INTELLECTUAL PROPERTY RIGHTS Organization (WIPO) on April 25, 2012.

Organization (WIPO) on April 25, 2012. The Madrid Protocol entered into force in the Philippines on July
25, 2012.
1. Declaration of State Policy - Sec. 2 IP Code Thus, the Intellectual Property Association of the Philippines (IPAP) commenced this special
civil action for certiorari and prohibition to challenge the validity of the President's accession to the Madrid
Protocol without the concurrence of the Senate. According to the IPAP, the Madrid Protocol is a treaty,
Section 2. Declaration of State Policy. - The State recognizes that an effective intellectual and industrial
not an executive agreement; hence, respondent DFA Secretary Albert Del Rosario acted with grave abuse
property system is vital to the development of domestic and creative activity, facilitates transfer of
of discretion in determining the Madrid Protocol as an executive agreement. Also, the IPAP has argued
technology, attracts foreign investments, and ensures market access for our products. It shall protect and
that the implementation of the Madrid Protocol in the Philippines; specifically the processing of foreign
secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual
trademark applications, conflicts with the Intellectual Property Code of the Philippines.
property and creations, particularly when beneficial to the people, for such periods as provided in this Act.
The IPAP has insisted that Article 2 of the Madrid Protocol means that foreign trademark
applicants may file their applications through the International Bureau or the WIPO, and their applications
The use of intellectual property bears a social function. To this end, the State shall promote the diffusion will be automatically granted trademark protection without the need for designating their resident agents
of knowledge and information for the promotion of national development and progress and the common in the country.
good.
ISSUE
It is also the policy of the State to streamline administrative procedures of registering patents, trademarks Is the Madrid Protocol unconstitutional for lack of concurrence by the Senate?
and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement
of intellectual property rights in the Philippines. (n) RULING
NO. The Court finds and declares that the President’s ratification is valid and constitutional
because the Madrid Protocol, being an executive agreement as determined by the Department of Foreign
Intellectual Property Association of the Philippines vs. Ochoa, G.R. No 204605, July 19, 2016 Affairs, does not require the concurrence of the Senate.

Under prevailing jurisprudence, the registration of trademarks and copyrights have been the
subject of executive agreements entered into without the concurrence of the Senate. Some executive
INTELLECTUAL PROPERTY ASSOCIATION OF THE PHILIPPINES v. HON. PAQUITO OCHOA, IN
agreements have been concluded in conformity with the policies declared in the acts of Congress with
HIS CAPACITY AS EXECUTIVE SECRETARY, ET AL.
respect to the general subject matter.
G.R. No. 204605, 19 July 2016, EN BANC (Bersamin, J.)
Accordingly, DFA Secretary Del Rosario’s determination and treatment of the Madrid Protocol
DOCTRINE OF THE CASE as an executive agreement; being in apparent contemplation of the express state policies on intellectual
The registration of trademarks and copyrights have been the subject of executive agreements property as well as within his power under Executive Order No. 459, are upheld.
entered into without the concurrence of the Senate. Some executive agreements have been concluded in
conformity with the policies declared in the acts of Congress with respect to the general subject matter. The Court observed that there are no hard and fast rules on the propriety of entering into a
treaty or an executive agreement on a given subject as an instrument of international relations. The primary
FACTS consideration in the choice of the form of agreement is the parties’ intent and desire to craft their
The Madrid System for the International Registration of Marks (Madrid System), which is the international agreement in the form they so wish to further their respective interests. The matter of form
centralized system providing a one-stop solution for registering and managing marks worldwide, allows takes a back seat when it comes to effectiveness and binding effect of the enforcement of a treaty or an
the trademark owner to file one application in one language, and to pay one set of fees to protect his mark executive agreement; inasmuch as all the parties; regardless of the form, become obliged to comply
in the territories of up to 97 member-states. The Madrid System is governed by the Madrid Agreement, conformably with the time-honored principle of pacta sunt servanda. The principle binds the parties to
concluded in 1891, and the Madrid Protocol, concluded in 1989. The Madrid Protocol has two objectives, perform in good faith their parts in the agreements.
namely: (1) to facilitate securing protection for marks; and (2) to make the management of the registered
marks easier in different countries.
In 2004, the Intellectual Property Office of the Philippines (IPOPHL), began considering the
country's accession to the Madrid Protocol. After a campaign for information dissemination, and a series
of consultations with stakeholders, IPOPHL ultimately arrived at the conclusion that accession would In view of the expression of state policy having been made by the Congress itself (through above-
benefit the country and help raise the level of competitiveness for Filipino brands. Hence, it recommended quoted provision), the IPAP is plainly mistaken in asserting that "there was no Congressional act
to the Department of Foreign Affairs (DFA) that the Philippines should accede to the Madrid Protocol. After that authorized the accession of the Philippines to the Madrid Protocol."
its own review, the DFA endorsed to the President the country's accession to the Madrid Protocol. The
DFA determined that the Madrid Protocol was an executive agreement. The IPAP misapprehends the procedure for examination under the Madrid Protocol, The
On March 27, 2012, President Benigno C. Aquino III ratified the Madrid Protocol through an difficulty, which the IPAP illustrates, is minimal, if not altogether inexistent. The IPOPHL actually
instrument of accession, which was deposited with the Director General of the World Intellectual Property requires the designation of the resident agent when it refuses the registration of a mark. Local

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representation is further required in the submission of the Declaration of Actual Use, as well as in is necessary. However, registration is no longer required where the agreement is in conformity of the
the submission of the license contract. The Madrid Protocol accords with the intent and spirit of requirements of the law under Sections 87 and 88.
the IP Code, particularly on the subject of the registration of trademarks. The Madrid Protocol does
not amend or modify the IP Code on the acquisition of trademark rights considering that the Section 87 of the IP Code covers the prohibited clauses which are adverse to competition and trade.
applications under the Madrid Protocol are still examined according to the relevant national law,
In that regard, the IPOPHL will only grant protection to a mark that meets the local registration
Prohibited Clauses (Section 87, IP Code)
requirements.

