REPORTER 3 - ROGELIO

PPT: Section 138. Certificates of Registration. - A certificate of registration of a mark shall be

prima facie evidence of the following:
 Validity of the registration;
 Registrant's ownership of the mark; and
 Registrant's exclusive right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate.

Explanation: Tagalugin na lang nakabullet, tas yon na agad basahin ni roger.

PPT: Contents of Certificate of Registration.
The certificate of registration of a mark shall include the following:
a) reproduction of the mark;
b) registration number;
c) the name of the registered owner;
d) address of the registered owner, and if the registered owner's address is outside the
country, its address for service within the country;
e) the date of application;
f) the date of registration;
g) if priority is claimed, an indication of this fact, and the number, date and country/office of
the application, basis of the priority claim;
h) the list of goods and/ or services in respect of which registration has been granted, with
the indication of the corresponding class or classes; and
i) disclaimer, color/ s claimed, description of the mark, if any, translation/transliteration of
the mark, if any, and such other data as the Regulations may prescribe from time to time.
EXPLANATION:
And here are the contents included in the certificate of registration. The reproduction of the
mark, registration number, pangalan at address ng registered owner, kung ang address ng
registered owner ay outside the Philippines ang ilagay ay yung address for service within the
Philippines. Kasama rin yung date ng application at registration, if priority is claimed, an
indication of this fact, at yung number, date at bansa or office kung saan ipinasa yung
application, at yung basis of the priority claim; kasama rin yung listahan ng goods at services na
and its corresponding classes and last is the disclaimer, color/ s claimed, description of the mark,
if any, translation/transliteration of the mark, and such other data also.

PPT: Section 145. Duration. -The registration shall remain in force for ten (10) years, renewable
for periods of ten (10) years: Provided, That the requisite DAU as provided for under these
Regulations has been filed.
Explanation
The duration of registration is ten years and is subject to indefinite renewals of 10 years each.
From filing of registration, magfa-file ng Declaration of Actual Use (DAU) and aside from that
within 1 year from the 5th year anniversary magfa-file pa rin ng Declaration of Actual Use
(DAU). Kailangan ma-prove sa Intellectual Property Office (IPO) that you are using this
trademark exclusively. Otherwise, the mark shall be removed from the Register by the IPO.

PPT: Section 146. Renewal. - 146.1. The request for renewal shall contain the following
indications:

(a) An indication that renewal is sought;

(b) The name and address of the registrant or his successor-in-interest, hereafter referred
to as the "right holder";

(c) The registration number of the registration concerned;

(d) The filing date of the application which resulted in the registration concerned to be
renewed;

(e) Where the right holder has as an authorized representative or agent, the name and
address of that representative or agent;

(f) The names of the recorded goods or services for which the renewal is requested or the
names of the recorded goods or services for which the renewal is not requested, grouped
according to the classes of the Nice Classification to which that group of goods or
services belongs and presented in the order of the classes of the said Classification; and

(g) A signature by the right holder or the right holder’s authorized representative or
agent.

EXPLANATION: A certificate of registration may be renewed for periods of ten (10) years at
its expiration upon payment of the prescribed fee and upon filing of a request. The Petition for
renewal of Registration must be signed by a duly authorized representative of the
owner/registrant and must be notarized.

Note: pakisunod sabihin yung enumeration pero pakitagalog iba para hindi halatang binabasa
lang.

Q1: When to file a request for renewal?

 Any time within six (6) months before the expiration of the period for which the
registration was issued or renewed; or
 May be made within six (6) months after such expiration on payment of the additional fee
herein prescribed.
EXPLANATION: Such request shall be in Filipino or English and may be made at any time
within six (6) months before the expiration of the period for which the registration was issued or
renewed, or it may be made within six (6) months after such expiration on payment of the
additional fee herein prescribed. If the Office refuses to renew the registration, it shall notify the
registrant of his refusal and the reasons therefor. (PATAGLISH? KUNG WANT LANG)

Q2: Renewal Filed by Person Who is Not the Resident Agent of Record.
 power of attorney appointing the person filing the petition as the representative of the
registrant must be filed; and
 upon payment of the required fee, must be recorded before the Office can act upon the
petition for renewal.
EXPLANATION: If the registrant, assignee or other owner of the mark which is the subject of a
petition for renewal registration is not domiciled in the Philippines, and if the petition for
renewal is filed by a person who is not the authorized representative or agent of record, the
power of attorney appointing the person filing the petition as the representative of the registrant
must be filed and, upon payment of the required fee, must be recorded before the Office can act
upon the petition for renewal.

