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L AW O N

T RA D E M A R K S ,
T RA D E N A M E S A N D
S E RV I C E M A R K S
DEFINITION OF TRADEMARKS

STANDARD FOR REGISTRABILITY


DISTINCTIVENESS

Section 121.1, IPC


SECTION 121. Definitions. As used in
Part III, the following terms have the
following meanings:
"Mark" means any visible sign capable of
distinguishing the goods (trademark) or
services (service mark) of an enterprise and
shall include a stamped or marked container
of good.

Distelleria Washington v. CA, 263


SCRA 303

FUNCTIONS OF TRADEMARKS
Ang v. Teodoro, 74 Phil 50
Etepha v. Director of Patents, 16
SCRA 495
Mirpuri v. Court of Appeals, 318
SCRA 516 (1999)

HOW ARE MARKS ACQUIRED?


Section 122, IPC
SECTION 122. How Marks are Acquired.
The rights in a mark shall be acquired
through
registration
made
validly
in
accordance with the provisions of this law.
Contrast this with Sec. 2-A of Republic Act
No. 166 and cases decided under RA 166

Unno Commercial Enterprises v.


General Milling Corp., 120 SCRA
904
Kabushi Kaisha Isetan v. IAC, 203
SCRA 583

Philip Morris v. CA, 224 SCRA 576


Philip Morris v. Fortune Tobacco,
GR No. 158589, 27 June 2006
Shangrila v. DCCI, GR No. 159938,
31 March 2006
Shangrila v DCCI, Gr No. 159938, 22
January 2007

CLASSIFICATION OF MARKS AND


REQUIREMENTS FOR PROTECTION

Zatarains, Inc. v. Oak Grove


Smokehouse, Inc.

DISTINCTIVENESS OF TRADE DRESS AND


PRODUCT CONFIRMATION

Two Pesos, Inc. v. Taco Cabana,


Inc. 698 F2d 786 (1983)
Wal-Mart Stores, Inc. v. Samara
Brothers, Inc. 529 U.S. 205 (2000)

WHAT MARKS MAY BE REGISTERED?


Sec 123 (and its sub-paragraph), IPC
SECTION 123. Registrability.
123.1. A mark cannot be registered if it:
a. Consists of immoral, deceptive or
scandalous matter, or matter which may
disparage or falsely suggest a connection
with persons, living or dead, institutions,
beliefs, or national symbols, or bring them
into contempt or disrepute;
b. Consists of the flag or coat of arms or
other insignia of the Philippines or any of its
political subdivisions, or of any foreign
nation, or any simulation thereof;
c. Consists of a name, portrait or signature
identifying a particular living individual
except by his written consent, or the name,
signature, or portrait of a deceased President
of the Philippines, during the life of his

widow, if any, except by written consent of


the widow;
d. Is identical with a registered mark
belonging to a different proprietor or a mark
with an earlier filing or priority date, in
respect of:
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be
likely to deceive or cause confusion;
e. 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;
f. 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;
g. Is likely to mislead the public, particularly
as to the nature, quality, characteristics or
geographical origin of the goods or services;
h. Consists exclusively of signs that are
generic for the goods or services that they
seek to identify;

i. Consists exclusively of signs or of


indications that have become customary or
usual to designate the goods or services in
everyday language or in bona fide and
established trade practice;
j. 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;
k. Consists of shapes that may be
necessitated by technical factors or by the
nature of the goods themselves or factors
that affect their intrinsic value;
l. Consists of color alone, unless defined by a
given form; or
m. Is contrary to public order or morality.

Etepha v. Director of Patents, 16


SCRA 495
Baxter v. Zuasua, 5 Phil 160
Compania Gral de Tabacco v.
Alhambra Cigar, 33 Phil 485
Ang v. Teodoro, 74 Phil 50
Arce Sons v. Selecta Biscuits, 1
SCRA 253
Kabushi Kaisha Isetan v. IAC, 203
SCRA 583
Asia Brewery v. CA, 224 SCRA 437
(1993)
Emerald Garment Manufacturing
v. CA, 251 SCRA 600
Qualitex Co. v. Jacobson Products
Co., Inc. 514 U.S. 159 (1995)
Christian Louboutin, S.A. v. Yves
Saint Laurent Amercia Holdings,
Inc. 778 F. Supp. 2d 448. (2012)

APPLICATION FOR REGISTRATION


APPLICATION
Sec. 123, IPC
SECTION 123. Registrability.

