TRADEMARKS

10 years, renewable for periods of 10 years after the expiration

of the original term (perpetual protection as long as renewed) as long as you
comply with the term for submission of DAU

1. Definition of Marks, Collective Marks, and Trade Names

a) Definition
b) Functions
2. Acquisition of Ownership of Mark
a) Filing date
b) Priority right

3. Acquisition of Ownership of Trade Name

4. Non-Registrable Marks

5. Prior Use of Mark as a Requirement

6. Tests to Determine Confusing Similarity Between Marks

a. Dominancy Test

b. Holistic Test

c. Idem Sonans

7. Well-Known Marks

8. Rights Conferred by Registration

9. Infringement and Remedies

a. Trademark Infringement

b. Damages

c. Requirement of Notice

d. Penalties
 11. Unfair Competition

12. Registration of Marks Under the Madrid Protocol

a. Coverage

b. Rights Conferred

c. Requirements for Registration

d. Term of Protection

Principle of specificity:
SECTION 138. Certificates of Registration. –
• A certificate of registration of a mark
• shall be prima facie evidence of the (VOEG)
✓ validity of the registration,
✓ the registrant’s ownership of the mark, and
✓ of the 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.

Doctrine of secondary meaning:

This doctrine provides that while it is recognized that as a rule, (DE-LE-A)
• descriptive marks in relation to an article of the market are not capable to
exclusive appropriation or entitled to trademark protection,

• the word or phrase used to describe the said article may be exempt from being
stricken as descriptive and acquire secondary meaning

• if it has been used so long and 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.
1. Definition of Marks, Collective Marks, and Trade Names
a.
Trademark (ViCA)
A trademark is any visible sign (word, a group of words, sign, symbol, or a logo, letters,
numerals, pictures, shapes, colors, logotypes, labels) capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise from that of another and
shall include a stamped or marked container of goods.

Notes:
E.g
• Even stitches are trademarks. They are designs.
• Even the color combination like that of threads
• Swoosh or check mark in the shoes
• Word Mark: University of the Cordilleras
Question:
Can you have a trademark on fragrance?
Answer:
No, because it is not visible. If not visible, it might fall under IP.

Question:
Was able to compose music?
Answer.
Not register under trademark but copyright.

Tradename
In relation thereto, a trade name means the name or designation identifying or
distinguishing an enterprise

E.g. “Tusin” – cough

 ▪ If you add the word, prefix, the Supreme Court held that it would not cause
confusion
▪ Since medicines, you need prescription. The doctors will know what medicine
will they prescribe to you.

Collective Marks
Any visible sign designated as such in the application for registration and capable of
distinguishing the origin or any other common characteristic, 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. 121.2, RA 8293]