1. Those which impose upon the licensee the obligation to acquire from a specific source capital
goods, intermediate products, raw materials, and other technologies, or of permanently
employing personnel indicated by the licensor;
2. Specific Intellectual Property Rights-Sec. 4 IP Code
2. Those pursuant to which the licensee reserves the right to fix the sale or resale prices of the
products manufactured on the basis of the license;
Section 4. Definitions. - 4.1. The term "intellectual property rights" consists of: 3. Those that contain restrictions regarding the volume and structure of production;
4. Those that prohibit the use of competitive technologies in a non-exclusive technology transfer
a) Copyright and Related Rights; arrangement;
b) Trademarks and Service Marks; 5. Those that establish full or partial purchase option in favor of the licensor;
c) Geographic Indications; 6. Those that obligate the licensee to transfer for free to the licensor the inventions or
d) Industrial Designs; improvements that may be obtained through the use of the licensed technology;
e) Patents; 7. Those that require payment of royalties to the owners of patents for patents which are not used;
f) Layout-Designs (Topographies) of Integrated Circuits; and 8. Those that prohibit the licensee to export the licensed product unless justified for the protection
g) Protection of Undisclosed Information (n, TRIPS). of the legitimate interest of the licensor such as exports to countries where exclusive licenses
4.2. The term "technology transfer arrangements" refers to contracts or agreements involving the to manufacture and/or distribute the licensed product(s) have already been granted;
transfer of systematic knowledge for the manufacture of a product, the application of a process, or 9. Those which restrict the use of the technology supplied after the expiration of the technology
rendering of a service including management contracts; and the transfer, assignment or licensing of all transfer arrangement, except in cases of early termination of the technology transfer
forms of intellectual property rights, including licensing of computer software except computer software arrangement due to reason(s) attributable to the licensee;
developed for mass market. 10. Those which require payments for patents and other industrial property rights after their
expiration or termination of the technology transfer arrangement;
11. Those which require that the technology recipient shall not contest the validity of any of the
4.3. The term "Office" refers to the Intellectual Property Office created by this Act. patents of the technology supplier;
12. Those which restrict the research and development activities of the licensee designed to absorb
4.4. The term "IPO Gazette" refers to the gazette published by the Office under this Act. (n) and adapt the transferred technology to local conditions or to initiate research and development
programs in connection with new products, processes or equipment;
3. Technology Transfer Arrangements in General 13. Those which prevent the licensee from adapting the imported technology to local conditions, or
introducing innovation to it, as long as it does not impair the standards prescribed by the
licensor; and
WHAT IS TECHNOLOGY TRANSFER ARRANGEMENT? 14. Those which exempt the licensor from liability for non-fulfillment of his responsibilities under
the technology transfer arrangement and/or liability arising from third party suits brought about
Technology Transfer Arrangement refers to contracts or agreements, including renewals thereof, by the use of the licensed product or the licensed technology.
involving the transfer of systematic knowledge for the manufacture of a product, the application of a
process, or rendering of a service including management contracts; and the transfer, assignment or
On the other hand, Section 88 of the IP Code contains provisions which need to be included in voluntary
licensing of all forms of intellectual property rights, including licensing of computer software except
license agreement as follows:
computer software developed for mass market.

1. That the laws of the Philippines shall govern the interpretation of the agreement and in the
The signing of Republic Act 8293, otherwise known as the Intellectual Property (IP) Code, on June 6, 1997
event of litigation, the venue shall be the proper court in the place where the licensee has its
liberalizes regulations on technology transfer registration particularly the rate of fees or royalties and
principal office;
strengthens intellectual property rights protection in the Philippines. Voluntary Licensing has been
2. Continued access to improvements in techniques and processes related to the technology shall
provided by the Code. Recordal with the IP Philippines of agreements that involve transmission of rights
be made available during the period of the technology transfer arrangement;

2
 3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of "SEC. 6. The Organizational Structure of the IPO. – x x x
Arbitration of the Arbitration Law of the Philippines or the Arbitration Law of the United Nations "6.2. the Office shall be divided into seven (7) Bureaus, each of which shall be headed by a
Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Director and assisted by an Assistant Director. These Bureaus are:
Arbitration of the International Chamber of Commerce shall apply and the venue of arbitration "x x x
shall be the Philippines or any neutral country; and "(f) the Administrative, Financial and Personnel Services Bureau; and
4. The Philippine taxes on all payments relating to the technology transfer arrangement shall be "(g) the Bureau of Copyright and Other Related Rights."
borne by the licensor.
Section 7. The Director General and Deputies Director General. - 7.1. Functions. - The Director General
shall exercise the following powers and functions:
4. Right of a Foreigner to Sue for Protection of IP Rights-Sec. 3 and 160

Section 3. International Conventions and Reciprocity. - Any person who is a national or who is domiciled a) Manage and direct all functions and activities of the Office, including the promulgation of
or has a real and effective industrial establishment in a country which is a party to any convention, treaty rules and regulations to implement the objectives, policies, plans, programs and projects of the
Office: Provided, That in the exercise of the authority to propose policies and standards in
or agreement relating to intellectual property rights or the repression of unfair competition, to which the
relation to the following: (1) the effective, efficient, and economical operations of the Office
Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be requiring statutory enactment; (2) coordination with other agencies of government in relation to
entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or the enforcement of intellectual property rights; (3) the recognition of attorneys, agents, or other
reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise persons representing applicants or other parties before the Office; and (4) the establishment of
entitled by this Act. (n) fees for the filing and processing of an application for a patent, utility model or industrial design
or mark or a collective mark, geographic indication and other marks of ownership, and for all
Section 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. - other services performed and materials furnished by the Office, the Director General shall be
Any foreign national or juridical person who meets the requirements of Section 3 of this Act and does not subject to the supervision of the Secretary of Trade and Industry;
engage in business in the Philippines may bring a civil or administrative action hereunder for opposition,
cancellation, infringement, unfair competition, or false designation of origin and false description,
b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal
whether or not it is licensed to do business in the Philippines under existing laws. (Sec. 21-A, R.A. No. Affairs, the Director of Patents, the Director of Trademarks, and the Director of the
166a) Documentation, Information and Technology Transfer Bureau. The decisions of the Director
General in the exercise of his appellate jurisdiction in respect of the decisions of the Director of
Il. The Intellectual Property Office of the Philippines (IPOPhil) Sections 6 to 9 and 9A of the IP Code (as
Patents, and the Director of Trademarks shall be appealable to the Court of Appeals in
amended by RA 10372), Sections 10 to 19, IPCode accordance with the Rules of Court; and those in respect of the decisions of the Director of
Documentation, Information and Technology Transfer Bureau shall be appealable to the
Section 6. The Organizational Structure of the IPO. - 6.1. The Office shall be headed by a Director General Secretary of Trade and Industry; and
who shall be assisted by two (2) Deputies Director General.
c) Exercise original jurisdiction to resolve disputes relating to the terms of a license involving
6.2. The Office shall be divided into six (6) Bureaus, each of which shall be headed by a Director and the author's right to public performance or other communication of his work. The decisions of
assisted by an Assistant Director. These Bureaus are: the Director General in these cases shall be appealable to the Secretary of Trade and Industry.

