The Law on Trademarks

Trademark Act

Section 121.1, definition of marks

Section 121.2, Collective marks
Section 122, How marks are acquired

 The Trademark Act, Republic Act No. 166, as

amended, which has been repealed under Section 339 of
the Intellectual Property Code, was effective from June
20, 1947 until January 1, 1998, when the Intellectual
Property Code took effect.

 RA 166 adopted the actual use system under which

a trademark owner can apply for the registration of his
mark only after he has used it in commerce in the
Philippines for at least two months before the filing of
the application.

IP Code

Section 123 to 123.3, Registrability of marks

 Intellectual Property Code, Republic Act No. 8293,
adopted a hybrid system of registration in that while
actual use of the mark is not required at the time of filing
of the application, use of the mark in commerce must
actually commence within three years from the filing
date of the application; otherwise, the application will be
refused or the registration cancelled if it has been issued.

 The Trademark Act adopted a single class

registration system. In contrast, the IP Code adopted a
multiple class registration system. Use of the mark on
any item within a specific class of goods preserves the
trademark owner’s registration for the entire class.

Section 128, Single registration for goods and

services

 A trademark owner need only file a single

application for the registration of his mark covering
several classes of goods or services whether they belong
to one class or to several classes of the Nice
Classification

Paris Convention
 The provisions of the Paris Convention may be sub-
divided into four main categories:

 A first category contains rules of substantive law,

which guarantee a basic right known as the right to
national treatment in each of the member countries;

 A second category establishes another basic right

known as the right of priority;

 A third category defines a certain number of

common rules in the field of substantive law which
contain either rules establishing rights and obligations
of natural persons and legal entities, or rules requiring
or permitting the member countries to enact legislation
following those rules;

 A fourth category deals with the administrative

framework which has been set up to implement the
Convention, and includes the final clauses of the
Convention.

National Treatment Principle

 National treatment means that, as regards the
protection of industrial property, each country party to
the Paris Convention must grant the same protection to
nationals of the other member countries as it grants to its
own nationals.

 The same national treatment must be granted

to nationals of countries, which are not party to the
Paris Convention if they are domiciled in a member
country or if they have a “real and effective”
industrial or commercial establishment in such a
country.

 This national treatment rule guarantees not

only that foreigners will be protected, but also
that they will not be discriminated against in any
way. The national treatment rule applies first of all
to the “nationals” of the member countries. The term
“national” includes both natural persons and legal
entities.

Right of Priority

Section 131, Priority right

 The right of priority means that, on the basis of a
regular application for an industrial property right filed
by a given applicant in one of the member countries, the
same applicant (or its or his successor in title) may,
within a specified period of time (six or 12 months),
apply for protection in all the other member
countries. These later applications will then be regarded
as if they had been filed on the same day as the earliest
application.

The TRIPS Agreement

 Standards. In respect of each of the main areas of

intellectual property covered by the TRIPS Agreement,
the Agreement sets out the minimum standards of
protection to be provided by each Member. Each of the
main elements of protection is defined, namely the
subject-matter to be protected, the rights to be
conferred and permissible exceptions to those rights,
and the minimum duration of protection

 Enforcement. The second main set of provisions

deals with domestic procedures and remedies for the
enforcement of intellectual property rights. The
Agreement lays down certain general principles
applicable to all IPR enforcement procedures.

 Dispute settlement. The Agreement makes disputes

between WTO Members about the respect of the
TRIPS obligations subject to the WTO's dispute
settlement procedures.

Trademarks

Visually perceptible under IP Code; perceptible

under the US Lanham Act

 Any sign, or any combination of signs, capable of

distinguishing the goods and services of one
undertaking from those of other undertakings, must
be eligible for registration as a trademark, provided that
it is visually perceptible.

 The TRIPS Agreement contains certain provisions on

well-known marks, which supplement the protection required
by Article 6bis of the Paris Convention, as incorporated by
reference into the TRIPS Agreement, which obliges Members
to refuse or to cancel the registration, and to prohibit the
use of a mark conflicting with a mark which is well known.
Geographical indications

 Geographical indications are defined, for the

purposes of the Agreement, as indications which
identify a good as originating in the territory of a
Member, or a region or locality in that territory,
where a given quality, reputation or other
characteristic of the good is essentially attributable
to its geographical origin.