b. Functions of a Trademark
1. To point out distinctly the origin or ownership of the goods and to which it is affixed;
2. To secure him, who has been instrumental in bringing into the market a superior
article of merchandise, the fruit of his industry and skill;
3. To assure the public that they are producing the genuine article;
4. To prevent fraud and imposition; and
5. To protect the manufacturer against substitution and sale of an inferior and different
article as its product. [Mirpuri v. CA, G.R. No. 114508 (1999)
c. Spectrum of Distinctiveness
1. Generic Marks (avoid when selecting a trademark)
Generic Marks are those which constitute the name of an article substance; or comprise
the genus of which the particular product is a species of. [Societe Des Produits Nestle v.
CA, G.R. No. 112012, 2001] These must remain in the public domain and can never be
registered as a trademark. Examples: “SUGAR” for refined sugar, “KAPE” for instant
coffee, “WATER” for bottled water. CHAIR to sell chairs
2. Descriptive Marks (avoid when selecting a trademark: with GR and E)
Consists exclusively of signs or of indications that may serve in trade to designate the
kind, quality, quantity, intended purpose, value, geographical origin, time or production
of the goods or rendering of the services, or other characteristics of the goods or
services. [Sec. 123(j), RA 8293] These are words that merely describe the product or
service or refer to their quality or characteristic.
General rule: Descriptive marks are not entitled to protection and are too weak to
function as a trademark.
e.g.
▪ SWEET to sell chocolates
▪ Mabango perfume cannot be registered as a trademark because it is descriptive.
Exception:
***Doctrine of Secondary meaning, infra. Example: “YELLOW PAGES” for telephone
directory having yellow pages.
Notes:
ANA L. ANG, petitioner, vs. TORIBIO TEODORO (Ang Tibay Case)
ISSUE: Attack on the validity of respondent's trade-mark "Ang Tibay." He contends that
the phrase "Ang Tibay" as employed by the respondent on the articles manufactured by
him is a descriptive term because, "freely translate in English," it means "strong,
durable, lasting." He invokes section 2 of Act No. 666, which provides that words or
devices which related only to the name, quality, or description of the merchandise
cannot be the subject of a trade-mark.
On the other hand, counsel for the respondent, in an equally well-prepared and
exhaustive brief, contend that the words "Ang Tibay" are not descriptive but merely
suggestive and may properly be regarded as fanciful or arbitrary in the legal sense.
RULING:
The phrase "ang tibay" is never used adjectively to define or describe an object. One
does not say, "ang tibay sapatos" or "sapatos ang tibay" is never used adjectively to
define or describe an object. One does not say, "ang tibay sapatos" or "sapatos ang
tibay" to mean "durable shoes," but "matibay na sapatos" or "sapatos na matibay."

From all of this we deduce that "Ang Tibay" is not a descriptive term within the
meaning of the Trade-Mark Law but rather a fanciful or coined phrase which may
properly and legally be appropriated as a trade-mark or trade-name

In her second assignment of error petitioner contends that the Court of Appeals erred in
holding that the words "Ang Tibay" had acquired a secondary meaning. In view of the
conclusion we have reached upon the first assignment of error, it is unnecessary to
apply here the doctrine of "secondary meaning" in trade-mark parlance. This doctrine is
to the effect that a word or phrase originally incapable of exclusive appropriation with
reference to an article of 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. (G. & C. Merriam Co.
vs. Salfield, 198 F., 369, 373.) We have said that the phrase "Ang Tibay," being neither
geographic nor descriptive, was originally capable of exclusive appropriation as a trade-
mark. But were it not so, the application of the doctrine of secondary meaning made by
the Court of Appeals could nevertheless be fully sustained because, in any event, by
respondent's long and exclusive use of said phrase with reference to his products and
his business, it has acquired a proprietary connotation

▪ When people see the word Ang Tibay, it will automatically tell the quality of the
product- good quality
▪ By copying the name, deprived the rightful owner of his economic benefits
▪ Freeloader si Ang, reaped the economic benefits of Teodor

3. Suggestive Marks (Can be registered)

Marks that hint or suggest the nature or quality of the good or service without directly
describing it. They are “subtly descriptive” and are entitled to protection despite lack of
distinctiveness. Example: “JAGUAR” for automobile.

4. Arbitrary Marks (can be registered)

Common words used as marks, but are unrelated to the good or service they represent.
They neither describe nor suggest the characteristic of the goods or service, though
they are considered highly distinctive for purposes of registration.
Example: “APPLE” for electronic product.

5. Fanciful or “Coined” Marks (can be registered)

These are invented or “coined” words that do not have any meaning and are made
solely for the purpose of the mark.
They are considered “strong” marks for purposes of registration and protection for being
inherently distinctive.
Example: “KODAK” for camera