PPT: Certificate of Renewal of Registration.

Certificate of renewal shall contain the following:
a) registration number;
b) the mark subject of the renewal;
c) the date of original registration and renewal registration;
d) the duration of the renewal registration;
e) all the data required to be contained in a certificate of registration provided in these
Regulations including any limitation contained in the order of the Director approving the
renewal of the registration.
EXPLANATION:

Upon payment of the required fee for the issuance, yung IP Office mag-iisue ng certificate of
renewal and then it will be published in the IPO eGazette and shall be entered in the record of the
IPO. The Certificate of Renewal shall contain registration number, the mark subject of renewal,
date ng original and renewal registration, the duration of renewal registration and all the data
required to contained in the certificate including any limitations.

PPT: Section 147 - Rights Conferred.

The exclusive right of the owner of a well-known mark which is registered in the Philippines,
shall extend to goods and services which are not similar to those in respect of which the mark is
registered:
1. 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.
2. That the interests of the owner of the registered mark are likely to be damaged by such
use.
Explanation:
Once the mark is registered, the owner of that registered mark shall have an exclusive right to
prevent all third parties not having the owner’s consent na gamitin yung identical, similar signs
or containers which are identical or similar sa mga goods or services na ginagamitan ng
registered mark na iyon, because such use of an identical sign for identical goods or services, a
likelihood consfusion shall be presumed.
The exclusive right of the owner of the registered mark shall extend to the goods and services
that use of the mark in relation to the goods or services it would indicate a connection between sa
goods or services at sa owner of the registered mark and the interests of the owner of the
registered mark are likely to be damage by such use.

PPT: Section 149. Assignment and Transfer of Application and Registration.

An application for registration of a mark, or its registration, may be assigned or transferred with
or without the transfer of the business using the mark.

 Null and void if it liable to mislead the public.

 Shall be in writing and require the signatures of the contracting parties.
 Assignments and transfers of registrations of marks shall be recorded at the Intellectual
Property Office (IPO).

Explanation:

Yes. An application for registration of a mark, or its registration, may be assigned or transferred
with or without the transfer of the business using the mark.

The assignment or transfer shall be null and void if it is liable to mislead the public, lalo na sa
nature, source, manufacturing process, characteristics, or suitability for their purpose of the
goods or services for which the mark is applied.

The assignment of the application for registration of a mark, or of its registration, shall be in
writing and require the signatures of the contracting parties. In case of transfers by mergers or
other forms of succession may be made by any document supporting such transfer.
The assignments and transfers of registrations of marks shall be recorded at the Office on
payment of the prescribed fee; assignment and transfers of applications for registration shall, on
payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in
the name of the assignee or transferee.

Assignments and transfers shall have no effect against third parties until they are recorded at
the Office. (Sec. 31, R.A. No. 166a)

REPORTER 4 - GENIVIEVE
Section 151. Cancellation
- So yung petition to cancel a registration of mark is finafile siya by a person who believes na
naaapektuhan or pwede siyang maapektuhan ng registration ng mark,sa Bureau of Legal Affairs

- Yung general rule is dapat magpetition within 5 years from the date nung registration. Syempre
may exceptions din, first
- At any time, kapag hindi nagamit ng registered owner yung mark ng without legitimate reason
within the Philippines, or to cause it to be used in the Philippines by virtue (authority) of a
license during an uninterrupted period of three (3) years or longer. (di ko gets to)

- At any time, kapag yung registered mark naging generic name na siya ng goods and services for
which it is registered, kapag inabandona okaya naman kung yung registration is fraudaulent or
pag ginagamit siya with or without the permission of the registrant is to misrepresent the source
of goods and services.
- Pag yung registered mark naman is naging generic name for less than all the goods or
services for which it is registered, yung petition to cancel the registration is para lang don
sa goods or services na gumamit ng mark. Yung registered mark din dapat di siya
generic name ng isang goods kasi yung mark ginagamit din siya as name or identity ng
isang product. (sama ko pa ba to?)