Visible Sign

 The term "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.

 The IP Code does not provide for registration of

trade names, but only for registration of trademarks. It
provides that notwithstanding any laws or regulations
providing for any obligation to register trade names,
such names shall be protected, even prior to or
without registration, against any unlawful act
committed by third parties in literal compliance
with the provisions of the Paris Convention.
  “Collective mark” means any visible sign
designated as such in the application for registration
and capable of distinguishing the origin or any other
common characteristic, including the quality of goods
or services of different enterprises which use the sign
under the control of the registered owner of the
collective mark. Collective marks indicate origin in
members of a group while a trademark indicates a
single origin for the goods bearing the trademark.

Economic Function

 A 'trade-mark' is a distinctive mark of

authenticity through which the goods of a particular
producer or manufacturer may be distinguished from
those of others, and its sole function is to designate
distinctively the origin of the products to which it is
attached.

Source-Indicating Function

 The ability of a trademark to distinguish the product

to which it is affixed from competing goods of other
 manufacturers is in legal language called the
distinctiveness of a trademark. The traditional legal
function of a trademark therefore is to indicate the
source or origin of the goods on which it is used.

Guarantee Function

 Trademarks also serve to guarantee that the

product to which it is affixed comes up to a certain
standard of quality. In its guarantee function, a trade-
mark is a distinctive mark of authenticity through
which the goods of a particular producer or
manufacturer may be distinguished from those of
others.

Advertisement Function

 The ability of a trademark to indicate the source

or origin of the product on which it is used and ensure
that the product comes up to the quality or standard
that consumers have come to expect from it combine
to give effect to the advertising function of trademark
among consumers.
Distinctiveness

 The distinctiveness of a trademark determines its

relative strength or weakness. In other words, the
strength of a mark denotes its tendency to
identify the goods sold under the mark as
emanating from a particular source.

Spectrum of Distinctiveness

Generic Marks

 Since mark is intended to be an indication of the

origin of the goods or services on which it is used, a
mark cannot be registered if it consists exclusively of
signs that are generic for the goods or services that they
seek to identify. A generic word is unregistrable as a
mark because it totally lacks distinctiveness.

e.g. The trademarks T-JOIST and TEE JOISTS

ostensibly for floor and roof systems, but actually for
joists shaped like the capital letter T, are generic.

e. g. When a generic term is made part of an otherwise

registrable mark, it must be disclaimed before the
composite mark may be registered. The basic purpose of
disclaimers is to make of record that a significant
element of a composite mark is not being exclusively
appropriated by itself apart from the composite.
Case:

Ong Ai Gui Alias Tan Ai Gui vs. The Director of the

Philippines Patent office, respondent. E. I. Du Pont De
Nemours and Company, intervenor G.R. No. L-6235
March 28, 1955.

e.g. "Nylon" used in connection with shirt-making, can

never become distinctive or acquire secondary meaning
because it is a generic term, like cotton, silk, linen, or
ramie.

Case: Mcdonald’s Corporation et.al. vs. L.C. Big Mak

Burger, Inc., et. al., G.R. No. 143993, August 18, 2004

e.g. The BIG MAC mark, which should be treated in its

entirety and not dissected word for word, is neither
generic nor descriptive. Generic marks are commonly
used as the name or description of a kind of goods, such
as “Lite” for beer or “Chocolate Fudge” for chocolate
soda drink.
Descriptive Marks

 Descriptive marks, on the other hand, convey the

characteristics, functions, qualities or ingredients of a
product to one who has never seen it or does not know it
exists, such as “Arthriticare” for arthritis medication. On
the contrary, “Big Mac” falls under the class of fanciful
or arbitrary marks as it bears no logical relation to the
actual characteristics of the product it represents.
 Section 123.1 (j) precludes the registration of a
mark that “consists exclusively of signs or of indications
that may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin,
time or production of the goods or rendering of the
services, or other characteristics of the goods or
services.”