a) The Bureau of Patents; 7.2. Qualifications. - The Director General and the Deputies Director General must be natural born citizens
b) The Bureau of Trademarks; of the Philippines, at least thirty-five (35) years of age on the day of their appointment, holders of a college
c) The Bureau of Legal Affairs; degree, and of proven competence, integrity, probity and independence: Provided, That the Director
d) The Documentation, Information and Technology Transfer Bureau; General and at least one (1) Deputy Director General shall be members of the Philippine Bar who have
e) The Management Information System and EDP Bureau; and engaged in the practice of law for at least ten (10) years: Provided further, That in the selection of the
f) The Administrative, Financial and Personnel Services Bureau. Director General and the Deputies Director General, consideration shall be given to such qualifications as
6.3. The Director General, Deputies Director General, Directors and Assistant Directors shall be appointed would result, as far as practicable, in the balanced representation in the Directorate General of the various
by the President, and the other officers and employees of the Office by the Secretary of Trade and Industry, fields of intellectual property.
conformably with and under the Civil Service Law. (n)
7.3. Term of Office. - The Director General and the Deputies Director General shall be appointed by the
Section 1. Section 6 of Republic Act No. 8293, otherwise known as the "Intellectual Property Code of the President for a term of five (5) years and shall be eligible for reappointment only once: Provided, That the
Philippines", is hereby amended to read as follows: first Director General shall have a first term of seven (7) years. Appointment to any vacancy shall be only
for the unexpired term of the predecessor.
3
7.4. The Office of the Director General. - The Office of the Director General shall consist of the Director "9A.1. Exercise original jurisdiction to resolve disputes relating to the terms of a
General and the Deputies Director General, their immediate staff and such Offices and Services that the license involving the author’s right to public performance or other communication of
Director General will set up to support directly the Office of the Director General. (n) his work;
"9A.2. Accept, review and decide on applications for the accreditation of collective
management organizations or similar entities;
Section 2. Section 7 of Republic Act No. 8293 is hereby amended to read as follows: "9A.3. Conduct studies and researches in the field of copyright and related rights;
and
"9A.4. Provide other copyright and related rights service and charge reasonable
"SEC. 7. The Director General and Deputies Director General. – fees therefor."
"x x x
"(b) Exercise exclusive appellate jurisdiction over all decisions rendered by the Director of Legal Section 10. The Bureau of Legal Affairs. - The Bureau of Legal Affairs shall have the following functions:
Affairs, the Director of Patents, the Director of Trademarks, the Director of Copyright and Other
Related Rights, and the Director of the Documentation, Information and Technology Transfer
Bureau. the decisions of the Director General in the exercise of his appellate jurisdiction in 10.1. Hear and decide opposition to the application for registration of marks; cancellation of trademarks;
respect of the decisions of the Director of Patents, the Director of Trademarks and the Director subject to the provisions of Section 64, cancellation of patents, utility models, and industrial designs; and
of Copyright and Other Related Rights shall be appealable to the Court of Appeals in petitions for compulsory licensing of patents;
accordance with the Rules of Court; and those in respect of the decisions of the Director of the
Documentation, Information and Technology Transfer Bureau shall be appealable to the 10.2. (a) Exercise original jurisdiction in administrative complaints for violations of laws involving
Secretary of Trade and Industry; intellectual property rights: Provided, That its jurisdiction is limited to complaints where the total damages
"(c) Undertake enforcement functions supported by concerned agencies such as the Philippine claimed are not less than Two hundred thousand pesos (P200,000): Provided further, That availment of
National Police, the National Bureau of Investigation, the Bureau of Customs, the Optical Media the provisional remedies may be granted in accordance with the Rules of Court. The Director of Legal
Board, and the local government units, among others; Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued
"(d) Conduct visits during reasonable hours to establishments and businesses engaging in in the course of the proceedings. (n)
activities violating intellectual property rights and provisions of this Act based on report,
information or complaint received by the office; and (b) After formal investigation, the Director for Legal Affairs may impose one (1) or more of the
"(e) Such other functions in furtherance of protecting IP rights and objectives of this Act." following administrative penalties:

(i) The issuance of a cease and desist order which shall specify the acts that the
Section 8. The Bureau of Patents. - The Bureau of Patents shall have the following functions: respondent shall cease and desist from and shall require him to submit a compliance
report within a reasonable time which shall be fixed in the order;
8.1. Search and examination of patent applications and the grant of patents;
8.2. Registration of utility models, industrial designs, and integrated circuits; and (ii) The acceptance of a voluntary assurance of compliance or discontinuance as
8.3. Conduct studies and researches in the field of patents in order to assist the Director General in may be imposed. Such voluntary assurance may include one or more of the
formulating policies on the administration and examination of patents. (n) following:

Section 9. The Bureau of Trademarks. - The Bureau of Trademarks shall have the following functions: (1) An assurance to comply with the provisions of the intellectual property
9.1. Search and examination of the applications for the registration of marks, geographic indications and law violated;
other marks of ownership and the issuance of the certificates of registration; and (2) An assurance to refrain from engaging in unlawful and unfair acts and
9.2. Conduct studies and researches in the field of trademarks in order to assist the Director General in practices subject of the formal investigation;
formulating policies on the administration and examination of trademarks. (n) (3) An assurance to recall, replace, repair, or refund the money value of
defective goods distributed in commerce; and
Section 3. A new Section 9A is hereby inserted after Section 9 of Republic Act No. 8293, to read as (4) An assurance to reimburse the complainant the expenses and costs
follows: incurred in prosecuting the case in the Bureau of Legal Affairs.
The Director of Legal Affairs may also require the respondent to submit periodic
compliance reports and file a bond to guarantee compliance of his undertaking;
"SEC. 9A. The Bureau of Copyright and Other Related Rights. – the Bureau of Copyright and
Other Related Rights shall have the following functions:
(iii) The condemnation or seizure of products which are subject of the offense. The
goods seized hereunder shall be disposed of in such manner as may be deemed
4
 appropriate by the Director of Legal Affairs, such as by sale, donation to distressed 11.6. Promote the use of patent information as an effective tool to facilitate the development of technology
local governments or to charitable or relief institutions, exportation, recycling into in the country;
other goods, or any combination thereof, under such guidelines as he may provide; 11.7. Provide technical, advisory, and other services relating to the licensing and promotion of technology,
and carry out an efficient and effective program for technology transfer; and
(iv) The forfeiture of paraphernalia and all real and personal properties which have 11.8. Register technology transfer arrangements, and settle disputes involving technology transfer
been used in the commission of the offense; payments. (n)

