NON REGISTRABLE DOCUMENT

Other non-registrable marks are those that pertain to only identifiable kind, quality, quantity or intended purpose.
This is referred to as a descriptive term.

It cannot be used as a trademark because it's not distinctive enough. in the inherent distinctiveness scales,
these generic and descriptive terms, generally it cannot be subject of a trademark because it's not distinct

SHAPES

Shapes cannot be registered. So, if it's triangles, the logos are purity of triangles, that alone is insufficient
for it to be registered especially if it is forced by the technical factors or by the nature of the goods themselves or
factors that affect their intrinsic value

When you talk about “affects the intrinsic value” because of its distinctive shape, because of how distinct it is, that
there is an increase in its value, that cannot be reason to protect that shape as a trademark.

Example:

if you take a look at the shape of a cell phone. why does it need to be that shape? Why can not be more
circular? Because this is dictated by technical factors and that's a reason why it cannot that shape. You want that
smooth edging that almost concave one so that you can watch something better, that cannot be protected by
trademark

COLOR alone cannot be protected by trademark unless it is defined by a given form.

So this, if it's descriptive if it pertains to shape if it's based on the color alone.

Example: color pink of Food Panda or the Green of the grab express, the color alone will not be sufficient, you
cannot take away from the use of other people a certain color because no one can own that.

Why are they classified in the same PowerPoint slide? it's because this three descriptive term shapes and
color can be subject of a trademark later on it can become distinctive as long as there is secondary meaning.

Secondary meaning under section 123.2 is the add on to make descriptive terms, shapes and colors become distinct.

So, it becomes distinct because of its long use that it become associated with that goods for which it is
registered. So, because there has been so much use of substantial exclusive and continuous use for 5 years in the
Philippines, in the mind of the consumer, if they see a particular color then you associate immediately with a certain
delivery, business or errand business, then that could become registered.
 So, the last slide pertains to instances where in a descriptive term as a chords efficient secondary meaning
that it can all be registered as long as it does not have any functional purpose it can be registered

The doctrine of secondary meaning is a word or phrase which originally was incapable of exclusive
appropriation but through its long and exclusive use by one entity has become effectively distinctive and is able to
identify the user and its products.

Q: What are the terms that can be subject of secondary meaning?

A: only descriptive, only color, only shape.

Generic and customary language cannot be subject of secondary meaning, its only those 3 and as long as it
does not serve any other functional purpose, it can be protected by trademark.

This second to the last non-registrable mark pertains to any mark that is identical with any other registered mark
belonging to a different proprietor or a mark with an earlier filing or priority date which pertains to those
same goods or services or even those seeing closely related goods or services, as long as it nearly resembles such a
mark to be likely to deceive or cause confusion.

so this is the first function of the likelihood of confusion that it's going to be a basis for its non-protection because
it's identical and there's likelihood of confusion over a mark that is already being protected. So, that it can be over
same goods or services or closely related goods or services but even those belonging to different goods or services
can still be denied protection if there is likelihood of confusion.

The last one is if it is identical to or confusingly similar or constitutes a translation of mark which is considered by
competent authority in the Philippines as a well-known mark.
Take note, it should be well known not only in the Philippines but even internationally and even though it's not
registered in the Philippines (kasi sabi dito “whether or not it is registered here”) should not be a basis for its
protection or for any protection or recognition. It's still can be a basis for denial If a subsequent mark that is
registered or that is subject of an application for trademark protection

Even if it's used for identical or similar goods as long as there's likelihood of confusion, it will not be registered. It
can even be a basis for a denial if it is a well-known mark and it’s only a translation of a well-known mark which is
registered in the Philippines, then it cannot be registered, it cannot be protected.

Summary:

● Well-known marks need not be registered to be protected

● this is going to be a basis for denial of registration of a subsequent mark even if it's not registered in the
Philippines
● it can also be a basis for trademark infringement even though it's not registered in the Philippines as an
exception to the territoriality principle
● and what matters for it to be considered as a well-known mark is knowledge about it in the Philippines and
in the world but it does not pertain that it should be the entire population of the Philippines should know
about it, it is sufficient that its knowledge of the relevant sector of the public rather than a public at large.

Example: When you're talking about golf clubs, it is considered to be well known if it's known by the relevant
sectors. So, sino pa nakakaalam about clubs? if it's known by those who are playing golf, those who caddy, those
who owned resorts with golf courses, those are the relevant sectors.