123.1. A mark cannot be registered if it:


a. Consists of immoral, deceptive or
scandalous matter, or matter which may
disparage or falsely suggest a connection
with persons, living or dead, institutions,
beliefs, or national symbols, or bring them
into contempt or disrepute;
b. Consists of the flag or coat of arms or
other insignia of the Philippines or any of its
political subdivisions, or of any foreign
nation, or any simulation thereof;
c. Consists of a name, portrait or signature
identifying a particular living individual
except by his written consent, or the name,
signature, or portrait of a deceased President
of the Philippines, during the life of his
widow, if any, except by written consent of
the widow;
d. Is identical with a registered mark
belonging to a different proprietor or a mark
with an earlier filing or priority date, in
respect of:
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be
likely to deceive or cause confusion;
e. 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;
f. 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;
g. Is likely to mislead the public, particularly
as to the nature, quality, characteristics or
geographical origin of the goods or services;
h. Consists exclusively of signs that are
generic for the goods or services that they
seek to identify;
i. Consists exclusively of signs or of
indications that have become customary or
usual to designate the goods or services in
everyday language or in bona fide and
established trade practice;
j. 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;
k. Consists of shapes that may be
necessitated by technical factors or by the
nature of the goods themselves or factors
that affect their intrinsic value;
l. Consists of color alone, unless defined by a
given form; or
m. Is contrary to public order or morality.
123.2. As regards signs or devices mentioned
in paragraphs (j), (k), and (l), nothing shall
prevent the registration of any such sign or
device which has become distinctive in
relation to the goods for which registration is
requested as a result of the use that have
been made of it in commerce in the
Philippines. The Office may accept as prima
facie evidence that the mark has become
distinctive, as used in connection with the

applicant's goods or services in commerce,


proof
of
substantially
exclusive
and
continuous use thereof by the applicant in
commerce in the Philippines for five (5) years
before the date on which the claim of
distinctiveness is made.
123.3. The nature of the goods to which the
mark is applied will not constitute an
obstacle to registration.
Sections 124 (and its sub-paragraphs), 125,
126, 128, 130 (and its sub- paragraphs), IPC
SECTION 124. Requirements of
Application.
124.1. The application for the registration of
the mark shall be in Filipino or in English and
shall contain the following:
a. A request for registration;
b. The name and address of the applicant;
c. The name of a State of which the applicant
is a national or where he has domicile; and
the name of a State in which the applicant
has a real and effective industrial or
commercial establishment, if any;
d. Where the applicant is a juridical entity,
the law under which it is organized and
existing;
e. The appointment of an agent or
representative, if the applicant is not
domiciled in the Philippines;
f. Where the applicant claims the priority of
an earlier application, an indication of:
i. The name of the State with whose national
office the earlier application was filed or if
filed with an office other than a national
office, the name of that office,
ii. The date on which the earlier application
was filed, and
iii. Where available, the application number
of the earlier application;
g. Where the applicant claims color as a
distinctive feature of the mark, a statement

to that effect as well as the name or names


of the color or colors claimed and an
indication, in respect of each color, of the
principal parts of the mark which are in that
color;
h. Where the mark is a three-dimensional
mark, a statement to that effect;
i. One or more reproductions of the mark, as
prescribed in the Regulations;
j. A transliteration or translation of the mark
or of some parts of the mark, as prescribed
in the Regulations;
124.2. The applicant or the registrant shall
file a declaration of actual use of the mark
with evidence to that effect, as prescribed by
the Regulations within three (3) years from
the filing date of the application. Otherwise,
the application shall be refused or the mark
shall be removed from the Register by the
Director.
124.3. One (1) application may relate to
several goods and/or services, whether they
belong to one (1) class or to several classes
of the Nice Classification.
124.4. If during the examination of the
application, the Office finds factual basis to
reasonably doubt the veracity of any
indication or element in the application, it
may require the applicant to submit
sufficient evidence to remove the doubt.
SECTION 125. Representation; Address
for Service. If the applicant is not
domiciled or has no real and effective
commercial establishment in the Philippines,
he shall designate by a written document
filed in the Office, the name and address of a
Philippine resident who may be served
notices or process in proceedings affecting
the mark. Such notices or services may be
served upon the person so designated by
leaving a copy thereof at the address
specified in the last designation filed. If the
person so designated cannot be found at the
address given in the last designation, such
notice or process may be served upon the
Director. (Sec. 3, R.A. No. 166a)

