Defenses & Exceptions to Trademark Infringement: Good Faith Prior Use, “Bona Fide” Descriptive Use, and Other Real-World Safety Valves
Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (“IP Code”) provides strong exclusivity to registered owners, but the system also includes exceptions and limitations to prevent overreach. These defenses matter for businesses that adopted a mark independently, for sellers using descriptive terms, and for service providers (e.g., printers) whose involvement may be incidental. Understanding these limits can prevent panic, guide negotiations, and shape litigation strategy.
Key statutory exceptions: what registration does NOT let you stop
The IP Code expressly provides that registration shall not confer the right to preclude third parties from using bona fide their own names/addresses/pseudonyms, geographical names, or exact indications about kind, quality, quantity, destination, value, place of origin, or time of production/supply—provided the use is for identification/information and cannot mislead the public as to source (Sec. 148, IP Code).
Practical example: If a coffee seller uses “100% ARABICA” purely as a truthful description of bean type (not as a brand identifier), that may fall within Sec. 148—so long as presentation does not mislead consumers into thinking it is connected with a trademark owner.
Limitation: good-faith prior user vs later registrant (Sec. 159.1 of the IP Code)
A powerful statutory limitation exists for a person who, in good faith, before the filing/priority date, was already using the mark for business. Sec. 159.1 of the IP Code states that a registered mark shall have no effect against such person; but the right is limited and generally transferable only with the enterprise/business where the mark is used, to wit:
“SECTION 159. Limitations to Actions for Infringement. ‑ Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act shall be limited as follows:
159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise: Provided, That his right may only be transferred or assigned together with his enterprise or business or with that part of his enterprise or business in which the mark is used. X x x”
Practical implications:
- This is not a free pass to expand nationwide under the same mark after someone else registers. Expect disputes about scope (where you used it, how long, what goods).
- Documentation is determinative: dated receipts, labels, online listings, DTI permits, supplier invoices, and photos.
Limitation for innocent printers (Sec. 159.2 of the IP Code)
Where the alleged infringer is solely in the business of printing and is an innocent infringer, the owner may be entitled only to injunction against future printing. Sec. 159.2 of the IP Code provides:
“SECTION 159. Limitations to Actions for Infringement. ‑ Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act shall be limited as follows: x x x
159.2. Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing.x x x”
Practical example: A small print shop prints packaging using files provided by a client. If it can show it acted innocently and merely printed for others, Sec. 159.2 can limit exposure to an injunction, rather than broader monetary remedies.
The doctrinal anchor that still controls: avoid misleading the public
Even where defenses exist, courts remain focused on consumer perception and confusion. The Supreme Court stresses that infringement is anchored on likelihood of confusion, evaluated through the dominancy test. If your use (even if arguably descriptive) is presented as a “brand” or creates source confusion, the defense weakens.
Practical advice: how to assess defenses before responding to a demand letter
- Check whether your use is “trademark use” or descriptive use.
- Audit your timeline: can you prove good-faith use before the registrant’s filing/priority date?
- Reduce confusion immediately: change trade dress, add clear business identifiers; confusion analysis drives liability.
- If you’re a printer/vendor, document your limited role and innocence; request brand-clearance representations from clients going forward.
Because the IP Code recognizes bona fide descriptive/name use (Sec. 148), protects certain good-faith prior users (Sec. 159.1), and limits remedies against innocent printers (Sec. 159.2), a party accused of infringement should not assume automatic liability. The viable defenses, however, must still survive the ultimate market test—whether the public is likely to be confused.
14 February 2026
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