have to resolve are also the same as in the civil action for infringement as discussed above.

The registrant may likewise ask the BLA for an order directing the infringer to immediately stop the manufacture and sale of the infringing good while the administrative case is being heard.  The BLA may, like the courts, in case of a finding that infringement has been committed, direct the infringer to pay the registrant damages and to permanently stop from using the infringing mark.  In addition, the BLA may also impose a fine which the infringer will pay to the government.

Border measures

To stop the entry of goods that copy or simulate the mark, the registrant should file a request with the Bureau of Customs to stop the entry of these goods as soon as they reach port or hold their release and submit the certified copy of the certificate of registration of the mark.

What is the term of the registration of a mark?

A certificate of registration of a mark shall remain in force (10) years.  It is required, however, that the owner of a mark show that he is using the mark or that his non-use of the same is due to causes beyond his control by filing an Affidavit of Use or Excusable Non-Use, with the BT within one (1) year from the 5th anniversary of the registration of the marks.

The registration may also be renewed for a period of ten (10) years after its expiration.  There is no limit as to the number of times the registrant may request for the renewal of his registration.

Territorial limits on the protection afforded by the registration of a mark

The registration of a mark will have force and effect within the territory of the Philippines.

How and on what grounds may an application for cancellation of registration of a mark be made?

Any person who believes that he will be damaged by the registration of a mark may file a petition to cancel a registration of a mark with BLA, as a general rule, within five (5) years from the date of registration of the mark.

Any of the grounds to reject the registration of a mark which are enumerated as ABSOLUTE GROUNDS FOR REFUSAL or RELATIVE GROUNDS FOR REFUSAL may also be cited in the petition for cancellation.  Non-use of a mark for an uninterrupted period of three (3) years is also a ground for cancellation.

Rights of legitimate users of unregistered marks

Under the IP Code, it is provided that the rights to marks are acquired only through registration, and as between two (2) applicants, the one whose application has the earlier filing date will be considered as entitled to registration.  Under this legal system, there are or will be many unregistered marks or marks that are used legitimately before the filing date of an identical or similar registered mark.  What are the rights of the users of these marks?

21.1   The Rights of a Prior User in Good Faith

Users in good faith before filing date of a registered mark will not be liable for infingement of the mark but his right is not assignable except together with the business in which the mark is used.

21.2   The Right Against Unfair Competition

Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said results, shall be guilty of unfair competition.

21.2.2  The remedies against unfair competition under the IP Code consist of criminal, civil and/or administrative actions similar to those enumerated and discussed under INFRINGEMENT PROCEEDINGS.

In these proceedings, the evidence to prove unfair competition should show:

• that goodwill has been developed through evidence showing the registration of his business with appropriate government agency, the length of its existence, volume of sales, the budget for advertisement and promotions, testimonies of customers, etc. and
• that the accused or the defendant clothed his goods the general appearance of the goods of the plaintiff which would likely influence purchasers to believe that the goods offered are those of the plaintiff. 

A registered mark enjoys better protection than an unregistered mark

In order to succeed in an action based on an unregistered mark, it is necessary to show that one has established a goodwill in the mark and that the use complained of would be liable to confuse or deceive the public.  Registration on the other hand, gives a right to stop someone using the same or similar mark on the same or similar goods or services without the need to prove goodwill of the mark or that deception was employed by the defendant.  The owner of  a mark would, therefore, always be well-advised to register the mark where this is possible.

Trade names

23.1    Distinction between Marks and Trade Names

A mark distinguishes the goods (trademark) or services (services mark) of an enterprise while a trade name means the name or designation identifying or distinguishing an enterprise.

23.2    What Name or Designation May not be Used as a Trade Name?

• If by its nature or the use to which the name or designation may put, it is contrary to public order or morals.
• If it liable to deceive the public as to the nature of the enterprise identified by the name .
• If the trade name is similar to a mark or a trade name owned by another person and its use would likely mislead the public.

23.3    Is Registration a Requirement for the Protection of a Trade Name?

Trade names are protected even prior to or without registration.  Thus, non-registration of the trade name with the Securities and Exchange Commission or the Department of Trade and Industry will not deprive the owner thereof the right granted to him by the IP Code.

23.4    What Right Does the Law Grant to the Owner Law Grant to the Owner of a Trade Name?

The IP Code deems unlawful any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of similar trade name or mark, likely to mislead the public.

The remedy against the unlawful use of a trade name would be a civil action for damages and injunction.