the law on trademarks

8/14/2019 The Law on Trademarks

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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,

amended, which has been repealed under Section 339

the Intellectual Property Code, was effective from Jun

20, 1947 until January 1, 1998, when the Intellectu

Property Code took effect.

RA 166 adopted the actual use system under whi

a trademark owner can apply for the registration of h

mark only after he has used it in commerce in t

Philippines for at least two months before the filing

the application.

IP Code

Section 123 to 123.3, Registrability of marks


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Intellectual Property Code, Republic Act No. 829

adopted a hybrid system of registration in that whi

actual use of the mark is not required at the time of filin

of the application, use of the mark in commerce mu

actually commence within three years from the filin

date of the application; otherwise, the application will b

refused or the registration cancelled if it has been issue

The Trademark Act adopted a single cla

registration system. In contrast, the IP Code adopted

multiple class registration system. Use of the mark o

any item within a specific class of goods preserves th

trademark owners registration for the entire class.

Section 128, Single registration for goods an

services

A trademark owner need only file a sing

application for the registration of his mark coverin

several classes of goods or services whether they belon

to one class or to several classes of the NiClassification

Paris Convention


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The provisions of the Paris Convention may be su

divided into four main categories:

A first category contains rules of substantive law

which guarantee a basic right known as the right

national treatment in each of the member countries;

A second category establishes another basic rig

known as the right of priority;

A third category defines a certain number

common rules in the field of substantive law whi

contain eitherrules establishing rights and obligatio

of natural persons and legal entities, or rules requirin

or permitting the member countries to enact legislatio

following those rules;

A fourth category deals with the administrati

framework which has been set up to implement t

Convention, and includes the final clauses of t

Convention.

National Treatment Principle


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National treatment means that, as regards t

protection of industrial property, each country party

the Paris Convention must grant the same protection

nationals of the other member countries as it grants to

own nationals.

The same national treatment must be grant

to nationals of countries, which are not party to th

Paris Convention if they are domiciled in a membcountry or if they have a real and effectiv

industrial or commercial establishment in such

country.

This national treatment rule guarantees n

only that foreigners will be protected, but althat they will not be discriminated against in an

way. The national treatment rule applies first of a

to the nationals of the member countries. The ter

national includes both natural persons and leg

entities.

Right of Priority

Section 131, Priority right


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The right of priority means that, on the basis of

regular application for an industrial property right fil

by a given applicant in one of the member countries, t

same applicant (or its or his successor in title) ma

within a specified period of time (six or 12 month

apply for protection in all the other memb

countries. These later applications will then be regard

as if they had been filed on the same day as the earlie

application.

The TRIPS Agreement

Standards. In respect of each of the main areas

intellectual property covered by the TRIPS Agreemen

the Agreement sets out the minimum standards

protection to be provided by each Member. Each of t

main elements of protection is defined, namely t

subject-matter to be protected, the rights to

conferred and permissible exceptions to those righ

and the minimum duration of protection

Enforcement. The second main set of provisio

deals with domestic procedures and remedies for t

enforcement of intellectual property rights. T


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Agreement lays down certain general principl

applicable to all IPR enforcement procedures.

Dispute settlement. The Agreement makes disput

between WTO Members about the respect of t

TRIPS obligations subject to the WTO's dispu

settlement procedures.

Trademarks

Visually perceptible under IP Code; perceptib

under the US Lanham Act

Any sign, or any combination of signs, capable

distinguishing the goods and services of o

undertaking from those of other undertakings, mube eligible for registration as a trademark, provided th

it is visually perceptible.

The TRIPS Agreement contains certain provisions

well-known marks, which supplement the protection requir

by Article 6bis of the Paris Convention, as incorporated reference into the TRIPS Agreement, which obliges Membe

to refuse or to cancel the registration, and to prohibit t

use of a mark conflicting with a mark which is well know


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Geographical indications

Geographical indications are defined, for t

purposes of the Agreement, as indications whi

identify a good as originating in the territory of

Member, or a region or locality in that territor

where a given quality, reputation or oth

characteristic of the good is essentially attributab

to its geographical origin.

Visible Sign

The term "mark means any visible sign capab

of distinguishing the goods (trademark) or servic

(service mark) of an enterprise and shall include

stamped or marked container of goods.

