Descriptive trademarks are those which consist 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. Pursuant to Sec. 123(j) of Republic Act No. 8293 or the Intellectual Property Code of the Philippines (IP Code), such trademarks cannot be registered.
In the case of Societe Des Produits Nestle, S.A. vs. Court of Appeals (G.R. No. 112012, 04 April 2001), the Supreme Court enunciated that a term is descriptive and therefore invalid as a trademark if, as understood in its normal and natural sense, it “forthwith conveys the characteristics, functions, qualities or ingredients of a product to one who has never seen it and does not know what it is,” or “if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods,” or if it clearly denotes what goods or services are provided in such a way that the consumer does not have to exercise powers of perception or imagination.
Thus, the words “pale pilsen” cannot be exclusively appropriated by a beer dealer (Asia Brewery Inc. vs. Court of Appeals, G.R. No. 103543, 05 July 1993). Moreover, a dealer in shoes cannot register a trademark “Leather Shoes” because that would be descriptive (Masso Hermanos, S.A. vs. Director of Patents, G.R. No. L-3952, 29 December 1953). To further illustrate, the IPO disallowed the trademark “Steamed Fried Rice” in favor of a seller of steamed fried rice (ODG, Harbour City Dimsum House Co., Inc. vs. Director of Bureau of Trademarks, Appeal No. 4-2018-0009, 27 December 2019).
As enunciated in the ASEAN Common Guidelines for the Substantive Examination of Trademarks, such descriptive terms are common elements that need to be available for use by all traders to address consumers with their goods and services and promote the same without obstacles from individual competitors. Thus, the following were considered as descriptive terms pursuant to Section 2.3.2 of the said ASEAN Guidelines:
- as regards the kind or nature of goods or services: ‘RAPILATHER’ for soaps and shaving creams that produce foam, ’24-SEVEN’ for internet banking services, ‘SOFTER’ for pillows and mattresses;
- as regards the subject matter of goods or services: ‘GEOGRAPHY’ for books and publications, ‘MAGNETIK’ for digital data carriers, software, digital publications, etc., ‘DRAMA’ for television entertainment programs, etc., ‘CAR’ for vehicle and mechanical repair services;
- as regards the quality of goods or services: ‘EXTRA’, ‘PRIME’, ‘PREMIUM’ , ‘DELUXE’, “GOOD”, and ‘BEST’, for any goods or services; ‘LITE’, ‘FRESH’ or ‘SKIM’ for food products; ‘14k’, ‘18k’ or ‘24k’ for jewellery; 50 · as regards the quantity of goods or services: ‘KILOVALUE’ for rice and other cereal grains; “500”, “1000” for pharmaceutical drugs/medicines (describes the milligram dosage content);
- as regards the size of goods or services: ‘FAMILY’, ‘GIANT’, ‘JUNIOR’, for any goods or services;
- as regards the purpose or use of goods or services: ‘UPCUTTER’ for cutting instruments, ‘STRIKE’ for matches and fire-lighting products; ‘SANITARY’ in connection with cleaning and sanitation services, ‘THE FIDUCIARY’ for finance and banking services;
- as regards the value of goods or services: ‘2-for-ONE’ 52 in connection with sales and distribution services offering price discounts, ‘50/OFF’ for any goods or services;
- as regards other characteristics of goods or services: ‘FRESH’ for household cleaning products; ‘BRIGHT-N-CLEAR’ for synthetic wall paints; ‘STOUT’ for beers and ales; ‘RUSTOFF’ for metal polishing and care products; ‘TWO LITER’ or ‘TURBO’ for motor engines or motor vehicles; ‘4-GB’ or ‘2-TERA’ for computers and related hardware or software; also ‘3- N-1’, ‘3-in-1’ or ‘3-N-One’ for coffee products (describe that the goods comprise coffee, sugar and cream); ‘125’, ‘250’ for vehicles, particularly, motorcycles (describes the engine size in cubic centimeters); ‘LOW CALORIE’, ‘TASTY’, ‘NUTRITIOUS’ for food; ‘ENERGY SAVER’ for bulbs, fluorescent lamps; 53 ‘SMART’ for electronic devices that have processors, are programmable, have automated functions or are capable of processing information.
Descriptive marks that have become distinctive may be registered.
No less than Section 123.2 of the IP Code provides that nothing shall prevent the registration of any such sign or device which 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. In this case, the descriptive trademark has acquired secondary meaning.
In Philippine Nut Industry, Inc. vs. Standard Brands Incorporated (G.R. No. L-23035, 31 July 1975), the Supreme Court ruled that the doctrine of secondary meaning is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.
To be allowed registration, the IPO may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant’s goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made (Section 123.2, IP Code).
A descriptive mark, when combined with registrable elements may be registered.
Although a word may be descriptive and not subject to exclusive use as a trademark, it may properly become the subject of a trademark by combination with another word or term which is nondescriptive (Ong Ai Gui vs. Director of the Philippine Patent Office, G.R. No. L-6235, 28 March 1955). Thus, in such case, the Supreme Court allowed the registration of the trademark “20th Century Nylon Shirts Factory” even if certain words therein were descriptive.
A descriptive mark, if merely suggestive, can be registered.
A suggestive mark is a word, picture or other symbol that suggests, but does not directly describe or designate the goods and services in connection with which it is used as a mark (McCarthy’s Desk Encyclopedia of Intellectual Property, 1991 Ed., p. 322). Such terms which subtly connote something about the product are eligible for protection (Societe Des Produits Nestle, S.A. vs. Court of Appeals, G.R. No. 112012, 04 April 2001).
About Nicolas and De Vega Law Offices
If you need assistance in registering a trademark with the Philippine Intellectual Property Office, or trademark related issues, we can help you. Nicolas and 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 84706126, +632 84706130, +632 84016392 or e-mail us at [email protected]. Visit our website https://ndvlaw.com.