2. Acquisition of Ownership of Mark

General Rule: To acquire rights in a mark, registration is required. [Sec. 122, RA 8293]
Exception: Well-known marks are protected even without registration.
Note: However, when the well-known mark is not registered, its protection is limited, as
it only prevents the registration of confusingly similar marks that are used for identical or
similar goods or services. [Sec. 123.1(e), RA 8293]
While the IP Code expressly provides that the rights to a mark shall be acquired through
registration, the Supreme Court held that notwithstanding this express provision in the
IP Code, prior use is still the basis of trademark ownership. [Berris Agricultural Co., Inc.
vs. Norvy Abyadang, G.R. No. 183404, (2010)] Registration is not a mode of acquiring
ownership, rather, it merely gives rise to a prima facie presumption of ownership of the
registrant over the mark [Sec. 138, RA 8293] Said presumption of ownership may be
rebutted by the true owner of the mark in an opposition or cancellation proceeding

a. Filing date
The filing date of an application shall be the date on which the Office received the
following indications and elements in English or Filipino:
a. An express or implicit indication that the registration of a mark is sought;
b. The identity of the applicant;
c. Indications sufficient to contact the applicant or his representative, if any;
d. A reproduction of the mark whose registration is sought; and
e. The list of the goods or services for which the registration is sought. [Sec. 127.1, RA
8293]
Problem
▪ Once you applied application, all other states to consider as their filing date in
▪ Oct 2, 2021 – Philippines
▪ Oct. 2, 2021- United States
Consider the east coast as the first applicant.

b. Priority Right
Possible exam question:
An application for registration of a mark filed in the Philippines by a person referred to in
Section 3, and who previously duly filed an application for registration of the same mark
in one of those countries, shall be considered as filed as of the day the application was
first filed in the foreign country
“Priority date” or Right of priority for an application for patent may be claimed by
any person who has previously applied for the same invention in another country
which by treaty, convention, or law affords similar privileges to Filipino citizens.
Thus, such shall be considered filed as of the date of filing the foreign
application: Provided, That
1. The local application expressly claims priority;
2. ****(Provided, the Philippine application is filed within 6 months from the filing of the
foreign application). [Sec. 131.1, RA 8293]
No registration of a mark in the Philippines by a person described in this section shall be
granted until such mark has been registered in the country of origin of the applicant.
[Sec. 131.2, RA 8293]

Significance of Priority Right

A Philippine application ***filed by another applicant after the priority date but earlier
than the foreign applicant’s actual filing may be refused registration if it is identical to the
mark with a priority date. [Agpalo, The Law on Trademark, Infringement and Unfair
Competition (2000)

First to file rule is also applicable in trademarks

3. Acquisition of Ownership of Trade Name

The ownership of a trade name is acquired through adoption and use.

Such names shall be protected, even prior to or without registration, against any
unlawful act committed by third parties, [Sec. 165.2 (a), RA 8293] Any subsequent use
of the trade name by a third party, whether as a trade name or a mark or collective
mark,or any such use of a similar trade name or mark, likely to mislead the public, shall
be deemed unlawful. [Sec. 165.2 (b), RA 8293]

A name or designation may not be used as a trade name:

1. 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
2. If, in particular, it is liable to deceive trade circles or the public as to the nature of the
enterprise identified by that name. [Sec. 165.1, RA 8293]
4. Non-Registrable Marks

DOCTRINE OF SECONDARY MEANING

Secondary meaning is acquired when a descriptive mark or a mark that may serve in
trade that consists of a shape or color becomes distinctive because of its exclusive and
continuous use in Philippine commerce.
A word or phrase originally incapable of exclusive appropriation, might 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. [Ang v. Teodoro, G.R. No. L-48226 (1942)]

The Office may accept as prima facie evidence that the mark has become distinctive,
proof of substantially exclusive and continuous use thereof by the applicant: (i) In
commerce in the Philippines (ii) For 5 years before the date on which the claim of
distinctiveness is made. [Sec. 123.2, RA 8293]