Section 12. The Management Information Services and EDP Bureau. - The Management Information
(v) The imposition of administrative fines in such amount as deemed reasonable by Services and EDP Bureau shall:
the Director of Legal Affairs, which shall in no case be less than Five thousand pesos
(P5,000) nor more than One hundred fifty thousand pesos (P150,000). In addition,
an additional fine of not more than One thousand pesos (P1,000) shall be imposed 12.1. Conduct automation planning, research and development, testing of systems, contracts with firms,
for each day of continuing violation; contracting, purchase and maintenance of equipment, design and maintenance of systems, user
consultation, and the like; and
(vi) The cancellation of any permit, license, authority, or registration which may have
been granted by the Office, or the suspension of the validity thereof for such period 12.2. Provide management information support and service to the Office. (n)
of time as the Director of Legal Affairs may deem reasonable which shall not exceed
one (1) year; Section 13. The Administrative, Financial and Human Resource Development Service Bureau. - 13.1.
The Administrative Service shall:
(vii) The withholding of any permit, license, authority, or registration which is being
secured by the respondent from the Office; (a) Provide services relative to procurement and allocation of supplies and equipment, transportation,
messengerial work, cashiering, payment of salaries and other Office's obligations, office maintenance,
(viii) The assessment of damages; proper safety and security, and other utility services; and comply with government regulatory requirements
in the areas of performance appraisal, compensation and benefits, employment records and reports;
(b) Receive all applications filed with the Office and collect fees therefor, and
(ix) Censure; and (c) Publish patent applications and grants, trademark applications, and registration of marks, industrial
designs, utility models, geographic indication, and lay-out-designs of integrated circuits registrations.
(x) Other analogous penalties or sanctions. (Secs. 6, 7, 8, and 9, Executive Order
No. 913 [1983]a) 13.2. The Patent and Trademark Administration Services shall perform the following functions among
others:
10.3. The Director General may by Regulations establish the procedure to govern the implementation of
this Section. (n) (a) Maintain registers of assignments, mergings, licenses, and bibliographic on patents and
trademarks;
Section 11. The Documentation, Information and Technology Transfer Bureau. - The Documentation, (b) Collect maintenance fees, issue certified copies of documents in its custody and perform
Information and Technology Transfer Bureau shall have the following functions: similar other activities; and
(c) Hold in custody all the applications filed with the office, and all patent grants, certificate of
registrations issued by the office, and the like.
11.1. Support the search and examination activities of the Office through the following activities: 13.3. The Financial Service shall formulate and manage a financial program to ensure availability and
(a) Maintain and upkeep classification systems whether they be national or international such proper utilization of funds; provide for an effective monitoring system of the financial operations of the
as the International Patent Classification (IPC) system; Office; and
(b) Provide advisory services for the determination of search patterns;
(c) Maintain search files and search rooms and reference libraries; and
(d) Adapt and package industrial property information. 13.4. The Human Resource Development Service shall design and implement human resource
11.2. Establish networks or intermediaries or regional representatives; development plans and programs for the personnel of the Office; provide for present and future manpower
11.3. Educate the public and build awareness on intellectual property through the conduct of seminars needs of the organization; maintain high morale and favorable employee attitudes towards the
organization through the continuing design and implementation of employee development programs. (n)
and lectures, and other similar activities;
11.4. Establish working relations with research and development institutions as well as with local and
international intellectual property professional groups and the like; Section 14. Use of Intellectual Property Rights Fees by the IPO. - 14.1. For a more effective and
11.5. Perform state-of-the-art searches; expeditious implementation of this Act, the Director General shall be authorized to retain, without need of
5
a separate approval from any government agency, and subject only to the existing accounting and auditing 121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or
rules and regulations, all the fees, fines, royalties and other charges, collected by the Office under this Act services (service mark) of an enterprise and shall include a stamped or marked container of
and the other laws that the Office will be mandated to administer, for use in its operations, like upgrading goods; (Sec. 38, R.A. No. 166a)
of its facilities, equipment outlay, human resource development, and the acquisition of the appropriate
office space, among others, to improve the delivery of its services to the public. This amount, which shall 121.2. "Collective mark" means any visible sign designated as such in the application for
be in addition to the Office's annual budget, shall be deposited and maintained in a separate account or registration and capable of distinguishing the origin or any other common characteristic,
fund, which may be used or disbursed directly by the Director General. including the quality of goods or services of different enterprises which use the sign under the
control of the registered owner of the collective mark; (Sec. 40, R.A. No. 166a)
14.2. After five (5) years from the coming into force of this Act, the Director General shall, subject to the
approval of the Secretary of Trade and Industry, determine if the fees and charges mentioned in 121.3. "Trade name" means the name or designation identifying or distinguishing an enterprise;
Subsection 14.1 hereof that the Office shall collect are sufficient to meet its budgetary requirements. If so, (Sec. 38, R.A. No. 166a)
it shall retain all the fees and charges it shall collect under the same conditions indicated in said Subsection
14.1 but shall forthwith, cease to receive any funds from the annual budget of the National Government; if
not, the provisions of said Subsection 14.1 shall continue to apply until such time when the Director 2. Functions of Trademarks
General, subject to the approval of the Secretary of Trade and Industry, certifies that the above-stated
fees and charges the Office shall collect are enough to fund its operations. (n) WHAT IS A TRADEMARK? WHY IS IT IMPORTANT?

Section 15. Special Technical and Scientific Assistance. - The Director General is empowered to obtain
the assistance of technical, scientific or other qualified officers and employees of other departments, A trademark is a tool used that differentiates goods and services from each other. It is a very important
bureaus, offices, agencies and instrumentalities of the Government, including corporations owned, marketing tool that makes the public identify goods and services. A trademark can be one word, a group
controlled or operated by the Government, when deemed necessary in the consideration of any matter of words, sign, symbol, logo, or a combination of any of these. Generally, a trademark refers to both
submitted to the Office relative to the enforcement of the provisions of this Act. (Sec. 3, R.A. No. 165a) trademark and service mark, although a service mark is used to identify those marks used for services
only.
Section 16. Seal of Office. - The Office shall have a seal, the form and design of which shall be approved
by the Director General. (Sec. 4, R.A. No. 165a) Trademark is a very effective tool that makes the public remember the quality of goods and services. Once
a trademark becomes known, the public will keep on patronizing the products and services.
Section 17. Publication of Laws and Regulations. - The Director General shall cause to be printed and Utilized properly, a trademark can become the most valuable business asset of an enterprise. In addition
make available for distribution, pamphlet copies of this Act, other pertinent laws, executive orders and to making goods and services distinctive, the owner of a mark may earn revenues from the use of the
information circulars relating to matters within the jurisdiction of the Office. (Sec. 5, R.A. No. 165a)
mark by licensing its use by another or though franchising agreements.

Section 18. The IPO Gazette. - All matters required to be published under this Act shall be published in 3. Acquisition of Ownership of Mark
the Office's own publication to be known as the IPO Gazette. (n)
a. Sec. 122
Section 19. Disqualification of Officers and Employees of the Office. - All officers and employees of the
Office shall not apply or act as an attorney or patent agent of an application for a grant of patent, for the Section 122. How Marks are Acquired. - The rights in a mark shall be acquired through registration made
registration of a utility model, industrial design or mark nor acquire, except by hereditary succession, any validly in accordance with the provisions of this law. (Sec. 2-A, R A. No. 166a)
patent or utility model, design registration, or mark or any right, title or interest therein during their
employment and for one (1) year thereafter. (Sec. 77, R.A. No. 165a)

HOW CAN YOU PROTECT YOUR MARK?