SECTION 126. Disclaimers. The Office


may allow or require the applicant to
disclaim an unregistrable component of an
otherwise
registrable
mark
but
such
disclaimer shall not prejudice or affect the
applicant's or owner's rights then existing or
thereafter arising in the disclaimed matter,
nor such shall disclaimer prejudice or affect
the applicant's or owner's right on another
application of later date if the disclaimed
matter became distinctive of the applicant's
or owner's goods, business or services. (Sec.
13, R.A. No. 166a)
SECTION 128. Single Registration for
Goods and/or Services. Where goods
and/or services belonging to several classes
of the Nice Classification have been included
in one (1) application, such an application
shall result in one registration.
SECTION 130. Signature and
Means of Self-Identification.

Other

130.1. Where a signature is required, the


Office shall accept:
a. A hand-written signature; or
b. The use of other forms of signature, such
as a printed or stamped signature, or the use
of a seal, instead of a hand-written signature:
Provided, That where a seal is used, it should
be accompanied by an indication in letters of
the name of the signatory.
130.2.
The
Office
shall
accept
communications to it by telecopier, or by
electronic means subject to the conditions or
requirements that will be prescribed by the
Regulations. When communications are
made by telefacsimile, the reproduction of
the signature, or the reproduction of the seal
together with, where required, the indication
in letters of the name of the natural person
whose seal is used, appears. The original
communications must be received by the
Office within thirty (30) days from date of
receipt of the telefacsimile.
130.3.
No
attestation,
notarization,
authentication,
legalization
or
other
certification of any signature or other means
of self-identification referred to in the

preceding paragraphs, will be required,


except, where the signature concerns the
surrender of a registration.
Sec. 124.2, IPC
124.2. The applicant or the registrant shall
file a declaration of actual use of the mark
with evidence to that effect, as prescribed by
the Regulations within three (3) years from
the filing date of the application. Otherwise,
the application shall be refused or the mark
shall be removed from the Register by the
Director.
Sec. 131 (and its sub-paragraphs), IPC
SECTION 131. Priority Right.
131.1. An application for registration of a
mark filed in the Philippines by a person
referred to in Section 3, and who previously
duly filed an application for registration of
the same mark in one of those countries,
shall be considered as filed as of the day the
application was first filed in the foreign
country.
131.2. No registration of a mark in the
Philippines by a person described in this
section shall be granted until such mark has
been registered in the country of origin of the
applicant.
131.3. Nothing in this section shall entitle the
owner of a registration granted under this
section to sue for acts committed prior to the
date on which his mark was registered in this
country: Provided, That, notwithstanding the
foregoing, the owner of a well-known mark
as defined in Section 123.1(e) of this Act,
that is not registered in the Philippines, may,
against an identical or confusingly similar
mark, oppose its registration, or petition the
cancellation of its registration or sue for
unfair competition, without prejudice to
availing himself of other remedies provided
for under the law.
131.4. In like manner and subject to the
same conditions and requirements, the right
provided in this section may be based upon a
subsequent regularly filed application in the
same foreign country: Provided, That any

foreign application filed prior to such


subsequent application has been withdrawn,
abandoned, or otherwise disposed of,
without having been laid open to public
inspection and without leaving any rights
outstanding, and has not served, nor
thereafter shall serve, as a basis for claiming
a right of priority. (Sec. 37, R.A. No. 166a)
CLAIM OF PRIORITY DATE
Zazu Designs v. LOreal, S.A. 979 F. 2d
499 (1992)

Sec. 132.2, IPC


132.2. Once an application meets the filing
requirements of Section 127, it shall be
numbered in the sequential order, and the
applicant shall be informed of the application
number and the filing date of the application
will be deemed to have been abandoned.