A mark cannot be registered if it:

a. Consists of immoral, deceptive or scandalous matter, or matter which may disparage
or falsely suggest a connection with persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt or disrepute; [Sec. 123.1(a), RA 8293]
b. Consists of flags, coat of arms or other insignia of the Philippines or any foreign
country; [Sec. 123.1(b), RA 8293]
c. Consists of a name, portrait or signature identifying a particular living individual
except by his written consent, or of a deceased President of the Philippines, during the
life of his widow, except by written consent of the widow; [Sec. 123.1(c), RA 8293]
d. Is identical with a registered mark of another or a mark with an earlier filing or priority
date, in respect of: 1. The same goods or services, or 2. Closely related goods or
services, or 3. If it nearly resembles such a mark as to be likely to deceive or cause
confusion; [Sec. 123.1(d), RA 8293]

e. Is identical with, or confusingly similar to, or constitutes a translation of a well-known

mark, whether or not registered in the Philippines, and used for identical or similar
goods or services; [Sec. 123.1(e), RA 8293]
f. Is identical with, or confusingly similar to, or constitutes a translation of a well-known
mark which is registered in the Philippines, and used for goods or services which are
not similar; [Sec. 123.1(f), RA 8293]
g. Likely to mislead the public, particularly as to the nature, quality, characteristics or
geographical origin of the goods or services; [Sec. 123.1(g), RA 8293]
h. Consists exclusively of signs that are generic for the goods or services that they
seek to identify; [Sec. 123.1(h), RA 8293]
i. Consists exclusively of signs or of indications that have become customary or usual to
designate the goods or services in everyday language or in a bona fide and established
trade practice; [Sec. 123.1(i), RA 8293]
j. Consists exclusively of signs or of indications that may serve in trade to designate the
kind, quality, quantity, intended purpose, value, geographical origin, time or production
of the goods or rendering of the services, or other characteristics of the goods or
services; [Sec. 123.1(j), RA 8293]
k. Consists of shapes that may be necessitated by technical factors or by the nature of
the goods themselves or factors that affect their intrinsic value; [Sec. 123.1(k), RA 8293]
l. Consists of color alone, unless defined by a given form; [Sec. 123.1(l), RA 8293] m. Is
contrary to public order or morality. [Sec. 123.1(m), RA 8293]

5. Prior Use of Mark as a Requirement

Under the old trademark law or R.A. 166, actual commercial use of a trademark in the
Philippines was required prior to its registration. [RA 166, Sec. 2-A]
***RA 8293 no longer requires prior use before filing the application (i.e., it shifted to an
intent to use system). However, the law still requires use of the mark after filing.
Possible exam question:

Question: Is DAU required to be attached in application for trademarks?

Answer. No. The applicant or the registrant is required to file a Declaration of Actual
Use of the mark ***after filing and registration, not simultaneously to be filed.

a. DAU-
***
Declaration of Actual Use (DAU)
The applicant or the registrant is required to file a Declaration of Actual Use of the mark
***after filing and registration.
Note: Failure to file declaration of actual use automatically results in the denial of the
registration or the cancellation of the registration by operation of law. [Secs. 124.2&
145, RA 8293
***Possible exam question:
b. When to file Declaration of Actual Use (DAU)
If new applicant:
1. Within 3 years from the filing date of the application (3rd Year DAU);
▪ 2020
▪ 2023
Possible exam question:

Question: If before I reach this period, I know that I cannot comply. Can you file an
extension?
Answer: For new trademarks, you can file an extension for the 1st period only provided
the application for extension before the expiration of the 1st period.
▪ E.g. September 13, 202
▪ File the request before September 13
This is the only time that an extension allowed. No extension for the renewal and and
no. 2If you fail to file. Automatically removed from the registry.
2. Within 1 year from the 5th anniversary of the registration of the mark (6th Year
DAU);
▪ 2020
▪ 2026

If for renewal:
3. Within 1 year from the date of renewal; and
▪ 2022
▪ 2023
4. Within 1 year from the 5th anniversary of each renewal. [Rule 204, Trademark
Regulations of 2017]