Suggestive Marks

 A suggestive mark is therefore a word, picture, or

other symbol that suggests, but does not directly
describe, something about the goods or services in
connection with which it is used as a mark.1 Suggestive
1
McCarthy’s Desk Encyclopedia of Intellectual Property, 1991 Ed., p. 322.
marks are those which require imagination, thought or
perception to reach a conclusion as to the nature of the
goods or services. Thus, a suggestive term differs from a
descriptive term, which immediately tells something
about the goods or services.2 Suggestive marks, like
fanciful and arbitrary marks, are registrable without
proof of secondary meaning.

Case: American Wire & Cable Company vs. Director of

Patents and Central Banahaw Industries, G.R. No. L-
26557 February 18, 1970.

e.g. The trademark DYNAFLEX for electrical wires is a

combination of the words FLEX, which means bend, and
the prefix DYNA, which suggests power. DYNA is not
in itself a root word but it has been commonly associated
with any source of power.

Arbitrary or Fanciful Marks

 An arbitrary mark is a word or picture that is in

common linguistic use but which, when used in
connection with certain goods or services, neither
2
See In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely descriptive of a
snow removal hand tool). See also In re Quik-Print Copy Shop, Inc., 203 USPQ 624 (TTAB 1979),
aff'd, 616 F.2d 523, 205 USPQ 505 (C.C.P.A. 1980) (QUIK-PRINT held merely descriptive of
printing services); In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984) (BUG MIST held
merely descriptive of insecticide).
suggests nor describes any quality or characteristic of
those particular goods or services. Arbitrary marks are
inherently distinctive and need no proof of secondary
meaning to be regarded as valid for registration or legal
protection.

Case: Andres Romero vs. Maiden form Brassiere Co.,

Inc. and The Director of Patents, respondents. G.R. No.
L-18289 March 31, 1964.

Case: Masso Hermanos, S.A.vs.Director of Patents,

G.R. No. L-3952 December 29, 1953

e.g. Trademarks derived from coined words such as

"Rolex," "Kodak" or "Kotex" are most distinctive

e.g "Cosmopolite" does not give the name, quality or

description of the canned fish for which it is used. It
does not even describe the place of origin, for it does not
indicate the country or place where the canned fish was
manufactured. It is a very general term which does not
give the kind or quality of the goods.

e.g. The musical term ADAGIO is used in an arbitrary or

fanciful sense for brassiere.
Immoral and Scandalous Marks

 Section 123.1 (a) states that a mark cannot be

registered if it consists of immoral, deceptive or
scandalous matter, or matter which may disparage or
falsely suggest a connection with persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt or disrepute. Paragraph (m) also precludes
the registration of a mark that is contrary to public order
or morality.

Case: In re Runsdorf, 171 USPQ 443, 444 (TTAB

1971). See also In re Tinseltown, Inc., 212 USPQ 863
(TTAB 1981)

e.g. The mark BULLSHIT is considered "profane" and

was declared scandalous for "accessories of a personal
nature ... attaché cases, hand bags, purses, belts, and
wallets."

Disparaging Marks

Section 168.3 (c), IP Code

Case: In re Runsdorf, 171 USPQ 443, 444 (TTAB
1971). See also In re Tinseltown, Inc., 212 USPQ 863
(TTAB 1981)

 Section 123.1 (a) bars the registration of any mark

that consists of or comprises matter which, with regard
to persons, institutions, beliefs, or national symbols,
does any of the following: (1) disparages them, (2)
falsely suggests a connection with them, (3) brings them
into contempt, or (4) brings them into disrepute.

Disparagement is essentially a violation of one's right of

privacy -- the right to be "let alone" from contempt or
ridicule.

Elements of disparagement are (1) that the

communication reasonably would be understood as
referring to the plaintiff; and (2) that the communication
is disparaging, and would be considered offensive or
objectionable by a reasonable person of ordinary
sensibilities.

e.g. INTEL, INUTEL INSIDE

National Symbols
 Designations have been held to be national symbols
within the meaning of the Act

e.g. Hammer and sickle is a national symbol of the

Union of Soviet Socialist Republics; the American or
bald eagle with wings extended is a well-known national
symbol or emblem of the United States.