In the Philippines, a trademark can be protected through registration. Registration gives the trademark
1. Definition of Marks, Collective Marks, Trade Names, Slogan-Sec. 121 owner the exclusive right to use the mark and to prevent others from using the same or similar marks on
identical or related goods and services.
Section 121. Definitions. - As used in Part III, the following terms have the following meanings:

6
The right to a trademark is granted to the one who first files a trademark application with the IP Philippines. the ruling of the IPO Director General and reinstated that of the BLA. The petitioner filed a Motion for
Before applying for trademark registration, it would help if you conduct a search in the trademarks Reconsideration but was denied by the CA. Hence , this petition to the Supreme Court.
database to determine if there are identical or similar marks that would prevent the registration of your
mark. This is to prevent future conflicts with marks that are already registered or with earlier filing dates.
ISSUE:
The trademark protection granted by IP Philippines protects your mark only in the Philippines. If you want
1. Whether or not the petitioner’s documentary evidence, although photocopies, are admissible
your mark protected outside the country, you will need to file applications in the countries where you want
in court?
your mark registered.
2. Whether or not the subject marks should be allowed registration in the name of the petitioner?

HELD:
What may be registered?
1. The court ruled yes. It is a well-settled principle that the rules of procedure are mere tools aimed
at facilitating the attainment of justice, rather than its frustration. A strict and rigid application of
the rules must always be eschewed when it would subvert the primary objective of the rules,
Your mark should be able to distinguish your goods or services from those of others. Your mark should
that is, to enhance fair trials and expedite justice. In the light of this, Section 5 of the Rules on
also meet the requirements for registrability of marks under Sec. 123.1 of the Intellectual Property Code. Inter Partes Proceedings provides that, “The Bureau shall not be bound by strict technical rules
b Birkenstock GmbH vs. Phil Shoe Marketing GR #194307, Nov. 29, 2013 of procedure and evidence but may adopt, in the absence of any applicable rule herein, such
mode of proceedings which is consistent with the requirements of fair play and conducive to
Birkenstock Orthopaedie GMBH and Co. KG (formerly Birkenstock Orthopaedie GMBH) vs. the just, speedy and inexpensive disposition of cases, and which will the Bureau the greatest
Philippine Stock Expo Marketing Corporation possibility to focus on the contentious issues before it.
15 SCRA 469
In the case at bar, it should be noted that the IPO had already obtained the originals of such
documentary evidence in the related Cancellation Case earlier before it. Under the
FACTS: circumstance and the merits of the instant case as will be subsequently discussed, the Court
holds that the IPO Director General’s relaxation of procedure was a valid exercise of his
Petitioner, a corporation duly organized and existing under the laws of Germany applied for discretion in the interest of substantial justice.
various trademark registrations before the Intellectual Property Office (IPO). However, the applications
were suspended in view of the existing registration of the mark “BIRKENSTOCK AND DEVICE” under 2. The court ruled in favour of the petitioner. Under Section 12 of Republic Act 166, it provides
Registration No. 56334 dated October 21, 1993 in the name of Shoe Town International and Industrial that, “Each certificate of registration shall remain in force for twenty years: Provided, that the
Corporation, the predecessor-in-interest of respondent Philippine Shoe Expo Marketing Corporation. registration under the provisions of this Act shall be cancelled by the Director, unless within one
year following the fifth, tenth and fifteenth anniversaries of the date of issue of the certificate of
On May 27, 1997, petitioner filed a petition (Cancellation Case) for cancellation of Registration registration, the registrant shall file in the Patent Office an affidavit showing that the mark or
No. 564334 on the ground that it is the lawful and rightful owner of the Birkenstock marks. During its trade-name is still in use or showing that its non-use is due to special circumstance which
pendency, however, respondent and/or it predecessor-in-interest failed to file the required 10th Year excuse such non-use and is not due to any intention to abandon the same, and pay the required
Declaration of Actual Use (10th Year DAU) for Registration No. 56334 on or before October 21, 2004, fee.”
thereby resulting the cancellation of such mark. Accordingly, the cancellation case was dismissed for being
moot and academic thereby paving the way for the publication of the subject applications. In the case at bar, respondent admitted that it failed to file the 10 th Year DAU for Registration
No. 56334 within the requisite period, or on or before October 21, 2004. As a consequence, it
In response, respondent filed with the Bureau of Legal Affairs (BLA) of the IPO three separate was deemed to have abandoned or withdrawn any right or interest over the mark
verified notices of opposition to the subject applications docketed as Inter Partes Cases claiming, among “BIRKENSTOCK”. It must be emphasized that registration of a trademark, by itself, is not a
others, it, together with its predecessor-in-interest, has been using the Birkenstock marks in the Philippines mode of acquiring ownership. If the applicant is not the owner of the trademark, he has no right
for more than 16 years through the mark “BIRKENSTOCK AND DEVICE”. In its Decision, the BLA of the to apply for its registration. Registration merely creates a prima facie presumption of the validity
IPO sustained respondent’s opposition, thus ordering the rejection of the subject applications. Aggrieved, of the registration. Such presumption, just like the presumptive regularity in the performance of
petitioner appealed to the IPO Director General whereby in its decision, the latter reversed and set aside official functions, is rebuttable and must give way to evidence to the contrary. Besides,
the ruling of the BLA thus allowing the registration of the subject applications. petitioner has duly established its true and lawful ownership of the mark “BIRKENSTOCK”. It
submitted evidence relating to the origin and history of “BIRKENSTOCK” and it use in
Finding the IPO Director General’s reversal of the BLA unacceptable, respondent filed a petition commerce long before respondent was able to register the same here in the Philippines.
for review with the Court of Appeals. In its decision dated June 25, 2010, the CA reversed and set aside Petitioner also submitted various certificates of registration of the mark “BIRKENSTOCK” in

7
 various countries and that it has used such mark in different countries worldwide, including the On December 3, 1991, upon the termination of its distributorship agreement with SUPERIOR, KUNNAN
Philippines. appointed SPORTS CONCEPT as its new distributor. Subsequently, KUNNAN also caused the publication
 of a Notice and Warning in the Manila Bulletin’s January 29, 1993 issue, stating that (1) it is the owner of
the disputed trademarks; (2) it terminated its Distributorship Agreement with SUPERIOR; and (3) it