The IP Code does not provide for registration

trade names, but only for registration of trademarks.

provides that notwithstanding any laws or regulatio

providing for any obligation to registertrade name

such names shall be protected, even prior to

without registration, against any unlawful a

committed by third parties in literal complian

with the provisions of the Paris Convention.


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Collective mark means any visible sig

designated as such in the application for registratio

and capable of distinguishing the origin or any oth

common characteristic, including the quality of goo

or services of different enterprises which use the sig

under the control of the registered owner of t

collective mark. Collective marks indicate origin

members of a group while a trademark indicates

single origin for the goods bearing the trademark.

Economic Function

A 'trade-mark' is a distinctive mark

authenticity through which the goods of a particul

producer or manufacturer may be distinguished frothose of others, and its sole function is to designa

distinctively the origin of the products to which it

attached.

Source-Indicating Function

The ability of a trademark to distinguish the produ

to which it is affixed from competing goods of oth


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manufacturers is in legal language called t

distinctiveness of a trademark. The traditional leg

function of a trademark therefore is to indicate th

source or origin of the goods on which it is used.

Guarantee Function

Trademarks also serve to guarantee that t

product to which it is affixed comes up to a certa

standard of quality. In its guarantee function, a trad

mark is a distinctive mark of authenticity throug

which the goods of a particular producer

manufacturer may be distinguished from those

others.

Advertisement Function

The ability of a trademark to indicate the sour

or origin of the product on which it is used and ensu

that the product comes up to the quality or standa

that consumers have come to expect from it combito give effect to the advertising function of tradema

among consumers.


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Distinctiveness

The distinctiveness of a trademark determines

relative strength or weakness. In other words, t

strength of a mark denotes its tendency

identify the goods sold under the mark

emanating from a particular source.

Spectrum of Distinctiveness

Generic Marks

Since mark is intended to be an indication of t

origin of the goods or services on which it is used,

mark cannot be registered if it consists exclusively

signs that are generic for the goods or services that thseek to identify. A generic word is unregistrable as

mark because it totally lacks distinctiveness.

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

ostensibly for floor and roof systems, but actually f

joists shaped like the capital letter T, are generic.

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

registrable mark, it must be disclaimed before t


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composite mark may be registered. The basic purpose

disclaimers is to make of record that a significa

element of a composite mark is not being exclusive

appropriated by itself apart from the composite.

Case:

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

Philippines Patent office, respondent. E. I. Du Pont D

Nemours and Company, intervenor G.R. No. L-62March 28, 1955.

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

never become distinctive or acquire secondary meanin

because it is a generic term, like cotton, silk, linen,

ramie.

Case: Mcdonalds Corporation et.al. vs. L.C. Big M

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

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

entirety and not dissected word for word, is neithgeneric nor descriptive. Generic marks are common

used as the name or description of a kind ofgoods, suas Lite for beer or Chocolate Fudge for chocola

soda drink.


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Descriptive Marks

Descriptive marks, on the other hand, convey t

characteristics, functions, qualities or ingredients of

product to one who has never seen it or does not know

exists, such as Arthriticare for arthritis medication. O

the contrary, Big Mac falls under the class offancif

or arbitrary marks as it bears no logical relation to t

actualcharacteristics of the product it represents.

Section 123.1 (j) precludes the registration of

mark that consists exclusively of signs or of indicatio

that may serve in trade to designate the kind, qualit

quantity, intended purpose, value, geographical origi

time or production of the goods or rendering of thservices, or other characteristics of the goods

services.

Suggestive Marks

A suggestive mark is therefore a word, picture, other symbol that suggests, but does not direct

describe, something about the goods or services

connection with which it is used as a mark.1 Suggesti

1McCarthys Desk Encyclopedia of Intellectual Property, 1991 Ed., p. 322.


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marks are those which require imagination, thought

perception to reach a conclusion as to the nature of th

goods or services. Thus, a suggestive term differs from

descriptive term, which immediately tells somethin

about the goods or services.2 Suggestive marks, li

fanciful and arbitrary marks, are registrable witho

proof of secondary meaning.

Case: American Wire & Cable Company vs. Director

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

e.g. The trademark DYNAFLEX for electrical wires is

combination of the words FLEX, which means bend, an

the prefix DYNA, which suggests power. DYNA is n

in itself a root word but it has been commonly associatwith any source of power.