False Suggestion of a Connection

 Section 123.1 (a) prohibits the registration of a mark

that consists of or comprises matter which may falsely
suggest a connection with persons, institutions, beliefs or
national symbols.

 National Flag or Coat of Arms


Section 123.1 (b) precludes the registration of a mark
which consists of the flag or coat of arms or other
insignia of the Philippines or any of its political
subdivisions, or of any foreign nation, or any simulation
thereof.
Name, Portrait and Signature Marks
Section 123.1 (c) prohibits the registration of a mark
which consists of a name, portrait or signature
identifying a particular living individual except by his
written consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of
his widow, if any, except by written consent of the
widow.

e.g. PRINCE CHARLES, 'Name' in this section is not

restricted to the full name of an individual but refers to
any name regardless of whether it is a full name, or a
surname or given name, or even a nickname, which
identifies a particular living individual.

Particular Living Individual or Deceased President

 Section 123.1 (c) applies to marks that comprise

matter which identifies living individuals; it does not
apply to marks that comprise matter which identifies
deceased persons
e.g. greeting cards consisting of the name
EISENHOWER, a portrait of President Dwight D.
Eisenhower

e.g. When a name, portrait or signature in a mark

identifies a particular living individual, or a deceased
president of the country during the life of his widow, the
mark can be registered only if the written consent of the
individual, or of the president's widow, is filed in the
application.

 Conflicting Marks

Section 123.1 (d) prohibits the registration of a mark is

it is identical with a registered mark belonging to a
different proprietor or a mark with an earlier filing or
priority date in respect of (i) the same goods or services
(ii) closely related goods or services, or (iii) if it nearly
resembles such a mark as to be likely to deceive or cause
confusion.

Under Section 147.1, in case of use of an identical sign

for identical goods or services, a likelihood of confusion
shall be presumed.
 Confusing Similarity with Registered Marks

Note: If the competing trademarks contain the main or

essential or dominant features of another, and confusion
and deception is likely to result, infringement takes
place. Duplication or imitation is not necessary; nor is it
necessary that the infringing label should suggest an
effort to imitate.

 Consent Agreements

A "consent agreement" refers to an agreement in which a

party, such as a prior registrant, consents to the use
and/or registration of a mark by another party, like an
applicant for registration of the same mark or a similar
mark. It may also refer to an agreement in which each
party consents to the use and/or registration of the same
mark or a similar mark by the other party. A consent
agreement that is not merely a "naked" consent specifies
the reasons why no likelihood of confusion exists and/or
arrangements undertaken by the parties to avoid
confusion of the public.

 Relatedness of the Goods or Services

The goods or services do not need to be identical or even
competitive to justify a determination that there is a
likelihood of confusion. It is sufficient that the goods or
services of the applicant and the registrant are related in
some manner or that the circumstances surrounding their
marketing are such that they are likely to confuse
consumers.

e.g. MARTIN'S for wheat bran and honey bread likely to

be confused with MARTIN'S for cheese

e.g. LAREDO for land vehicles LAREDO for pneumatic

tires

Comparing Word Marks

 Similarity in appearance is one consideration in

determining whether there is a likelihood of confusion
between marks. Likelihood of confusion is not avoided
between otherwise confusingly similar marks merely by
adding or deleting a house mark or matter that is
descriptive or suggestive of the named goods or services.

e.g. Thus, TRUCOOL for synthetic coolant was held

likely to be confused with TURCOOL for cutting oil
 Design Marks

When the marks at issue are both design marks, the issue
of the similarity of the marks must be decided primarily
on the basis of visual similarity. In this situation,
consideration must be given to the fact that a purchaser's
recollection of design marks is often of a general and
hazy nature.

e.g. a design mark consisting of an abstract circular

design mark for seafood was held not likely to be
confused with oval breaking wave design for various
food items including juices and fruits.