- Pag yung court na nag approve don sa registration is may power din siya vested by the
jurisdiction to cancel yung right na binigay niya upon registration.

Section 154. Cancellation of Registration

- If the Bureau of Legal Affairs finds that a case for cancellation has been made out, dapat
maglabas na sila ng order for the cancellation of the registration. And kapag yung order or
judgement naging final na, lahat ng rights na nakuha upon registration is dapat ng iterminate and
dapat din na maglabas ng notice of cancellation yung IPO Gazette.

Section 155. Remedies; Infringement

So kelan nga ba nagkakaroon ng trademark infringement?

- Kapag ginamit ng isang tao yung registered mark ng walang consent from the owner. Kapag
nireproduce, counterfeit, kinopya or pag same ng dominant feature then ginamit niya yon in
connection with sale, offering for sale, distribution and advertising tapos pwedeng siyang
 magcause ng confusion, mistake or with an intention to deceive is considered na siya as
infringement. Yung infringement is nagttake place regardless kung may sale ba na naganap or
wala as long as the person is using the mark without consent from the registrant in commerce or
reproduce it.
- Then pag napatunayan na may infringement, yung person na yon is liable siya sa civil action for
infringement by the registrant for the remedies.

Elements of Trademark Infringement Under R.A. 8293

1. Dapat may trademark that is already registered
2. Dapat nireproduce, counterfeit, copy or colorably imitated
3. Pag walang consent from the owner
4. Ginamit mo in connection with sale, offering for sale or advertising of any such goods, business or
services
5. There is likelihood confusion

Colorable Imitation
So kanina pa nababanggit yung colorable imitation. When we say colorable imitation, di talaga siya
gayang gaya. Meron lang resemblance ganon. Pero possible pa din ang confusion kasi kahit magkaiba
yung products pag kinompare mo sila, makikita mo yung pangggagaya. Ang pinagkaiba niya sa
counterfeiting is, sa counterfeiting is gayang gaya niya or ito yung tinatawag na class A. While sa
colorable naman pwedeng pinapalitan ng isang letter or binabago ng konti yung logo ganon. (ahm kahit
na may slight variation or slight modification sa product, considered pa din siya as infringement kasi may
colorable imitation)

Likelihood of Confusion
So when we say likelihood of confusion, it is a relative concept. It depends sa circumstances, so dito
titingnan pa din yung itsura ng trademark. Will it confuse an ordinary purchaser or not? Na if kinompare
mo, malilito ka ba or hindi? In that case titingnan pa kung magkakaroon ng confusion pag tiningnan yung
trademark and yung trademark that is alleged to be violative.

Types of Confusion
 Confusion of Goods - this refers to the goods themselves. Dito yung purchaser pwede siyang
makabili ng product thinking na he was purchasing the other. Example, may binili siyang shoes,
then akala niya original pero di niya alam na class A pala yung nabili niya.
 Confusion of Business - this refers naman to the source or origin of goods.. Example, nagbebenta
ako ng sabon then pinangalanan ko siyang colgate, trademark infringement pa rin ito because it
can cause confusion to the public even though hindi similar ang products.

In order to test the confusion, meron tayong two kinds of test:

Dominancy test and Holistic test
 Dominancy test – nagfofocus siya sa prevalent features ng competing marks. Relies only
on visual. Tinitest neto whether may similarity ba sa prevalent features of the competing
trademarks which might cause confusion
  Holistic (Totality)Test - yung finofocus naman dito is yung overall impressions, di lang
yung dominant, kasama din yung color, font, presentation pati yung tunog.

Idem Sonans Rule

– tinitingnan dito is aural effects of the words. Kung magkatunog ba ganon or pwede bang magcause ng
confusion pag narinig ng purchaser. Example yung dermaline ng dermaline incorporated and dermalin ng
myra pharmaceuticals.