Arbitrary or Fanciful Marks

An arbitrary mark is a word or picture that is

common linguistic use but which, when used connection with certain goods or services, neith2 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 ofprinting services); In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984) (BUG MIST heldmerely descriptive of insecticide).


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suggests nor describes any quality or characteristic

those particular goods or services. Arbitrary marks a

inherently distinctive and need no proof of seconda

meaning to be regarded as valid for registration or leg

protection.

Case: Andres Romero vs. Maiden form Brassiere Co

Inc. and The Director of Patents, respondents. G.R. N

L-18289 March 31, 1964.

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

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

e.g. Trademarks derived from coined words such

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

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

description of the canned fish for which it is used.

does not even describe the place of origin, for it does n

indicate the country or place where the canned fish w

manufactured. It is a very general term which does n

give the kind or quality of the goods.

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

fanciful sense for brassiere.


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Immoral and Scandalous Marks

Section 123.1 (a) states that a mark cannot

registered if it consists of immoral, deceptive

scandalous matter, or matter which may disparage

falsely suggest a connection with persons, living or dea

institutions, beliefs, or national symbols, or bring the

into contempt or disrepute. Paragraph (m) also preclud

the registration of a mark that is contrary to public ord

or morality.

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

1971). See also In re Tinseltown, Inc., 212 USPQ 86

(TTAB 1981)

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

was declared scandalous for "accessories of a person

nature ... attach cases, hand bags, purses, belts, an

wallets."

Disparaging Marks

Section 168.3 (c), IP Code


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

1971). See also In re Tinseltown, Inc., 212 USPQ 86

(TTAB 1981)

Section 123.1 (a) bars the registration of any ma

that consists of or comprises matter which, with rega

to persons, institutions, beliefs, or national symbo

does any of the following: (1) disparages them, (

falsely suggests a connection with them, (3) brings the

into contempt, or (4) brings them into disrepute.

Disparagement is essentially a violation of one's right

privacy -- the right to be "let alone" from contempt

ridicule.

Elements of disparagement are (1) that tcommunication reasonably would be understood

referring to the plaintiff; and (2) that the communicati

is disparaging, and would be considered offensive

objectionable by a reasonable person of ordina

sensibilities.

e.g. INTEL, INUTEL INSIDE

National Symbols


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Designations have been held to be national symbo

within the meaning of the Act

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

Union of Soviet Socialist Republics; the American

bald eagle with wings extended is a well-known nation

symbol or emblem of the United States.

False Suggestion of a Connection

Section 123.1 (a) prohibits the registration of a ma

that consists of or comprises matter which may false

suggest a connection with persons, institutions, beliefs

national symbols.

National Flag or Coat of Arms

Section 123.1 (b) precludes the registration of a ma

which consists of the flag or coat of arms or oth

insignia of the Philippines or any of its politic

subdivisions, or of any foreign nation, or any simulatio

thereof.


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Name, Portrait and Signature Marks

Section 123.1 (c) prohibits the registration of a mawhich consists of a name, portrait or signatu

identifying a particular living individual except by h

written consent, or the name, signature, or portrait of

deceased President of the Philippines, during the life

his widow, if any, except by written consent of t

widow.

e.g. PRINCE CHARLES, 'Name' in this section is n

restricted to the full name of an individual but refers

any name regardless of whether it is a full name, or

surname or given name, or even a nickname, whi

identifies a particular living individual.

Particular Living Individual or Deceased President

Section 123.1 (c) applies to marks that compri

matter which identifies living individuals; it does n

apply to marks that comprise matter which identifideceased persons


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e.g. greeting cards consisting of the nam

EISENHOWER, a portrait of President Dwight

Eisenhower

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

identifies a particular living individual, or a decease

president of the country during the life of his widow, th

mark can be registered only if the written consent of t

individual, or of the president's widow, is filed in th

application.

Conflicting Marks

Section 123.1 (d) prohibits the registration of a mark

it is identical with a registered mark belonging to

different proprietor or a mark with an earlier filing priority date in respect of (i) the same goods or servic

(ii) closely related goods or services, or (iii) if it near

resembles such a mark as to be likely to deceive or cau

confusion.

UnderSection 147.1, in case of use of an identical sigfor identical goods or services, a likelihood of confusio

shall be presumed.