 Confusing Similarity with Well-Known Marks

 Section 123.1 (e) precludes the registration of a

mark which is identical with, or confusingly similar to,
or constitutes a translation of a mark which is considered
by the competent authority of the Philippines to be well-
known internationally and in the Philippines, whether or
not it is registered here, as being already the mark of a
person other than the applicant for registration, and used
for identical or similar goods or services: Provided, That
in determining whether a mark is well-known, account
shall be taken of the knowledge of the relevant sector of
the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as
a result of the promotion of the mark;

 On the other hand, Section 123.1 (f) prohibits

the registration of a mark which is identical with, or
confusingly similar to, or constitutes a translation of a
mark considered well-known in accordance with the
preceding paragraph, which is registered in the
Philippines with respect to goods or services which are
not similar to those with respect to which registration is
applied for: Provided, That use of the mark in relation to
those goods or services would indicate a connection
between those goods or services, and the owner of the
registered mark: Provided further, That the interests of
the owner of the registered mark are likely to be
damaged by such use

Case: 246 CORPORATION, doing business under the

name and style of Rolex Music Lounge vs. Hon.
Reynaldo B. Daway, Montes Rolex S.A. and Rolex
Centre Phil. Limited
e.g. ROLEX, KODAK

ROLEX cannot be appropriated as part of ROLEX

MUSIC LOUNGE

e.g. In Montres Rolex, S.A., Rolex (Hong Kong) Ltd.)

and Rolex Center Limited Philippine Branch versus
Rolex Plastic Manufacturing Corporation,3 Montres
Rolex S. A. sought the compulsory change the name of
Rolex Plastic Manufacturing Corporation, by deleting its
well-known trademark and Rolex from the corporate
name.

 Deceptive Marks

Section 123.1 (g) of the Intellectual Property Code

precludes the registration of deceptive marks or those
that are “likely to mislead the public, particularly as to
the nature, quality, characteristics or geographical origin
of the goods or serves.”

3
Case No. Q-01-45285 (SEC Case No. 682),
e.g. use of the term "nylon" in the trade-name is both
"descriptive" and "deceptively and misdescriptive" of the
applicant-appellant's business, for apparently he does not
use nylon in the manufacture of the shirts, pants.

Deceptive marks may include marks which falsely

describe the material content of a product and marks
which are geographically.
Neither a disclaimer of deceptive matter nor a claim that
it has acquired distinctiveness can obviate a rejection on
the ground that the mark consists of or comprises
deceptive matter.

 Signs Indicating Quality, Kind, Geographical

Origin

Section 123.1 (j) precludes the registration of a mark that

“consist exclusively of signs or of indications that may
serve in trade to designate the geographical origin” of
the goods of services. While the language suggests that
they may be registered as part of registrable matter, they
must nonetheless be disclaimed on the basis of the
principle that they cannot be exclusively appropriated.
Case: Asia Brewery, Inc. vs. The Hon. Court of Appeals
and San Miguel Corporation, G.R. No. 103543 July 5,
1993.
e.g, "Pilsen" is a "primarily geographically descriptive
word." It is unregistrable and not appropriable by any
beer manufacturer because it refers to a type of beer
("pilsen")

Descriptive Trademarks

Marks that are “merely descriptive” when applied to or

used in connection with the goods, business or services
of the applicant or “deceptively misdescriptive” of them
are not registrable.

e.g. a dealer in shoes cannot register "Leather Shoes" as

his trademark because that would be merely descriptive;

Case: Lyceum of The Philippines, Inc. vs. Court of

Appeals, Lyceum of Aparri, Lyceum of Cabagan,
Lyceum of Camalaniugan, Inc., Lyceum of Lallo, Inc.,
Lyceum of Tuao, Inc., Buhi Lyceum, Central Lyceum of
Catanduanes, Lyceum of Southern Philippines, Lyceum
of Eastern Mindanao, Inc. and Western Pangasinan
Lyceum, Inc. G.R. No. 101897 March 5, 1993.
e.g. LYCEUM for an educational institution is merely
descriptive of its purpose and its first user may not
prohibit others from using the word to apply to their
school of learning.