appointed SPORTS CONCEPT as its exclusive distributor. This notice prompted SUPERIOR to file its
Republic Act No. (RA) 166, the governing law for Registration No. 56334, requires the filing
Complaint for Infringement of Trademark and Unfair Competition with Preliminary Injunction against
of a DAU on specified periods, to wit:
KUNNAN.
Section 12. Duration. – Each certificate of registration shall remain in force for twenty years:
Provided, That registrations under the provisions of this Act shall be cancelled by the Director,
unless within one year following the fifth, tenth and fifteenth anniversaries of the date of issue of Prior to and during the pendency of the infringement and unfair competition case before the RTC,
the certificate of registration, the registrant shall file in the Patent Office an affidavit showing that KUNNAN filed with the Bureau of Patents, Trademarks and Technology Transfer separate Petitions for
the mark or trade-name is still in use or showing that its non-use is due to special circumstance
the Cancellation of Registration Trademarks well as Opposition to Applications (Consolidated Petitions for
Cancellation) involving the KENNEX and PRO KENNEX trademarks. In essence, KUNNAN filed the
which excuse such non-use and is not due to any intention to abandon the same, and pay the
Petition for Cancellation and Opposition on the ground that SUPERIOR fraudulently registered and
required fee.
appropriated the disputed trademarks; as mere distributor and not as lawful owner, it obtained the
The aforementioned provision clearly reveals that failure to file the DAU within the requisite
registrations and assignments of the disputed trademarks in violation of the terms of the Distributorship
period results in the automatic cancellation of registration of a trademark. In turn, such failure is
Agreement and Sections 2-A and 17 of Republic Act No. 166, as amended. These cases were resolved
tantamount to the abandonment or withdrawal of any right or interest the registrant has over his in favour of Kunnan by the BPTTT and the Court of Appeals. This decision became final.
trademark.

It must be emphasized that registration of a trademark, by itself, is not a mode of acquiring Issue: WON Superior, as a distributor, is the true and rightful owner of the trademarks.
ownership. If the applicant is not the owner of the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie presumption of the validity of the Held:
registration, of the registrant’s ownership of the trademark, and of the exclusive right to the use
thereof. Such presumption, just like the presumptive regularity in the performance of official No. An exclusive distributor does not acquire any proprietary interest in the principal’s trademark and
functions, s rebuttable and must give way to evidence to the contrary. cannot register it, unless the owner has assigned the right.

Trademark infringement
c. Superior Commercial Enterprises, Inc. vs. Kunnan Enterprises Ltd. and Sports Concept & Distributor,
Inc., G.R. No. 169974, April 20, 2010 To establish trademark infringement, the following elements must be proven: (1) the validity of plaintiff’s
mark; (2) the plaintiff’s ownership of the mark; and (3) the use of the mark or its colorable imitation by the
SUPERIOR COMMERCIAL ENTERPRISES INC. vs. KUNNAN ENTERPRISES LTD. AND SPORTS alleged infringer results in “likelihood of confusion.
CONCEPT & DISTRIBUTOR, INC., G.R. No. 169974, April 20, 2010
Based on these elements, we find it immediately obvious that the second element – the plaintiff’s
FACTS: ownership of the mark – was what the Registration Cancellation Case decided with finality. On this
element depended the validity of the registrations that, on their own, only gave rise to the presumption of,
but was not conclusive on, the issue of ownership. In no uncertain terms, the appellate court in the
On October 1, 1982, KUNNAN appointed SUPERIOR as its exclusive distributor in the Philippines under
Registration Cancellation Case ruled that SUPERIOR was a mere distributor and could not have been the
a Distributorship Agreement which states that:
owner, and was thus an invalid registrant of the disputed trademarks. The right to register a trademark is
based on ownership, and therefore only the owner can register it. In finding that Kunnan owned the marks,
“Kunnan intends to acquire ownership of the Kennex trademark registered by Superior the court considered the distributorship agreement and the so-called assignment agreement in their
Commercial in the Philippines. Superior Commercial is desirous of being appointed as the sole entirety; it confirmed that Superior had sought to be Kunnan’s exclusive distributor. As enunciated in the
distributor of Kunnan products in the Philippines.” case of Gabriel vs. Perez, 50 SCRA 406, “a mere distributor of a product bearing a trademark, even if
permitted to use said trademark has no right to and cannot register the said trademark.
SUPERIOR’s President and General Manager, misled KUNNAN’s officers into believing that KUNNAN
could not acquire trademark rights in the Philippines. KUNNAN decided to assign its applications to register
‘Pro Kennex’ as a trademark to SUPERIOR, on condition that SUPERIOR acknowledged that KUNNAN Unfair competition
was still the real owner of the mark and agreed to return it to KUNNAN on request.
8
Unfair competition has been defined as the passing off (or palming off) or attempting to pass off upon the intended to deceive the public as to the identity of the goods sold or of the manufacturer of the goods
public of the goods or business of one person as the goods or business of another with the end and sold.
probable effect of deceiving the public. The essential elements of unfair competition are (1) confusing
similarity in the general appearance of the goods; and (2) intent to deceive the public and defraud a
competitor. 

Cancellation of registration of a trademark has the effect of depriving the registrant of
Jurisprudence also formulated the following “true test” of unfair competition: whether the acts of the
protection from infringement from the moment judgment or order of cancellation has become
defendant have the intent of deceiving or are calculated to deceive the ordinary buyer making his
purchases under the ordinary conditions of the particular trade to which the controversy relates. One of final. In a trademark infringement, title to the trademark is indispensable to a valid cause of action
the essential requisites in an action to restrain unfair competition is proof of fraud; the intent to deceive, and such title is shown by its certificate of registration. 

actual or probable must be shown before the right to recover can exist.
As a mere distributor, petitioner Superior undoubtedly had no right to register the
questioned mark in its name. Well-entrenched in our
In the present case, no evidence exists showing that KUNNAN ever attempted to pass off the goods it jurisdiction is the rule that the right to register a trademark should be based on ownership. When
sold (i.e. sportswear, sporting goods and equipment) as those of SUPERIOR. In addition, there is no the applicant is not the owner of the trademark being applied for, he has no right to apply for the
evidence of bad faith or fraud imputable to KUNNAN in using the disputed trademarks. registration of the same. Under the Trademark Law, only
Specifically, SUPERIOR failed to adduce any evidence to show that KUNNAN by the above-cited acts
the owner of the trademark, trade name or service mark used to distinguish his goods, business
or service from the goods, business or service of others is entitled to register the same. An exclusive
distributor does not acquire any proprietary interest in the principal’s trademark and cannot
register it in his own name unless it is has been validly assigned to him.
ECOLE DE CUISINE MANILLE (CORDON BLEU OF PH) INC V. RENAUD COINTREAU & CIE AND LE
CORDON BLEU INT’L B.V.
Acquisition of Ownership of Trade Name Sec. 165