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Confusing Similarity with Registered Marks

Note: If the competing trademarks contain the main

essential or dominant features of another, and confusio

and deception is likely to result, infringement tak

place. Duplication or imitation is not necessary; nor is

necessary that the infringing label should suggest

effort to imitate.

Consent Agreements

A "consent agreement" refers to an agreement in which

party, such as a prior registrant, consents to the u

and/or registration of a mark by another party, like a

applicant for registration of the same mark or a simil

mark. It may also refer to an agreement in which ea

party consents to the use and/or registration of the sam

mark or a similar mark by the other party. A conse

agreement that is not merely a "naked" consent specifi

the reasons why no likelihood of confusion exists and/

arrangements undertaken by the parties to avo

confusion of the public.

Relatedness of the Goods or Services


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The goods or services do not need to be identical or ev

competitive to justify a determination that there is

likelihood of confusion. It is sufficient that the goods

services of the applicant and the registrant are related

some manner or that the circumstances surrounding the

marketing are such that they are likely to confu

consumers.

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

be confused with MARTIN'S for cheese

e.g. LAREDO for land vehicles LAREDO for pneumat

tires

Comparing Word Marks

Similarity in appearance is one consideration

determining whether there is a likelihood of confusio

between marks. Likelihood of confusion is not avoid

between otherwise confusingly similar marks merely b

adding or deleting a house mark or matter that

descriptive or suggestive of the named goods or service

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

likely to be confused with TURCOOL for cutting oil


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Design Marks

When the marks at issue are both design marks, the iss

of the similarity of the marks must be decided primari

on the basis of visual similarity. In this situatio

consideration must be given to the fact that a purchase

recollection of design marks is often of a general an

hazy nature.

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

design mark for seafood was held not likely to

confused with oval breaking wave design for vario

food items including juices and fruits.

Confusing Similarity with Well-Known Marks

Section 123.1 (e) precludes the registration of

mark which is identical with, or confusingly similar t

or constitutes a translation of a mark which is consider

by the competent authority of the Philippines to be weknown internationally and in the Philippines, whether

not it is registered here, as being already the mark ofperson other than the applicant for registration, and us


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for identical or similar goods or services: Provided, Th

in determining whether a mark is well-known, accou

shall be taken of the knowledge of the relevant sector

the public, rather than of the public at large, includin

knowledge in the Philippines which has been obtained

a result of the promotion of the mark;

On the other hand, Section 123.1 (f) prohib

the registration of a mark which is identical with,

confusingly similar to, or constitutes a translation ofmark considered well-known in accordance with t

preceding paragraph, which is registered in th

Philippines with respect to goods or services which anot similar to those with respect to which registration

applied for: Provided, That use of the mark in relation

those goods or services would indicate a connectiobetween those goods or services, and the owner of t

registered mark: Provided further, That the interests

the owner of the registered mark are likely to

damaged by such use

Case: 246 CORPORATION, doing business under thname and style of Rolex Music Lounge vs. Ho

Reynaldo B. Daway, Montes Rolex S.A. and RolCentre Phil. Limited


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e.g. ROLEX, KODAK

ROLEX cannot be appropriated as part of ROLE

MUSIC LOUNGE

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

and Rolex Center Limited Philippine Branch versu

Rolex Plastic Manufacturing Corporation,

3

MontrRolex S. A. sought the compulsory change the name Rolex Plastic Manufacturing Corporation, by deleting

well-known trademark and Rolex from the corpora

name.

Deceptive Marks

Section 123.1 (g) of the Intellectual Property Co

precludes the registration of deceptive marks or tho

that are likely to mislead the public, particularly as

the nature, quality, characteristics or geographical orig

of the goods or serves.

3 Case No. Q-01-45285 (SEC Case No. 682),


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e.g. use of the term "nylon" in the trade-name is bo

"descriptive" and "deceptively and misdescriptive" of t

applicant-appellant's business, for apparently he does n

use nylon in the manufacture of the shirts, pants.

Deceptive marks may include marks which false

describe the material content of a product and mar

which are geographically.

Neither a disclaimer of deceptive matter nor a claim thit has acquired distinctiveness can obviate a rejection o

the ground that the mark consists of or compris

deceptive matter.

Signs Indicating Quality, Kind, Geographic

Origin

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

consist exclusively of signs or of indications that m

serve in trade to designate the geographical origin

the goods of services. While the language suggests th

they may be registered as part of registrable matter, th

must nonetheless be disclaimed on the basis of t

principle that they cannot be exclusively appropriated.