 Geographical Marks under the TRIPS

Agreement

Under the Agreement on Trade Related Aspects of

Intellectual Property Rights. (TRIPS Agreement),
geographical indications are those which identify a good
as originating in the territory of a Member, or a region or
locality in that territory, where a given quality,
reputation or other characteristic of the good is
essentially attributable to its geographic origin.

Functional Marks

Section 123.1 (k) of the Intellectual Property Code

explicitly precludes the registration of “shapes that may
be necessitated by the nature of the goods themselves or
factors that affect their intrinsic value.”
e.g. under this provision, the shape of a hat will be
unregistrable as a trademark for hat since the shape is
dictated by the nature of the good itself.

Color Marks

Under Section 123.1 (l), a mark consisting of color

alone cannot be registered as a mark unless defined by a
given form. It is fundamental in trademark jurisprudence
that color alone, unless displayed in a distinct or
arbitrary design, does not function as a trademark. In one
case, the colors black and red are not so displayed by the
petitioner, and are primary colors commonly and freely
used in the printing business.

Secondary Meaning

Section 123.2 of the Intellectual Property Code allows

the registration of marks mentioned in paragraphs (j), (k)
and (l), “which have become distinctive in relations to
the goods for which registration is requested as a result
of the use that has been made of it in commerce in the
Philippines. The IPO may accept as prima facie
evidence that the mark has become distinctive, as used in
connection with the applicant’s goods in commerce,
proof of substantially exclusive and continuous use
thereof by the applicant in commerce in the Philippines
for five years before the date on which the claim of
distinctiveness is made.” The Intellectual Property Code
therefore recognizes that marks that are unregistrable
under its Section 123.1, paragraphs (j), (k) and (l), may
nonetheless become registrable after they have acquired
secondary meaning.

Case: Ana L. Ang vs. Toribio Teodoro, G.R. No. L-

48226 December 14, 1942

The doctrine of "secondary meaning" is to the effect that

a word or phrase originally incapable of exclusive
appropriation with reference to an article of the market,
because geographically or otherwise descriptive, might
nevertheless have been used so long and so exclusively
by one producer with reference to his article that, in that
trade and to that branch of the purchasing public, the
word or phrase has come to mean that the article was his
product.

 Prior Use
Prior use must be trademark use in the legal and
protectable sense. Thus, if the trademark itself, like
“Nylon” is not legally protectable no length of use and
no amount of advertising will make it distinctive of
shirts or of the business of manufacturing them.

Prior use by one will controvert a claim of legal

appropriation, by subsequent users. In the case at bar, the
Director of Patents found that "ample evidence was
presented in the record that Centennial Mills, Inc. was
the owner and prior user in the Philippines of the
trademark 'All Montana' through a local importer and
broker. Use of a trademark by a mere importer, indentor
or exporter inures to the benefit of the foreign
manufacturer whose goods are identified by the
trademark.

The Territoriality of Rights in Marks

 Before the Philippine adherence to the TRIPS

Agreement and the enactment of the IP Code, the
unyielding doctrine of the Supreme Court has been that
trademark rights are territorial and cannot extend to
 markets which the goods bearing the trademark have
not reached.

 The principle of territoriality of the Trademark

Law has been recognized in the Philippines. As
Callmann puts it, the law of trademarks "rests upon
the doctrine of nationality or territoriality." The
mere origination or adoption of a particular trade name
without actual use thereof in the market is insufficient to
give any exclusive right to its use,4 even though such
adoption is publicly declared, such as by use of the name
in advertisements, circulars, price lists, and on signs and
stationery.

 A trade-mark acknowledges no territorial

boundaries of municipalities or states or nations, but
extends to every market where the trader's goods have
become known and identified by the use of the mark.

 Prior Use of Marks

 Prior use must be trademark use in the legal and

protectable sense. Thus, if the trademark itself, like
4
(Johnson Mfg. Co. v. Leader Filling Stations Corp. 196 N.E. 852, 291 Mass. 394)
“Nylon” is not legally protectable no length of use and
no amount of advertising will make it distinctive of
shirts or of the business of manufacturing them.