EXAMINATION

Sec. 239.2, IPC

Sec. 133 (and its sub-paragraphs), IPC

239.2. Marks registered under Republic Act


No. 166 shall remain in force but shall be
deemed to have been granted under this Act
and shall be due for renewal within the
period provided for under this Act and, upon
renewal, shall be reclassified in accordance
with the International Classification. Trade
names and marks registered in the
Supplemental Register under Republic Act
No. 166 shall remain in force but shall no
longer be subject to renewal.

ASSIGNMENT OF APPLICATION NUMBER


AND FILING DATE
Sec. 127, IPC
SECTION 127. Filing Date.
127.1. Requirements. The filing date of an
application shall be the date on which the
Office received the following indications and
elements in English or Filipino:
a. An express or implicit indication that the
registration of a mark is sought;
b. The identity of the applicant;
c. Indications sufficient to contact
applicant or his representative, if any;
d. A reproduction of the
registration is sought; and

127.2. No filing date shall be accorded until


the required fee is paid.

mark

the

whose

e. The list of the goods or services for which


the registration is sought.

SECTION
133.
Publication.

Examination

and

133.1. Once the application meets the filing


requirements of Section 127,
the Office shall examine whether the
application meets the
requirements of
Section 124 and the mark as defined in
Section 121 is registrable under Section 123.
133.2. Where the Office finds that the
conditions referred to in Subsection 133.1
are fulfilled, it shall, upon payment of the
prescribed
fee,
forthwith
cause
the
application, as filed, to be published in the
prescribed manner.
133.3. If after the examination, the applicant
is not entitled to registration for any reason,
the Office shall advise the applicant thereof
and the reasons therefor. The applicant shall
have a period of four (4) months in which to
reply or amend his application, which shall
then be re-examined. The Regulations shall
determine the procedure for the reexamination or revival of an application as
well as the appeal to the Director of
Trademarks from any final action by the
Examiner.
133.4. An abandoned application may be
revived as a pending application within three
(3) months from the date of abandonment,
upon good cause shown and the payment of
the required fee.

133.5. The final decision of refusal of the


Director of Trademarks shall be appealable to
the Director General in accordance with the
procedure fixed by the Regulations. (Sec. 7,
R.A. No. 166a)
Sec. 126, IPC
SECTION 126. Disclaimers. The Office
may allow or require the applicant to
disclaim an unregistrable component of an
otherwise
registrable
mark
but
such
disclaimer shall not prejudice or affect the
applicant's or owner's rights then existing or
thereafter arising in the disclaimed matter,
nor such shall disclaimer prejudice or affect
the applicant's or owner's right on another
application of later date if the disclaimed
matter became distinctive of the applicant's
or owner's goods, business or services. (Sec.
13, R.A. No. 166a)
Sec. 129, IPC
SECTION 129. Division of Application.
Any application referring to several goods or
services, hereafter referred to as the "initial
application," may be divided by the applicant
into two (2) or more applications, hereafter
referred to as the "divisional applications," by
distributing among the latter the goods or
services referred to in the initial application.
The divisional applications shall preserve the
filing date of the initial application or the
benefit of the right of priority.

PUBLICATION
Sec. 133.2, IPC
133.2. Where the Office finds that the
conditions referred to in Subsection 133.1
are fulfilled, it shall, upon payment of the
prescribed
fee,
forthwith
cause
the
application, as filed, to be published in the
prescribed manner.

OPPOSITION
Sections 134 and 135, IPC
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. (Sec.
8, R.A. No. 165a)
SECTION 135. Notice and Hearing.
Upon the filing of an opposition, the Office
shall serve notice of the filing on the
applicant, and of the date of the hearing
thereof upon the applicant and the oppositor
and all other persons having any right, title
or interest in the mark covered by the
application, as appear of record in the Office.