▪ 2022
Failure to file DAU results into automatic removal in the automatic removal of
trademarks and the renewal cannot be refiled
Possible exam question:
Can you file an MR from the denial of renewal?
No. The proper remedy is to refile the application.
c. When non-use of mark excused
Non-use caused by circumstances arising independently of the will of the trademark
owner shall be excused.
***Possible exam question:
However, non-use due to lack of funds shall not excuse non-use of a mark. [Sec. 152.1,
RA 8293]
Grounds for cancellation or removal of a mark
The ff. shall not be grounds for cancellation or removal of a mark:
1. Use which does not alter its distinctive character though the use is different from the
form in which it is registered. [Sec. 152.2, RA 8293]
2. Use of a mark in connection with one or more of the goods/services belonging to the
class in which the mark is registered. [Sec. 152.3, RA 8293]
3. Use of the mark by a company related to the applicant or registrant. [Sec. 152.4, RA
8293]
4. Use of the mark by a person controlled by the registrant. [Sec. 152.4, RA 8293]
***Possible exam question:
Declaration of Non-Use
In lieu of a DAU, an applicant or registrant, when warranted, shall file a Declaration of
Non-Use indicating the grounds or justification therefor.
Non-use of a mark may be excused in the following cases:
1. Where the applicant or registrant is prohibited from using the mark in commerce
because of a requirement imposed by another government agency prior to putting the
goods in the market or rendering of the services;
2. Where a restraining order or injunction was issued by the Bureau of Legal Affairs, the
courts or quasi-judicial bodies prohibiting the use of the mark; or
3. Where the mark is the subject of an opposition or cancellation case. [Rule 211,
Trademark Regulations of 2017

When to File Declaration of Non- Use (DNU)

1. Within three (3) years from filing date of the application;
2. Within the prescribed periods mentioned in Rule 204 when use of a registered mark
or a mark subject of an active application has been interrupted or discontinued by a
pending litigation. [See Rule 212, Trademark Regulations of 2017]

6. Tests to Determine Confusing Similarity Between Marks

a. Dominancy Test (2015, Kolin)
▪ Similarity of the prevailing features of competing trademarks which might cause
confusion
▪ 1st case of Kolin- did not cause confusion although 2 trademarks are KOLIN
The dominancy test considers the dominant features in the competing marks in
determining whether they are confusingly similar.
Under the dominancy test:
• Greater weight is given to the similarity of the appearance of the product arising
from the adoption of the dominant features of the registered mark.
• Minor differences between the registered mark and the mark in question are
disregarded.
• The aural and visual impressions created by the marks in the public mind are
considered.
• Little weight is given to factors like prices, quality, sales outlets and market segments.
[McDonald’s Corporation v. L.C. Big Mak Burger, Inc., et al., G.R. No. 143993 (2004)]
The dominancy test is now embodied in Sec. 155 of the IPC and is therefore the
controlling test. [Ibid.]
b. Holistic Test (2020, Kolin)
▪ 2nd case of Kolin,
▪ Consideration of the entirety of the marks, packaging
Probable bar question:
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
▪ January 2021: Use holistic
▪ 2015-2020- Use the dominacy test
▪ Principle of res judicata
The holistic test, to determine whether a trademark has been infringed, considers
the mark as a whole and not as dissected. If the buyer is deceived, it is attributable to
the marks as a totality, not usually to any part of it.

The court therefore should be guided by its first impression.

• The buyer acts quickly and is governed by a casual glance
• The value of such casual glance may be dissipated, as soon as the court assumed to
analyze carefully the respectivefeatures of the mark. [Del Monte Corporation, et al. v.
CA, G.R. No. L-78325 (1990)]

Kolin 2015 Kolin 2021

Mere uniformity in categorization, by Yes because the marks involved
itself, does not automatically preclude the resemble each other, the goods offered
registration of what appears to be an by the parties are related, and there is
identical mark as this circumstance does actual confusion regarding the goods. a.
not necessarily result in any trademark
infringement Applying the Dominancy Test here, Kolin
Philippines's kolin mark resembles Kolin
Electronics KOLIN mark because the
No. The classification of the products word "KOLIN" is the prevalent feature of
under the NCL is merely part and parcel both marks.
of the factors to be considered in
ascertaining whether the goods are the goods covered by Kolin Electronics
related. KOLIN are complementary (meaning "the
goods of the parties may be used
No. The ordinarily intelligent buyer is not together for the same purposes, may be
likely to be confused
 found in the same channels of trade, and
may appeal to the same purchaser)

