I. LAW ON TRADEMARKS
Consists of a name, portrait or
A. Definition
Mark- 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.
Collective mark- 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. (ex: Magnolia, Nestle)
Trade name- the name or designation
identifying or distinguishing an
enterprise. (ex: San Miguel Corporation)
B. Acquisition of Marks
The rights in a mark shall be acquired
through registration made validly in
accordance with the law.
C. Registrability
A mark cannot be registered if:
1. 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;
2. Consists of 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;
3.
signature identifying a 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.
4. Identical with a registered mark
belonging to a different
proprietor, or a mark with an
earlier filing or priority date in
respect of a.) same goods or
services, or b.) closely related
goods or services; c.) nearly
resembles such a mark as to be
likely to deceive or cause
confusion.
5. Identical with, or confusingly
similar to, or constitutes a
translation of a mark which is
considered by the competent
authority of the PH to be well-
known internationally 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.
Determining whether a mark is
well-known:
 Account shall be taken of
the knowledge of the
relevant sector of the
public, including
knowledge in the PH which
has been obtained as a
result of promotion of the
mark.
6. Identical with, or confusingly
similar to, or constitutes a
translation of a mark considered
well-known, which is registered in
the PH with respect to goods or
services which are not similar to
those with respect to which
registration is applied
provided that the use of the mark
would indicate a connection
between those goods or services,
and the owner of registered
mark, provided further that
interest of the owner of the
registered mark are likely to be
damaged as such use;
7. Likely to mislead the public,
particularly as to the nature,
quality, characteristics
geographical origin of the goods
or services;
8. Consists exclusively of signs that
are generic for the goods or
services that they seek to
identify;
9. Consists exclusively of signs or o
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.
10.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;
11.Consists of color alone, unless
defined by a given form.
12.Contrary to public order or
morality.
Note: Registration of signs and devices
shall not be prevented if such sign or
device 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.
for
Prima facie evidence of distinctiveness
Proof of substantially exclusive and
continuous use thereof by the applicant
in commerce in the Philippines for 5
years before the claim of distinctiveness
is made.
Test to determine Confusing Similarity
between Marks
1. Dominancy Test- focuses on
or similarity of the prevalent
features of the competing
trademarks which might cause
confusion or deception, and thus
infringement. Duplication or
imitation is not necessary.
- The question is whether the
use of the marks involved is
likely to cause confusion or
mistake in the mind of the
public or deceive purchasers.
2. Holistic Test- entails a
consideration of entirety of the
marks as applied to the products,
including the labels and
packaging.
Note: SC on several occasion used both
tests in their decisions. Thus, the use of
one does not preclude the use of
another.
D. Requirements of Application
1. In Filipino or English
2. Request for registration
3. Name and Address of the sought, grouped according to the
applicant classes of the Nice Classification.
4. Name of State of which the 13.A signature by, or other self-
applicant is a national or identification of, the applicant or
domiciled, and where the his representative.
applicant has real and effective Note: One application may relate to
industrial or commercial several goods and/or services,
establishment; whether they belong to one or
5. Law under which the applicant is several classes of Nice Classification.
organized and existing (if
applicant is a juridical entity) E. Representation
6. Appointment of an agent or A written document, designating the
representative (if applicant is not name and address of a Philippine
domiciled in PH) resident who may be served notices or
7. Where applicant claims the processes proceedings affecting the
priority of an earlier application: mark, shall be filed in the office.
a. Name of the State with whose
national office the earlier If the person so designated cannot be
application was filed or it filed found on the address, the notice or
with an office other than the process may be served to the Director.
national office;
b. Date of the filing of earlier
application;
c. Application number of the
earlier application.
8. Statement claiming color as a
distinctive feature of the mark,
the name or names of the colors
claimed, and the principal parts
of the mark which are in that
color. (if color is claimed as
distinctive feature of the mark)
9. Statement that a mark is three-
dimensional (if the mark is three-
dimensional)
10.One or more reproductions of the
mark as prescribed in the
Regulation.
11.Transliteration or translation of
the mark or of some parts of the
mark.
12.Names of the goods or services
for which the registration is