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Case: Asia Brewery, Inc. vs. The Hon. Court of Appea

and San Miguel Corporation, G.R. No. 103543 July

1993.

e.g, "Pilsen" is a "primarily geographically descriptiv

word." It is unregistrable and not appropriable by an

beer manufacturer because it refers to a type of be

("pilsen")

Descriptive Trademarks

Marks that are merely descriptive when applied to

used in connection with the goods, business or servic

of the applicant or deceptively misdescriptive of the

are not registrable.

e.g. a dealer in shoes cannot register "Leather Shoes" his trademark because that would be merely descriptive

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

Appeals, Lyceum of Aparri, Lyceum of Cabaga

Lyceum of Camalaniugan, Inc., Lyceum of Lallo, In

Lyceum of Tuao, Inc., Buhi Lyceum, Central Lyceum Catanduanes, Lyceum of Southern Philippines, Lyceu

of Eastern Mindanao, Inc. and Western Pangasin

Lyceum, Inc. G.R. No. 101897 March 5, 1993.


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e.g. LYCEUM for an educational institution is mere

descriptive of its purpose and its first user may n

prohibit others from using the word to apply to the

school of learning.

Geographical Marks under the TRIP

Agreement

Under the Agreement on Trade Related Aspects

Intellectual Property Rights. (TRIPS Agreemen

geographical indications are those which identify a goo

as originating in the territory of a Member, or a region

locality in that territory, where a given qualit

reputation or other characteristic of the good essentially attributable to its geographic origin.

Functional Marks

Section 123.1 (k) of the Intellectual Property Co

explicitly precludes the registration of shapes that mbe necessitated by the nature of the goods themselves

factors that affect their intrinsic value.


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e.g. under this provision, the shape of a hat will b

unregistrable as a trademark for hat since the shape

dictated by the nature of the good itself.

Color Marks

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

alone cannot be registered as a mark unless defined by

given form. It is fundamental in trademark jurispruden

that color alone, unless displayed in a distinct arbitrary design, does not function as a trademark. In o

case, the colors black and red are not so displayed by t

petitioner, and are primary colors commonly and free

used in the printing business.

Secondary Meaning

Section 123.2 of the Intellectual Property Code allow

the registration of marks mentioned in paragraphs (j), (

and (l), which have become distinctive in relations

the goods for which registration is requested as a resu

of the use that has been made of it in commerce in thPhilippines. The IPO may accept as prima fac

evidence that the mark has become distinctive, as used

connection with the applicants goods in commerc


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proof of substantially exclusive and continuous u

thereof by the applicant in commerce in the Philippin

for five years before the date on which the claim

distinctiveness is made. The Intellectual Property Co

therefore recognizes that marks that are unregistrab

under its Section 123.1, paragraphs (j), (k) and (l), ma

nonetheless become registrable after they have acquir

secondary meaning.

Case: Ana L. Ang vs. Toribio Teodoro, G.R. No. L48226 December 14, 1942

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

a word or phrase originally incapable of exclusi

appropriation with reference to an article of the markebecause geographically or otherwise descriptive, mig

nevertheless have been used so long and so exclusive

by one producer with reference to his article that, in th

trade and to that branch of the purchasing public, th

word or phrase has come to mean that the article was h

product.

Prior Use


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Prior use must be trademark use in the legal an

protectable sense. Thus, if the trademark itself, li

Nylon is not legally protectable no length of use an

no amount of advertising will make it distinctive

shirts or of the business of manufacturing them.

Prior use by one will controvert a claim of leg

appropriation, by subsequent users. In the case at bar, th

Director of Patents found that "ample evidence wpresented in the record that Centennial Mills, Inc. w

the owner and prior user in the Philippines of t

trademark 'All Montana' through a local importer an

broker. Use of a trademark by a mere importer, indent

or exporter inures to the benefit of the foreig

manufacturer whose goods are identified by t

trademark.

The Territoriality of Rights in Marks

Before the Philippine adherence to the TRIP

Agreement and the enactment of the IP Code, t

unyielding doctrine of the Supreme Court has been th

trademark rights are territorial and cannot extend


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markets which the goods bearing the trademark hav

not reached.