Trademark Dilution
- This is the weakening of the ability of a famous mark to identify and distinguish goods and
services regardless kung may competition or confusion sa marketplace. Dilution is said to protect
yung goodwill associated with the mark. Ahm yung owner ng famous mark is entitled to an
injunction or order against don sa tao na gumamit ng mark after the mark has become famous.
To be eligible for protection from dilution
1. Dapat famous and distinctive yung mark na pinoprotektahan
2. Dapat ginamit yung mark after neto sumikat
3. Dapat yung pagkakagamit nung mark is nakaapekto sa petitioner ng dilution. Yung intellectual
property Code di naman siya expressly nagpprovide ng protection against trademark dilution.
Nonetheless, the concept of trademark dilution is very much present in the protection of
internationally well-known marks.(di ko sasabihin to, in case lang itanong ni maam hehe)

Doctrine of secondary meaning (in case itanong ni maam)

Although there is a word or phrase originally incapable of exclusive appropriation because its descriptive
or geographical by nature, if it has not been used for so long, it can already acquire secondary meaning.

Section 157. Power of the Court to order Infringing Material Destroyed

• In any action arising under this Act, pag nagkaroon ng violation in any of the rights of the owner,
the court may order na yung mga goods na napatunayang infringing, ididispose nila to avoid any
harm caused to the right holder or idedestroy lahat ng labels, signs, prints, packages,
wrappers, receptacles and advertisements na nasa possession ng defendant bearing the
registered mark or trade name pati yung mga plates, molds, etc shall be delivered up and
destroyed.
- Regarding naman sa mga counterfeited goods or imitations na products with the intention to
deceive. Kapag nahuli ka, aside sa removal ng products sa market as compensation to the
trademark owner, may chances din na di na marelease yung mismong products sa market. (Di ko
gets to hehe)

Section 158. Damages; Requirement of Notice

- Dapat magbigay ng notice si registrant na yung mark nila is registered na by displaying yung
mark with the words “Registered Mark” or letter R within a circle or pwede ding “Reg.IPOPHL”.
By doing this, it is already presumed na mayroon ng knowledge na such imitation is pwedeng
magcause ng confusion, or mistake. Yung presumed knowledge na ito is magiging base siya to
recover damages. Pag walang notice, dapat munang mapatunayan ng registrant na aware si
infringer about sa registration para makarecover siya or damages
 Defenses Against Infringement Suits
-Here are some defenses against infringement suits, pakibasa nalang kasi limited yung time natin.

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:
A. Prior User (Section 159.1)
- Yung prior user is yung first user of the mark bago pa man may magfile for registration ng
trademark. registered mark shall have no effect against any person acting in good faith na
ginagamit yung mark sa kanyang business or enterprise. Provided na pwede lang matransfer ung
rights don sa portion ng business mo na ginagamit na yung mark before registration. So kapag
nagdagdag ka pa ng business di mo na pwedeng gamitin yung mark na yon

B. Printer of Infringing Mark (Section 159.2)

- Kapag ang infringer na involve is engaged siya solely don sa business of printing the mark or
nagpprint siya for other people, isa siyang innocent infringer. Yung owner ng trademark is
entitled lang siya to an injunction or order against future printing
C. Advertisement (Section 159.3)

- Pag yung infringement complained is contained in or part ng paid advertisement yung magiging
remedies ng owner nung trademark as against don sa publisher or distributor ng newspaper,
magazine, etc is limited to an injunction against the presentation of such advertising matter in
future issues.
- Applicable lang to sa innocent infringer provided na yung ruling is hindi available don sa owner
nung right na nainfringed with respect don sa

- provided that such injunctive relief dapat not be available to the owner of the right
infringed with respect to an issue of a newspaper, containing infringing matter where
restraining the dissemination of such infringing matter in any particular issue of such
periodical or in an electronic communication would delay the delivery of such issue or
transmission of such electronic communication is customarily conducted in accordance
with the sound business practice, and not due to any method or device adopted to evade
this section or to prevent or delay the issuance of restraining order with respect to such
infringing matter