There is proof of actual confusion of

goods as well as confusion as to origin or
source [of] goods as evidenced by the
various e-mails x x Kolin Electronics
received from public consumers reflecting
their complaints, concerns, and other
information about Kolin Philippine’s goods
as televisions, air-conditioning units and
DVD players.

BLA-IPO
IPO Director General
Court of Appeals
SC

DIFFERENCES OF THE KOLIN CASES

• Test Appreciation of NCL
• Implication of the e-mails
• Footing of the consumer Normal potential expansion of business Strength of the
mar

Other important concepts:

SIMILARITY/ DISSIMILARITY OF GOODS and SERVICES

Goods or services may not be considered as being similar or dissimilar to each other on
the ground that, in any registration or publication by the Office, they appear in different
classes of the ***Nice Classification. [Sec. 44.2, RA 8293]
Related goods and services are those that, though non-identical or non-similar, are so
logically connected to each other that they may reasonably be assumed to originate
from one manufacturer or from economically-linked manufacturers. [Mang Inasal
Philippines v.IFP Manufacturing Corporation, G.R. No. 221717, June 19, 2017]
The mere fact that one person has adopted and used a trademark on his goods would
not prevent the adoption and use of the same trademark by others on *** unrelated
articles of a different kind. [Taiwan Kolin v. Kolin Electronics Co., G.R. No. 209843
(2015)
DOCTRINE OF RELATED GOODS/SERVICES
1. ***Goods are related when they:
a. Belong to the same class; or b. Have the same descriptive properties or physical
attributes; or c. Serve the same purpose or flow through the same channel of trade.
2. The use of identical marks on non-competing but related goods may likely cause
confusion, as it can be reasonably assumed that they originate from one manufacturer.
3. Corollarily, the use of identical marks on non-competing and unrelated goods is not
likely to cause confusion. [Esso Standard Eastern, Inc. v. Court of Appeals, G.R. No. L-
29971 (1982)] In resolving whether goods are related, several factors come into play: 1.
The business (and its location) to which the goods belong 2. The class of product to
which the goods belong
3. The product's quality, quantity, or size, including the nature of the package, wrapper
or container;

4. The nature and cost of the article;

5. The descriptive properties, physical attributes or essential characteristics with
reference to their form, composition, texture or quality;
6. The purpose of the goods;
7. Whether the article is bought for immediate consumption, that is, day-to-day
household items;
8. The fields of manufacture;
9. The conditions under which the article is usually purchased; and
10. The channels of trade through which the goods flow, how they are distributed,
marketed, displayed and sold [Mighty Corp. v. E&J Gallo, G.R. No. 154342, (2004)]

c. Idem Sonans
The rule on idem sonans is also a test to resolve the confusing similarity of trademarks.
• A mark with a different spelling but is similar in sound with a registered mark when
read, may be ruled as being confusingly-similar with the said registered mark or senior
mark.
• Two names are said to be "idemsonantes" if the attentive ear finds difficulty in
distinguishing them when pronounced. [Martin v. State, 541 S.W. 2d 605 (1976)]

Similarity of sound is sufficient to rule that the two marks are confusingly similar when
applied to merchandise of the same descriptive properties. [Marvex Commercial v.
Director of Patent, G.R. No. L-19297 (1966)