Bata Industries v. CA, 114 SCRA 318


Mirpuri v. Court of Appeals, 318
SCRA 516 (1999)
Park N Fly, Inc. v. Dollar Park and
Fly, Inc. 469 U.S. 189 (1985)

ISSUANCE AND PUBLICATION OF


CERTIFICATE
Sections 136 and 137, IPC
SECTION 136. Issuance and Publication
of Certificate. When the period for filing
the opposition has expired, or when the
Director of Legal Affairs shall have denied the
opposition, the Office upon payment of the
required fee, shall issue the certificate of
registration. Upon issuance of a certificate of
registration, notice thereof making reference
to the publication of the application shall be

published in the IPO Gazette. (Sec. 10, R.A.


No. 165)

recorded address and, at the same, at his


last recorded address for service.

SECTION 137. Registration of Mark and


Issuance of a Certificate to the Owner or
his Assignee.

Sec. 138, IPC

137.1. The Office shall maintain a Register in


which shall be registered marks, numbered
in the order of their registration, and all
transactions in respect of each mark,
required to be recorded by virtue of this law.
137.2. The registration of a mark shall
include a reproduction of the mark and shall
mention: its number; the name and address
of the registered owner and, if the registered
owner's address is outside the country, his
address for service within the country; the
dates of application and registration; if
priority is claimed, an indication of this fact,
and the number, date and country of the
application, basis of the priority claims; the
list of goods or services in respect of which
registration has been granted, with the
indication of the corresponding class or
classes; and such other data as the
Regulations may prescribe from time to time.
Cdasia
137.3. A certificate of registration of a mark
may be issued to the assignee of the
applicant: Provided, That the assignment is
recorded in the
Office. In case of a change of ownership, the
Office shall at the written request signed by
the owner, or his representative, or by the
new owner, or his representative and upon a
proper showing and the payment of the
prescribed fee, issue to such assignee a new
certificate of registration of the said mark in
the name of such assignee, and for the
unexpired part of the original period.
137.4. The Office shall record any change of
address, or address for service, which shall
be notified to it by the registered owner.
137.5. In
contrary
made to
this Act

the absence of any provision to the


in this Act, communications to be
the registered owner by virtue of
shall be sent to him at his last

SECTION
138.
Certificates
of
Registration. A certificate of registration
of a mark shall be prima facie evidence of
the validity of the registration, the
registrant's ownership of the mark, and of
the registrant's exclusive right to use the
same in connection with the goods or
services and those that are related thereto
specified in the certificate.
Sec. 139, IPC
SECTION 139. Publication of Registered
Marks; Inspection of Register.
139.1. The Office shall publish, in the form
and within the period fixed by the
Regulations, the marks registered, in the
order of their registration, reproducing all the
particulars referred to in Subsection 137.2.
139.2. Marks registered at the Office may be
inspected free of charge and any person may
obtain copies thereof at his own expense.
This provision shall also be applicable to
transactions recorded in respect of any
registered mark.
Sec. 144 (and its sub-paragraphs), IPC
SECTION 144. Classification of Goods
and Services.
144.1. Each registration, and any publication
of the Office which concerns an application
or registration effected by the Office shall
indicate the goods or services by their
names, grouped according to the classes of
the Nice Classification, and each group shall
be preceded by the number of the class of
that Classification to which that group of
goods or services belongs, presented in the
order of the classes of the said Classification.

144.2. Goods or services may not be


considered as being similar or dissimilar to
each other on the ground that, in any
registration or publication by the Office, they
appear in different classes of the Nice
Classification.
Sec. 4.2, IPC
The
term
"technology
transfer
arrangements" refers to contracts or
agreements involving the transfer of
systematic knowledge for the manufacture of
a product, the application of a process, or
rendering of a service including management
contracts; and the transfer, assignment or
licensing of all forms of intellectual property
rights, including licensing of computer
software
except
computer
software
developed for mass market.

DURATION OF CERTIFICATE
Sec. 145, IPC
SECTION 145. Duration. A certificate of
registration shall remain in force for ten (10)
years: Provided, That the registrant shall file
a declaration of actual use and evidence to
that effect, or shall show valid reasons based
on the existence of obstacles to such use, as
prescribed by the Regulations, within one (1)
year from the fifth anniversary of the date of
the registration of the mark. Otherwise, the
mark shall be removed from the Register by
the Office.