The principle of territoriality of the Tradema

Law has been recognized in the Philippines. A

Callmann puts it, the law of trademarks "rests upo

the doctrine of nationality or territoriality." T

mere origination or adoption of a particular trade nam

without actual use thereof in the market is insufficient give any exclusive right to its use,4 even though su

adoption is publicly declared, such as by use of the nam

in advertisements, circulars, price lists, and on signs an

stationery.

A trade-mark acknowledges no territori boundaries of municipalities or states or nations, b

extends to every market where the trader's goods hav

become known and identified by the use of the mark.

Prior Use of Marks

Prior use must be trademark use in the legal an

protectable sense. Thus, if the trademark itself, li

4 (Johnson Mfg. Co. v. Leader Filling Stations Corp. 196 N.E. 852, 291 Mass. 394)


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Nylon is not legally protectable no length of use an

no amount of advertising will make it distinctive

shirts or of the business of manufacturing them.

Prior use by one will controvert a claim of leg

appropriation, by subsequent users. Use of a tradema

by a mere importer, indentor or exporter inures to t

benefit of the foreign manufacturer whose goods a

identified by the trademark. Where the Junior Party hestablished a continuous chain of title and, consequentl

prior adoption and use it is safe to conclude that t

Junior Party has satisfactorily discharged the burden

proving priority of adoption and use and is entitled

registration.

Doctrine of Related Goods

Goods are related when they belong to the sam

class or have the same descriptive properties; when the

possess the same physical attributes or essent

characteristics with reference to their form, compositiotexture or quality. They may also be related because th

serve the same purpose or are sold in grocery stores.


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Case: Faberge, Incorporated vs. The Intermedia

Appellate Court and Co Beng Kay, G.R. No. 711

November 4, 1992

e.g. InFaberge Incorporated vs. Intermediate Appella

Court, the Third Division of the Supreme Couattempted to lay this issue to rest on the basis of th

literal and restrictive language of Section 20 of t

Trademark Law. The Court allowed the registration

the trademark "BRUTE" for briefs in the name respondent since Faberge using its mark BRUT only o

after-shave lotion, shaving cream, deodorant, talcu

powder and toilet soap.

Well-Known Marks

The Supreme Court in La Chemise Lacoste has he

that the Philippines is bound to accord protection

well-known trademarks under Article 6bis of the Par

Convention.

Case: In 246 CORPORATION, doing business under thname and style of Rolex Music Lounge vs. Ho

Reynaldo B. Daway, Montes Rolex S.A. and Rol


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Centre Phil. Limited,5 upheld an injunction in favor

Montres Rolex SA against the use of its tradema

ROLEX by Rolex Music Lounge.

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

Code and noted that the provision prohibits t

appropriation of well-known marks that are registered

the Philippines not only for goods that are similar b

also for goods that are not similar to those for which th

owner had registered its well-known mark in tPhilippines.

Actual Use of Marks

Rights in marks are acquired through actual use

commerce. Advertising is not use.

Excusable Non-Use

Failure of the applicant to file a declaratio

and evidence of actual use within three years from thfiling date of the application shall result in the rejectio

of the application or the cancellation of the registratio

certificate if it has been issued

5 G.R. No. 157216. November 20, 2003


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Non-use of a mark may be excused if caus

by circumstances arising independently of the will of th

trademark owner. Lack of funds shall not excuse non-u

of a mark

Use by Related

Company

Section 52.4 of the IP Code

The use of a mark by a compan

related with the registrant or applicant shall inure to th

latter's benefit, and such use shall not affect the validi

of such mark or of its registration. This is subject to t

condition that such mark is not used in such manner

to deceive the public.

A related company may be either

natural person or a juristic person. A party may clai

use of a mark through a related company provided th

party relying on such use controls the nature and qualiof the goods or services on or in connection with whic

the mark is used.


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First-to-File and First-to-Use

The rights in a mark shall be acquired throuregistration made validly in accordance with t

provisions of this law. Rights are not acquired by me

registration. Mere registration without actual use do

not lead to acquisition of trademark rights since t

applicant or registrants failure to use the mark

commerce within three years from the filing date of tapplication leads to rejection.

A trademark owner who is first to file

application for the registration of a mark acquires th

limited right to have his application examined ahead

any identical or similar mark.