 Prior use by one will controvert a claim of legal

appropriation, by subsequent users. Use of a trademark
by a mere importer, indentor or exporter inures to the
benefit of the foreign manufacturer whose goods are
identified by the trademark. Where the Junior Party has
established a continuous chain of title and, consequently,
prior adoption and use it is safe to conclude that the
Junior Party has satisfactorily discharged the burden of
proving priority of adoption and use and is entitled to
registration.

 Doctrine of Related Goods

 Goods are related when they belong to the same

class or have the same descriptive properties; when they
possess the same physical attributes or essential
characteristics with reference to their form, composition,
texture or quality. They may also be related because they
serve the same purpose or are sold in grocery stores.
Case: Faberge, Incorporated vs. The Intermediate
Appellate Court and Co Beng Kay, G.R. No. 71189
November 4, 1992

e.g. In Faberge Incorporated vs. Intermediate Appellate

Court, the Third Division of the Supreme Court
attempted to lay this issue to rest on the basis of the
literal and restrictive language of Section 20 of the
Trademark Law. The Court allowed the registration of
the trademark "BRUTE" for briefs in the name of
respondent since Faberge using its mark BRUT only on
after-shave lotion, shaving cream, deodorant, talcum
powder and toilet soap.

 Well-Known Marks

 The Supreme Court in La Chemise Lacoste has held

that the Philippines is bound to accord protection to
well-known trademarks under Article 6bis of the Paris
Convention.

Case: In 246 CORPORATION, doing business under the

name and style of Rolex Music Lounge vs. Hon.
Reynaldo B. Daway, Montes Rolex S.A. and Rolex
Centre Phil. Limited,5 upheld an injunction in favor of
Montres Rolex SA against the use of its trademark
ROLEX by Rolex Music Lounge.

e.g. The Supreme Court cited Section 123.1 (f) of the IP

Code and noted that the provision prohibits the
appropriation of well-known marks that are registered in
the Philippines not only for goods that are similar but
also for goods that are not similar to those for which the
owner had registered its well-known mark in the
Philippines.

 Actual Use of Marks

 Rights in marks are acquired through actual use in

commerce. Advertising is not use.

 Excusable Non-Use

 Failure of the applicant to file a declaration

and evidence of actual use within three years from the
filing date of the application shall result in the rejection
of the application or the cancellation of the registration
certificate if it has been issued
5
G.R. No. 157216. November 20, 2003
 Non-use of a mark may be excused if caused
by circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-use
of a mark

 Use by Related
Company

Section 52.4 of the IP Code

 The use of a mark by a company

related with the registrant or applicant shall inure to the
latter's benefit, and such use shall not affect the validity
of such mark or of its registration. This is subject to the
condition that such mark is not used in such manner as
to deceive the public.

 A related company may be either a

natural person or a juristic person. A party may claim
use of a mark through a related company provided the
party relying on such use controls the nature and quality
of the goods or services on or in connection with which
the mark is used.
First-to-File and First-to-Use

 The rights in a mark shall be acquired through

registration made validly in accordance with the
provisions of this law. Rights are not acquired by mere
registration. Mere registration without actual use does
not lead to acquisition of trademark rights since the
applicant or registrant’s failure to use the mark in
commerce within three years from the filing date of the
application leads to rejection.

 A trademark owner who is first to file an

application for the registration of a mark acquires the
limited right to have his application examined ahead of
any identical or similar mark.

 The applicant who has the earliest filing date

may not necessarily end up as the registered owner of a
mark. His application for the registration of the mark
may be rejected if it is identical with, or confusingly
similar to, or constitutes a translation of a mark which is
considered by the competent authority of the Philippines
to be well-known internationally and in the Philippines.