VOLUNTARY CANCELLATION OF
CERTIFICATE
Sec. 140, IPC
SECTION
140.
Cancellation
upon
Application by Registrant; Amendment
or Disclaimer of Registration. Upon
application of the registrant, the Office may
permit any registration to be surrendered for
cancellation, and upon cancellation the
appropriate entry shall be made in the
records of the Office. Upon application of the
registrant and payment of the prescribed fee,
the Office for good cause may permit any
registration to be amended or to be

disclaimed in part: Provided, That the


amendment or disclaimer does not alter
materially the character of the mark.
Appropriate entry shall be made in the
records of the Office upon the certificate of
registration or, if said certificate is lost or
destroyed, upon a certified copy thereof.

CORRECTION OF MISTAKES
Sections 142 and 143, IPC
SECTION 142. Correction of Mistakes
Made by the Office. Whenever a
material mistake in a registration incurred
through the fault of the Office is clearly
disclosed by the records of the Office, a
certificate stating the fact and nature of such
mistake shall be issued without charge,
recorded and a printed copy thereof shall be
attached to each printed copy of the
registration. Such corrected registration shall
thereafter have the same effect as the
original certificate; or in the discretion of the
Director of the Administrative, Financial and
Human Resource Development Service
Bureau a new certificate of registration may
be issued without charge. All certificates of
correction heretofore issued in accordance
with the Regulations and the registration to
which they are attached shall have the same
force and effect as if such certificates and
their issuance had been authorized by this
Act.
SECTION 143. Correction of Mistakes
Made by Applicant. Whenever a mistake
is made in a registration and such mistake
occurred in good faith through the fault of
the applicant, the Office may issue a
certificate upon the payment of the
prescribed fee: Provided, That the correction
does not involve any change in the
registration that requires republication of the
mark.

RENEWAL
Sec. 146 (and Its sub-paragraphs), IPC
SECTION 146. Renewal.

146.1. A certificate of registration may be


renewed for periods of ten (10) years at its
expiration upon payment of the prescribed
fee and upon filing of a request. The request
shall contain the following indications:
a. An indication that renewal is sought;
aisadc
b. The name and address of the registrant or
his successor-ininterest, hereafter referred to
as the "right holder";
c. The registration number of the registration
concerned;
d. The filing date of the application which
resulted in the registration concerned to be
renewed;
e.
Where
the
right
holder
has
a
representative, the name and address of that
representative;
f. The names of the recorded goods or
services for which the renewal is requested
or the names of the recorded goods or
services for which the renewal is not
requested, grouped according to the classes
of the Nice Classification to which that group
of goods or services belongs and presented
in the order of the classes of the said
Classification; and
g. A signature by the right holder or his
representative.
146.2. Such request shall be in Filipino or
English and may be made at any time within
six (6) months before the expiration of the
period for which the registration was issued
or renewed, or it may be made within six (6)
months after such expiration on payment of
the additional fee herein prescribed.
146.3. If the Office refuses to renew the
registration, it shall notify the registrant of
his refusal and the reasons therefore.
146.4. An applicant for renewal not domiciled
in the Philippines shall be subject to and
comply with the requirements of this Act.
(Sec. 15, R.A. No. 166a)

RIGHTS CONFERRED;
REMEDIES: ADMINISTRATIVE
ACTION; IPV VIOLATIONS
RIGHTS CONFERRED
Sec. 147 (and Its sub-paragraphs), IPC as
amended by RA No. 9502 (Universally
Accessible Cheaper and Quality Medicines
Act of 2008)
Sec 148, IPC
Section 4.2 in relation to Sections 87 and 88,
92, IPC
Sec. 149 (and its sub-paragraphs), IPC
Sec. 150 (and its sub-paragraphs), IPC

