3rd Mar 2015

brand word in wood type

If you are interested in filing a trademark application in the Philippines or wish to protect your business brand or trademark, it is necessary that you learn about trademarks in general and how to seek protection. Stated below are commonly asked questions about trademarks in the Philippines.

 1. What is a Trademark?

The Philippine Intellectual Property Code (IP Code) broadly defines a trademark as “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.” Thus, a mark (1) must be a visible sign and (2) must be capable of distinguishing one’s goods and services from those of another.

2.  What law governs trademarks?

 Republic Act No. 8942, otherwise known as the Intellectual Property Code of the Philippines primarily governs intellectual property rights in the Philippines. In addition, the Philippines adheres to the Paris Convention for the Protection of Industrial Property Rights and the Agreement on Trade-Related Aspects of Intellectual Property Rights also known as the TRIPS Agreement.

3. What marks cannot be registered?

A trademark 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.

But 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.

4. Why should you register your trademark?

 —Your trademark distinguishes your goods from others. It represents your business identity, image, and reputation that sets it apart from your competitors.

—Your trademark is your asset and property. It is worth a lot of money!

—Registration of your trademark will protect your business and shield it from unscrupulous persons who want to ride on the goodwill which your business has painstakingly created through the years.

—There are remedies available to owners of registered marks from infringers such as Civil and criminal actions for infringement, unfair competition, false or fraudulent declaration and false designation of origin. There are also Administrative Actions before the Bureau of Legal Affairs of the IPO for violation of IP (infringement, unfair competition, false designation of origin) under Section 10.2 of the IP Code and Inter Partes Cases (opposition, cancellation) and/ or Border Measure before the Bureau of Customs.

 5. What is the difference between a Trademark and a Service Mark?

A trademark pertains to goods and those under International Class 1 to 34 while service marks refer to services under International Class 35 to 42.

6. Is it required that my trademark cover goods or services that I am presently selling? What if I am not yet using my trademark? Can I file an application already?

No. An application for registration may be based on actual use or intended use of a mark in Philippine commerce. Prior use of a mark in the Philippines is not necessary to file an application. The use of mark becomes necessary only after the application for its registration has been filed because a Declaration of Actual Use (“DAU”) in Philippine commerce is required to be submitted within 3 years from filing date. Hence, you may already file an application for registration.

7. How are rights to the mark acquired?

Under the Philippine IP Code, rights to a trademark are acquired through registration with the Bureau of Trademarks of the IPO. Generally, protection against infringement is accorded only to marks duly registered with the IPO. Also, priority of rights in a trademark is not anymore based on prior actual use but on prior filing of an application for registration.

8. Why is it important to file an application with the IPO immediately?

We observe the first-to-file rule. Thus, if you filed an application for a mark, no one can file an application for the same mark anymore.

9. May we file multiple classes in one trademark application?

Yes. One application may relate to several goods and/or services, whether they belong to one class or to several classes of the Nice Classification. Where goods and/or services belonging to several classes of the Nice Classification have been included in one application, such an application shall result in one registration.

10. What is the period of protection of a trademark registration?

The period of protection is ten (10) years from the date of issuance and is renewable for a period of ten (10) years at a time.

 If you are interested in filing a trademark application, it is highly recommended that you consult a Philippine trademark lawyer first so that you can lodge the application properly.

 Let our Philippine trademark lawyers, attorneys, paralegals and experts help you. For further inquiries, you may seek legal assistance by e-mailing us at info@ndvlaw.com.

 Nicolas & De Vega Law Offices is a full service law firm in the Philippines. You may visit us at the 16th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, 1605 Pasig City, Metro Manila, Philippines. You may also call us at +632 4706126, +632 4706130, +632 4016392.

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