Section 165. Trade Names or Business Names. - 165.1. A name or designation may not be used FACTS
as a trade name if by its nature or the use to which such name or designation may be put, it is
contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the  June 21, 1990: Cointreau, a partnership registered under the laws of France, filed before
public as to the nature of the enterprise identified by that name. BPTTT a trademark application for the mark “LE CORDON BLEU & DEVICE” for goods falling
under classes 8,9,16,21,24,25,29, and 30 of Nice Classification.
 July 23 1993: Ecole De Cuisine Manille, Inc. filed an opposition to the subject application
165.2.(a) Notwithstanding any laws or regulations providing for any obligation to register trade
averring that
names, such names shall be protected, even prior to or without registration, against any unlawful
o a) it is the owner of the mark “LE CORDON BLEU, ECOLE DE CUISINE MANILLE,”
act committed by third parties.
which it has been using since 1948 in cooking and other culinary activities;
o b) it has earned immense and invaluable goodwill such that Cointreau’s use of the
(b) In particular, any subsequent use of the trade name by a third party, whether as a trade name mark will create confusion, mistake and deception to the public as to the origin and
or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the sponsorship of the goods, and cause great and irreparable injury and damage to
public, shall be deemed unlawful. Ecole’s business reputation and goodwill as a senior user of the same.
 Oct 7 1993: Cointreau answered,
165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply o (a) it has filed applications for the subject mark’s registration in various jurisdictions,
mutatis mutandis. including the Philippines;
o (b) Le Cordon Bleu is a culinary school of worldwide acclaim which was established
in Paris, France in 1895;
165.4. Any change in the ownership of a trade name shall be made with the transfer of the
o (c) Le Cordon Bleu was the first cooking school to have set the standard for the
enterprise or part thereof identified by that name. The provisions of Subsections 149.2 to 149.4
teaching of classical French cuisine and pastry making; and
shall apply mutatis mutan
o (d) it has trained students from more than eighty (80) nationalities, including Ecole’s
directress, Ms. Lourdes L. Dayrit, who was also an alumna of the culinary school in
a. Ecole De Cuisine Manille (Cordon Bleu of the Philippines), Inc. vs. Renaus Paris
Cointreau & Cie and Le Cordon Bleu Int'l, B.V., G.R. No. 185830, June 5, 2013)
9
  During pendency of case, Cointreau was issued Cert. of Reg for the marks “CORDON BLEU Whether Cointreau is the true and lawful owner of the subject mark and thus entitled to have the same
& DEVICE” and “LE CORDON BLEU PARIS 1895 & DEVICE” for goods and services under registered under its name. YES.
classes 21 and 41 of the Nice Classification.
 BLA: sustained Ecole’s opposition -> insufficient evidence to establish Cointreau’s claim of
prior use in PH. Cointreau has not established any proprietary right entitled to protection in the
Philippine jurisdiction because the law on trademarks rests upon the doctrine of nationality or RATIO
territoriality.
 Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner
 IPO DG: reversed BLA -> while Section 2 of R.A. No. 166 requires actual use of the subject
thereof and must have actually used the mark in commerce in the Philippines for two (2) months
mark in commerce in the Philippines for at least two (2) months before the filing date of the
prior to the application for registration. Section 2-A of the same law sets out to define how one
application, only the owner thereof has the right to register the same, explaining that the user
goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in
of a mark in the Philippines is not ipso facto its owner. Moreover, Section 2-A of the same law
commerce is also the test of ownership but the provision went further by saying that the mark
does not require actual use in the Philippines to be able to acquire ownership of a mark.
must not have been so appropriated by another. Additionally, it is significant to note that Section
Cointreau has been using the mark since 1895
2-A does not require that the actual use of a trademark must be within the Philippines. One
 CA: affirmed IPO-DG -> declared Cointreau as the true and actual owner of the subject mark
may be an owner of a mark due to its actual use but may not yet have the right to register
with a right to register the same in the Philippines under Section 37 of R.A. No. 166, having
such ownership here due to the owner’s failure to use the same in the Philippines for
registered such mark in its country of origin on November 25, 1986.
two (2) months prior to registration.
 Foreign marks which are not registered are still accorded protection against infringement and/or
ISSUE unfair competition. At this point, it is worthy to emphasize that the Philippines and France,

 Cointreau’s country of origin, are both signatories to the Paris Convention for the Protection of been so appropriated by another. Additionally, it is significant to note that Section 2-A does not
Industrial Property (Paris Convention). require that the actual use of a trademark must be within the Philippines. Thus, under R.A. No. 166,
 Under the Paris Convention, the Philippines is obligated to assure nationals of the signatory- one may be an owner of a mark due to its actual use but may not yet have the right to register
countries that they are afforded an effective protection against violation of their intellectual such ownership here due to the owner’s failure to use the same in the Philippines for two (2)
property rights in the Philippines in the same way that their own countries are obligated to months prior to registration.
accord similar protection to Philippine nationals. Thus, under Philippine law, a trade name of a Nevertheless, foreign marks which are not registered are still accorded protection against
national of a State that is a party to the Paris Convention, whether or not the trade name forms
infringement and/or unfair competition. At this point, it is worthy to emphasize that the Philippines
part of a trademark, is protected “without the obligation of filing or registration.”
and France, Cointreau’s country of origin, are both signatories to the Paris Convention for the
 IN THIS CASE: Cointreau has been using the subject mark in France since 1895, prior to
Protection of Industrial Property (Paris Convention).
Ecole’s averred first use of the same in the Philippines in 1948, of which the latter was fully
aware thereof. Cointreau was likewise the first registrant of the said mark under various
In any case, the present law on trademarks, Republic Act No. 8293, otherwise known as the
classes, both abroad and in the Philippines, having secured Home Registration dated
November 25, 1986 from its country of origin, as well as several trademark registrations in the Intellectual Property Code of the Philippines, as amended, has already dispensed with the
Philippines. requirement of prior actual use at the time of registration.
 Ecole also has no cert of reg over the subj mark but only a pending application covering 
services limited to Class 41.
 Final note: the function of a trademark is to point out distinctly the origin or ownership of the
goods (or services) to which it is affixed; to secure to him, who has been instrumental in bringing 5. Registrabity of Marks
into the market a superior article of merchandise, the fruit of his industry and skill; to assure the
public that they are procuring the genuine article; to prevent fraud and imposition; and to protect
Your mark will not be registered if it is:
the manufacturer against substitution and sale of an inferior and different article as his product.

DESCRIPTIVE
 These are marks that describe the characteristics of the goods or services. Examples are “DURABLE”
Under Section 2 of R.A. No. 166, in order to register a trademark, one must be the owner for shoes (describes the quality), “A LITER” for cooking oil (quantity), and so is “KITCHEN” for cooking
thereof and must have actually used the mark in commerce in the Philippines for two (2) months
utensils (intended purpose).
prior to the application for registration. Section 2-A of the same law sets out to define how one
MISLEADING
goes about acquiring ownership thereof. Under Section 2-A, it is clear that actual use in commerce
Marks that are likely to deceive or have the tendency to misinform the consumers about the actual
is also the test of ownership but the provision went further by saying that the mark must not have
10
characteristics of the goods or services like “BOLPENS” for pencils, “COLA” for alcoholic beverages, (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or
“BULAKAN” for sweets not originating from or produced in Bulacan. falsely suggest a connection with persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt or disrepute;
GENERIC and customary to trade
Generic marks are names of products they seek to identify. For instance, “KAP KEYK” for cupcakes, (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political
”CAFFE” for coffee and “MAKINAH” for machines. subdivisions, or of any foreign nation, or any simulation thereof;

Marks and indications that have become common in everyday language or usage can not be registered. (c) Consists of a name, portrait or signature identifying a particular living individual except by
They no longer distinguish the goods and services because they are used so often to refer to the goods his written consent, or the name, signature, or portrait of a deceased President of the
and services. Example of this is “VCO” for virgin coconut oil, “DIAMOND PEEL” for services involving Philippines, during the life of his widow, if any, except by written consent of the widow;
cosmetic procedure.