And Tibay v. Teodoro, 84 Phil 50


Chua Che v. Philippine Patent
Office, 13 SCRA 67 (1965).
Sta. Ana v. Maliwat, 24 SCRA 108
Philippine Refining Company v. Ng
Sam, 115 SCRA 472
Esso Standard Eastern, Inc. v. CA,
116 SCRA 387
Faberge v. IAC, 215 SCRA 316
Canon Kabushiki v. CA, 116 336
SCRA 266 (2000)
Pearl & Dean v. Shoemart, 409
SCRA 231 (2003)
246 Corporation v. Daway, 416
SCRA 315 (2003)
Societe Des Produits Nestle v. CA,
356 SCRA 207 (2001)
Levi Strauss v. Clinton Apparelle,
GR No. 138900, 20 September 2005

Sec. 231, IPC

DOMAIN NAMES AND


CYBERSQUATTING

INFRINGEMENT
USE AS A TRADEMARK

Rescuecom Corp. v. Google, Inc.


562 F. 3d 123 (2009)

People for the Ethical Treatment


of Animals v. Doughney 263 F. 3d
359 (2001)
Lamparella v. Falwell 420 F. 3d 309
(2005)

FALSE ADVERTISING
LIKELIHOOD OF CONFUSION

AMF Inc. v. Sleekcraft Boats 599 F.


2d 341 (1979)

DILUTION

Louis Vuitton Malletier S.A. v.


Haute Diggity Dog, LLC 507 F. 3d
252 (2007)
Tiffany (NJ), Inc. v. eBay, Inc. 600 F.
3d 93 (2010)

Johnson & Johnson, Merck


Consumer Pharmaceuticals Co. v.
SmithKline Beecham Corp. 960 F.
2d 294 (1992)

Section 20, RA 166 as compared to Sec. 138,


IPC

ISSUE OF PARALLEL IMPORTATION:

Yu v. CA, 217 SCRA 328

REMEDIES
Sec. 3, IPC

IS THERE INFRINGEMENT EVEN IF THE


GOODS ARE NON-COMPETING?

Sec. 160, IPC

Sec. 231, IPC

Leviton Industries v. Salvador, 114


SCRA 420
Puma v. IAC, 158 SCRA 233
La Chemise Lacoste v. Fernandez,
129 SCRA 373
The Murphy Door Bed Co., Inc. v.
Interior Sleep Systems, Inc. 874 F.
2d 95 (1989)
TrafFix Devices, Inc. v. Marketing
Displays, Inc. 532 U.S. 23 (2001)
Major League Baseball Properties,
Inc. v. Sed Non Olet Denarius, Ltd.
817 F. Supp. 1103 (1993)
Dawn Donut Company, Inc. v.
Hearts Food Stores, Inc. 267 F. 2d
358 (1959)
KP Permanent Make-up, Inc. v.
Lasting Impression, Inc. 548 U.S.
111 (2004)
Mattel, Inc. v. MCA Records 296 F.
3d 894
Lindy Pen Company, Inc. v. Bic Pen
Corporation 982 F. 2d 1400 (1993)
Big OTire Dealers, Inc. v. The
Goodyear Tire & Rubber Company
561 F. 2d 1365 (1977)

ADMINISTRATIVE ACTION
CANCELLATION OF PROCEEDINGS
Sec. 151 (and its sub-paragraphs), IPC
Sec. 152 (and its sub-paragraphs), IPC
Sections 153 and 154, IPC
Sec. 230, IPC
Sec. 232.2, IPC

Romero v. Maiden Form, 10 SCRA


556
Philippine Nut Industry v.
Standard Brands Inc., 65 SCRA 575
Anchor Trading co. v. Director of
Patents, 99 Phil. 1040
Clorox Company v. Director of
Patents, 20 SCRA 965 (1967)
Wolverine Worldwide, Inc. v. CA,
169 SCRA 627 (1989)

Shangri-La v. CA, 359 SCRA 273


(1999)
Superior Commercial Enterprises
vs. Kennan Enterprises Ltd., GR
No. 169974, April 20, 2010

INTELLECTUAL PROPERTY RIGHTS


VIOLATIONS
Sec. 10(2) (and its sub-paragraphs), IPC
Sec. 232, IPC
Sec. 232.2, IPC