 Rights Conferred by Registration

 Sections 147.1 and 147.2, IP Code,
Rights Conferred

147.1. The owner of a registered mark shall have the

exclusive right to prevent all third parties not having
the owner’s consent from using in the course of trade
identical or similar signs or containers for goods or
services which are identical or similar to those in
respect of which the trademark is registered where
such use would result in a likelihood of confusion. In
case of the use, of an identical sign for identical goods
or services, a likelihood of confusion shall be
presumed.
147.2. The exclusive right of the owner of a well-
known mark defined in Subsection 123.1(e) which is
registered in the Philippines, shall extend to goods
and services which are not similar to those in respect
of which the mark is registered: Provided, That use of
that mark in relation to those goods or services would
indicate a connection between those goods or services
and the owner of the registered mark: Provided further,
That the interests of the owner of the registered mark
are likely to be damaged by such use.
 Section 148, IP Code, Use of Indications
by Third Parties for Purposes Other than those for which
the mark is used.
Registration of the mark shall not confer on the
registered owner the right to preclude third parties from
using bona fide their names, addresses, pseudonyms, a
geographical name, or exact indications concerning the
kind, quality, quantity, destination, value, place of
origin, or time of production or of supply, of their goods
or services: Provided, That such use is confined to the
purposes of mere identification or information and
cannot mislead the public as to the source of the goods
or services.
Case: Playboy v Terri Welles

 Section 150, IP Code License Contracts

Section 152.1 to 152.4, Non-use of Mark When

Excused

Non-use of a mark may be excused if caused by

circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-use
of a mark. The special circumstances to excuse non-use
in affidavits of non-use shall not be accepted unless they
are clearly beyond the control of the registrant such as
the prohibition of sale imposed by government
regulation.

 Enforcement of Rights on Marks

 Section 134, Opposition

Any person who believes that he would be damaged by
the registration of a mark may, upon payment of the
required fee and within thirty (30) days after the
publication referred to in Subsection 133.2, file with the
Office an opposition to the application.
Such opposition shall be in writing and verified by the
oppositor or by any person on his behalf who knows the
facts, and shall specify the grounds on which it is based
and include a statement of the facts relied upon. Copies
of certificates of registration of marks registered in other
countries or other supporting documents mentioned in
the opposition shall be filed therewith, together with the
translation in English, if not in the English language.
For good cause shown and upon payment of the required
surcharge, the time for filing an opposition may be
extended by the Director of Legal Affairs, who shall
notify the applicant of such extension. The Regulations
shall fix the maximum period of time within which to
file the opposition.
 120-day period for notice of opposition, affidavit
with supporting documentary evidence, power of
attorney
 120-day period for respondent’s answer, affidavit
with supporting documentary evidence, power of
attorney
 Summary rules of procedure – decision to be
rendered on the basis of the documents submitted, with
opportunity to file a memorandum and a draft decision.

Sec. 155. Remedies; Infringement

Any person who shall, without the consent of the owner
of the registered mark:
155.1. Use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or the
same container or a dominant feature thereof in
connection with the sale, offering for sale, distribution,
advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or
to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate
a registered mark or a dominant feature thereof and
apply such reproduction, counterfeit, copy or colorable
imitation to labels, signs, prints, packages, wrappers,
receptacles or advertisements intended to be used in
commerce upon or in connection with the sale, offering
for sale, distribution, or advertising of goods or services
on or in connection with which such use is likely to
cause confusion, or to cause mistake, or to deceive, shall
be liable in a civil action for infringement by the
registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the
moment any of the acts stated in Subsection 155.1 or
this subsection are committed regardless of whether
there is actual sale of goods or services using the
infringing material.

 Measure of Damage
 The measure of the damages suffered shall be either
the reasonable profit which the complaining party would
have made.
 Profit which the defendant actually made out of the
infringement
 Court may award as damages a reasonable
percentage based upon the amount of gross sales of the
defendant

 Border Control
Sec. 166. Goods Bearing Infringing Marks or Trade
Names
No article of imported merchandise which shall
copy or simulate the name of any domestic product, or
manufacturer, or dealer, or which shall copy or simulate
a mark registered in accordance with the provisions of
this Act, or shall bear a mark or trade name calculated to
induce the public to believe that the article is
manufactured in the Philippines, or that it is
manufactured in any foreign country or locality other
than the country or locality where it is in fact
manufactured, shall be admitted to entry at any
customhouse of the Philippines.