Contrary to Public Order or Morality (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier
Marks that are against the common standard of morality. An example is “PRO-TERRORISM” for filing or priority date, in respect of:
clothing.
(i) The same goods or services, or
CONSISTS OF NAMES, PORTRAITS OF PERSONS, MAPS, FLAGS AND OTHER POLITICAL
SYMBOLS (ii) Closely related goods or services, or
Marks that contain names or portraits of living individuals may be rejected unless the individual gives
written consent. For instance, no one can use the picture of Manny Pacquiao as a trademark unless he
is Mr. Pacquiao himself or he was duly authorized by Mr. Pacquiao. (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;

SHAPE AND COLOR (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is
Shapes must be distinctive from the usual shape of goods or containers of the goods, in order to be considered by the competent authority of the Philippines to be well-known internationally and
considered a trademark. One classic example is the COKE BOTTLE. in the Philippines, whether or not it is registered here, as being already the mark of a person
Color alone is not accepted unless it is defined by a given form. 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
MARKS THAT MAY CAUSE CONFUSION knowledge of the relevant sector of the public, rather than of the public at large, including
Your mark cannot be registered if it is identical with or similar to a registered mark or a mark with earlier knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
filing date for goods and services that are exactly the same or for goods and services that are
related. Consumers should not confuse your mark with the marks of others.
(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
Identical with, or confusingly similar to WELL-KNOWN MARKS
with respect to goods or services which are not similar to those with respect to which
Marks that are identical with or similar to marks that are known internationally and in the Philippines will
registration is applied for: Provided, That use of the mark in relation to those goods or services
be refused registration.
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;
What are the requirements to apply for registration?
1. A duly filled out trademark application form
(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or
2. Drawing of the mark
geographical origin of the goods or services;
3. Payment of fees

(h) Consists exclusively of signs that are generic for the goods or services that they seek to
identify;
a. Non-Registrable Marks Sec. 123.1
(i) Consists exclusively of signs or of indications that have become customary or usual to
Section 123. Registrability. - 123.1. A mark cannot be registered if it: designate the goods or services in everyday language or in bona fide and established trade
practice;

11
 (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, of a laudatory mark is GOLD MEDAL for baking flour and an example of a geographically descriptive mark
quality, quantity, intended purpose, value, geographical origin, time or production of the goods is BANK OF NEW YORK.
or rendering of the services, or other characteristics of the goods or services;
Generic - Generic words are not trademarks. Words being used to define the product or service, but not
(k) Consists of shapes that may be necessitated by technical factors or by the nature of the the source. For example, the use of APPLE for an apple fruit retailer would be considered generic. Many
goods themselves or factors that affect their intrinsic value; famous trademarks as a result of success have been improperly adopted by the public to mean the generic
product. Thus, marks have been rendered generic and their trademark protection was irretrievably lost.
(l) Consists of color alone, unless defined by a given form; or Such generizied marks include aspirin, cellophane, dry ice, linoleum, and escalator. This is why XEROX
Company has expended millions of dollars in advertising campaigns to strongly discourage the public's
misuse of its XEROX mark as a verb ("Please xerox it for me") or a noun ("The xeroxes are better than
(m) Is contrary to public order or morality. the original"). To use a trademark properly and prevent it from becoming generic, it should be used as an
adjective and be used in conjunction with the generic noun. ("This is a XEROX copier") The mark should
b. Secondary Meaning, Sec. 123.2 also be in capital letters or different font in order to distinguish it from the plain text.

123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the 6. Prior Use of Mark as a Requirement-Sec. 122, 152
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.
The Office may accept as prima facie evidence that the mark has become distinctive, as used in Section 122. How Marks are Acquired. - The rights in a mark shall be acquired through registration made
connection with the applicant's goods or services in commerce, proof of substantially exclusive and validly in accordance with the provisions of this law. (Sec. 2-A, R A. No. 166a)
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 152. Non-use of a Mark When Excused. - 152.1. Non-use of a mark may be excused if caused
6. Fanciful, Arbitrary, Suggestive, Composite and Coined Marks by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse
non-use of a mark.

Trademarks vary in strength, based on distinctiveness. Strong marks are highly distinctive and easier to
152.2. The use of the mark in a form different from the form in which it is registered, which does not alter
protect, while weak marks are less distinctive and harder to protect. Non-distinctive marks are neither
its distinctive character, shall not be ground for cancellation or removal of the mark and shall not diminish
registerable nor protectable. Five categories of distinctiveness are:
the protection granted to the mark.

Fanciful - A coined or made-up word, which does not exist in the English and other languages, in any
152.3. The use of a mark in connection with one or more of the goods or services belonging to the class
dictionary, to identify the source of goods or service. For example: Sony, Xerox, and Kinkos are coined
in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other
words which otherwise have no meaning in the English language. Generally, these marks are given the
goods or services of the same class.
strongest protection, but cost newly coined marks cost more in marketing costs in order to introduce to the
public this new name and associate the name with the source of goods or services.
152.4. The use of a mark by a company related with the registrant or applicant shall inure to the latter's
benefit, and such use shall not affect the validity of such mark or of its registration: Provided, That such
Arbitrary - A common word used to identify completely unrelated goods or services is considered
mark is not used in such manner as to deceive the public. If use of a mark by a person is controlled by the
arbitrary. For example, the use of the word APPLE to identify computers or LOTUS for software. Arbitrary
registrant or applicant with respect to the nature and quality of the goods or services, such use shall inure
marks are usually afforded strong protection within the specific related class of goods or services.
to the benefit of the registrant or applicant. (n)

Suggestive - A word that invokes an image of the characteristics or qualities of the goods is considered
suggestive. For example, OBSESSION for perfume, INTRIGUE for car, COPPERTONE for tanning lotion
or CATERPILLAR for mechanized tractors. Suggestive marks are usually entitled to some protection.

Descriptive - A word that describes the characteristics, qualities (laudatory), or geographical or family
origin of the product is considered descriptive. Descriptive marks must have become recognized (or
acquire so-called "secondary meaning" by the public through continuous use and advertising) in order to
be given trademark protection. For example PUBLIC STORAGE for providing rental storage space for the
public, or INTERNATIONAL BUSINESS MACHINES for business machines and computers. An example
12