PROHIBITION OF IMPORTATION
Sec. 166, IPC

Class 15
Civil Action; Criminal Action;
Tradenames; Collective Marks

Civil Action
a) Infringement

McDonalds Corp. v.
L.C. Big Mak, 437 SCRA
10 (2004)
McDonalds Corp. v.
Macjoy Fastfood Corp.,
514 SCRA 95 (2007)

Secs. 155-164, IPC


Sec. 232, IPC
Rules on Search and
Seizure in Civil Actions
for Infringement of
Intellectual Property
Rights (A.M. No. 02-106-SC)

b) Unfair Competition
Sec. 168, IPC
Sec. 232, IPC
Difference between
infringement and
Unfair Competition

Etepha A.G. v. Director


of Patents, 16 SCRA 495
(1966)

Del Monte
Corporation v. CA,
181 SCRA 410

Esso Standard
Eastern, Inc. v. CA, 116
SCRA 338

Pro Line Sports


Center v. CA, 281
SCRA 162

Fruit of the Loom v.


CA, 133 SCRA 405 (1984)

Universal Rubber
Products v. CA, 130
SCRA 162

Del Monte Corp. v. CA,


181 SCRA 410
Asia Brewery v. CA,
224 SCRA 437

Converse Rubber
Corp. v. Jacinto
Rubber and Plastic
Co., 97 SCRA 158

Conrad v. CA, 246 SCRA


691

Asia Brewery v. CA,


224 SCRA 437 (1993)

Emerald Garment
Manufacturing v. CA,
251 SCRA 600

Solid Triangle v.
Sheriff, 370 SCRA
491 (2001)

Amigo v. Cluett
Peabody, 354 SCRA 434
(2001)

Sony Computer v.
Supergreen, Inc.,
GR No. 161823, 22
March 2007

Societe Des Produits


Nestle v. CA, 356 SCRA
207 (2001)
Mighty Corporation v.
E.J. Gallo Winery, 434
SCRA 473 (2007)

Sehwani, Inc. and


Benitas Frites, Inc.
vs. IN-N-OUT
Burger, Inc., 536
SCRA 255 (2007)

Coca Cola v. Gomez,


GR No. 154491,
November 14, 2008

Sec. 121.3, IPC


Converse Rubber
Corporation v. Universal
Rubber Products, 117
SCRA 154

Superior
Commercial
Enterprises v.
Kunnan Enterprises
Ltd., GR No. 169974.

2. What may not be used as a


Tradename?

April 20, 2010

Sec. 165.1, IPC


c) Action for False or
Fraudulent Declaration

3. Rights of the Tradename


owner

Sec. 162, IPC


Sec. 163, IPC

Secs. 165.2, IPC

Sec. 164, IPC

Sec. 165.3, IPC

Sec. 232, IPC

Sec. 165.4, IPC


Philips Export v. CA, 206
SCRA 457

d) Action for False


Designation of Origin

Armco Steel Corporation


v. SEC, 156 SCRA 822

Sec. 169 (and its subparagraphs), IP code

Western Equipments &


Supply Co. v. Reyes, 51
Phil 115

Sec. 232, IPC

Criminal Action

1.11

Sec. 170, IPC

1. Definition

Sy v. Court of Appeals,
113 SCRA 334

Sec. 121.2, IPC

Samson v. Judge
Daway, GR Nos. 160054-55,
July 21, 2004
William C. Yao, Sr. vs.
The People of the
Philippines, GR No. 168306.
June 19, 2007

1.10

TRADENAMES
1. Definition

COLLECTIVE MARKS

2. Section 167 (and its subparagraphs), IPC

Class 16

Other Intellectual Property

5.1

Trade Secrets

5.2

Geographical Indicators

5.3

Plant Varieties

5.4

Trademarks and the Internet

3. Meta-Tags and Cyberstuffing

1. Domain Names
2. Cybersquatting and Domain
Name Dispute Resolution

Research in Motion v.
Georges Elias, Case No.
D2009-0218, WIPO
Arbitration and Mediation
Center
(http://www.wipo.int/amc/en/
domains/decisions/html/2009
/d2009-0218.html)

Class 17

6.1

Special Rules for IP Courts

6.2

Catch Up and Review Outline

Class 18

Final Exams