The applicant who has the earliest filing da

may not necessarily end up as the registered owner of

mark. His application for the registration of the ma

may be rejected if it is identical with, or confusing

similar to, or constitutes a translation of a mark whichconsidered by the competent authority of the Philippin

to be well-known internationally and in the Philippines

Rights Conferred by Registration


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Sections 147.1 and 147.2, IP Cod

Rights Conferred

147.1. The owner of a registered mark shall have the

exclusive right to prevent all third parties not having

the owners 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 inrespect 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 goodsand services which are not similar to those in respect

of which the mark is registered: Provided, That use ofthat 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.


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Section 148, IP Code, Use of Indicatio

by Third Parties for Purposes Other than those for whi

the mark is used.

Registration of the mark shall not confer on t

registered owner the right to preclude third parties fro

using bona fide their names, addresses, pseudonyms,

geographical name, or exact indications concerning th

kind, quality, quantity, destination, value, place origin, or time of production or of supply, of their goo

or services: Provided, That such use is confined to th

purposes of mere identification or information a

cannot mislead the public as to the source of the goo

or services.

Case: Playboy v Terri Welles

Section 150, IP Code License Contracts

Section 152.1 to 152.4, Non-use of Mark Wh

Excused

Non-use of a mark may be excused if caused

circumstances arising independently of the will of t

trademark owner. Lack of funds shall not excuse non-u


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of a mark. The special circumstances to excuse non-u

in affidavits of non-use shall not be accepted unless th

are clearly beyond the control of the registrant such

the prohibition of sale imposed by governme

regulation.

Enforcement of Rights on Marks

Section 134, Opposition

Any person who believes that he would be damaged b

the registration of a mark may, upon payment of th

required fee and within thirty (30) days after t

publication referred to in Subsection 133.2, file with th

Office an opposition to the application.

Such opposition shall be in writing and verified by th

oppositor or by any person on his behalf who knows th

facts, and shall specify the grounds on which it is bas

and include a statement of the facts relied upon. Copi

of certificates of registration of marks registered in oth

countries or other supporting documents mentioned

the opposition shall be filed therewith, together with t

translation in English, if not in the English language.


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For good cause shown and upon payment of the requir

surcharge, the time for filing an opposition may

extended by the Director of Legal Affairs, who sha

notify the applicant of such extension. The Regulatio

shall fix the maximum period of time within which

file the opposition.

120-day period for notice of opposition, affidav

with supporting documentary evidence, power

attorney 120-day period for respondents answer, affidav

with supporting documentary evidence, power

attorney

Summary rules of procedure decision to

rendered on the basis of the documents submitted, wi

opportunity to file a memorandum and a draft decision.

Sec. 155. Remedies; Infringement

Any person who shall, without the consent of the own

of the registered mark:

155.1. Use in commerce any reproduction, counterfe

copy, or colorable imitation of a registered mark or th

same container or a dominant feature thereof

connection with the sale, offering for sale, distributio


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advertising of any goods or services including oth

preparatory steps necessary to carry out the sale of an

goods or services on or in connection with which su

use is likely to cause confusion, or to cause mistake,

to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imita

a registered mark or a dominant feature thereof an

apply such reproduction, counterfeit, copy or colorab

imitation to labels, signs, prints, packages, wrappereceptacles or advertisements intended to be used

commerce upon or in connection with the sale, offerin

for sale, distribution, or advertising of goods or servic

on or in connection with which such use is likely

cause confusion, or to cause mistake, or to deceive, sha

be liable in a civil action for infringement by tregistrant for the remedies hereinafter set fort

Provided, That the infringement takes place at th

moment any of the acts stated in Subsection 155.1

this subsection are committed regardless of wheth

there is actual sale of goods or services using th

infringing material.

Measure of Damage


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The measure of the damages suffered shall be eith

the reasonable profit which the complaining party wou

have made.

Profit which the defendant actually made out of th

infringement

Court may award as damages a reasonab

percentage based upon the amount of gross sales of t

defendant

Border Control

Sec. 166. Goods Bearing Infringing Marks or Tra

Names

No article of imported merchandise which shacopy or simulate the name of any domestic product,

manufacturer, or dealer, or which shall copy or simula

a mark registered in accordance with the provisions

this Act, or shall bear a mark or trade name calculated

induce the public to believe that the article

manufactured in the Philippines, or that it manufactured in any foreign country or locality oth

than the country or locality where it is in fa

manufactured, shall be admitted to entry at an

customhouse of the Philippines.


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the law on trademarks

Documents