7. Well-Known Marks
A well-known mark is a mark which a competent authority of the Philippines has
designated to be well-known internationally and in the Philippines. [Sec. 123.1(e), RA
8293]
.
"Competent authority" for purposes of determining whether a mark is well-known,
means:
• The Court;
• The Director General;
• The Director of the Bureau of Legal Affairs [Rule 101 (d), Trademark Regulations of
2017];
• Any administrative agency or office vested with quasi-judicial or judicial jurisdiction to
hear and adjudicate any action to enforce the rights to a mark. [Dy v. Koninklijke]

In determining whether a mark is well-known, account shall be taken of the knowledge

of the relevant sector of the public, rather than the public at large, including knowledge
in the Philippines which has been obtained as a result of the promotion of the mark.
[Sec. 123.1(e), RA 8293]

8. Rights Conferred by Registration

Possible exam question:
The owner of a registered mark shall have the exclusive right to prevent all third
parties not having the owner's consent from using in the course of trade:
(i) Identical or similar signs or containers,
(ii) For goods or services which are identical or similar to those in respect of which the
trademark is registered,
(iii) Where such use would result in a likelihood of confusion.

Note: In case of the use of an identical sign for identical goods or services, a likelihood
of confusion shall be presumed. [Sec. 147.1, RA 8293 as amended by RA 9502]
Exception: In cases of importation of drugs and medicines allowed under Section 72.1
of his Act and of off-patent drugs and medicines, third parties can import the same even
without the owner’s consent, provided that: • Said drugs and medicines bear the
registered marks • The registered marks have not been tampered, unlawfully modified,
or infringed upon [Sec. 147.1, RA 8293 as amended by RA 9502]

a. When such rights are conferred

The rights of the owner are conferred ***upon registration of the mark, and a mark is
***deemed registered
• On the 31st day from the publication for purposes of opposition (if no opposition is
filed)
• On the date the decision or final order giving due course to the application becomes
final and executory (if opposition is filed). [See Rule 703, Trademarks Regulations of
2017]
***Possible exam question
b. Certificates of Registration
A certificate of registration of a mark shall be prima facie evidence of:
1. The validity of the registration,
2. The registrant's ownership of the mark, and
3. The 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. [Sec. 138, RA
8293]
Duration
A certificate of registration shall remain in force for 10 years from registration and may
be renewed for periods of 10 years at its expiration upon payment of the prescribed fee
and upon filing of a request. [Sec. 145-146, RA 8293]
***Limitations on Such Rights
1. Duration (except that, inasmuch as the registration of a trademark could be renewed
every 10 years, ***provided a Declaration of Actual Use is timely submitted, a trademark
could conceivably remain registered forever);

2. Territorial (except well-known marks);

3. Fair Use:
The registration of the mark shall not confer on the registered owner the right to
preclude third parties from using bona fide their names, addresses, pseudonyms, a
geographical name, or exact indications concerning the kind, quality, quantity,
destination, value, place of origin, or time of production or of supply, of their goods or
services. Provided That: a. Such use is confined to the purposes of mere identification
or information; and b. Such use cannot mislead the public as to the source of the goods
or services. [Sec. 148, RA 8293]

4. Prior User: A registered mark shall have no effect against any personwho, in good
faith,before the filing date or the priority date,was using the mark for the purposes of his
business or enterprise. [Sec. 159.1, RA 8293]
***5. Non-Use: Failure to file declaration of actual use automatically results in the
denial of the registration or the cancellation of the registration by operation of law.
[Sec. 124.2]

Assignment and Transfer of Application and Registration

Possible exam question:

1. 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. [Sec. 149.1,
RA 8293]
2. Such assignment or transfer shall, however, be null and void if it is liable to mislead
the public, particularly as regards the nature, source, manufacturing process,
characteristics, or suitability for their purpose, of the goods or services to which the
mark is applied. [Sec. 149.2, RA 8293]
e.g.
▪ Shoe trademark was sold
▪ Buyer used it also as shoe product
▪ May be assailed
▪ Intended to mislead the public.

3. The assignment of the application for registration of a mark, or its registration, shall
be in writing and require the signatures of the contracting parties. Transfers by mergers
or other forms of succession may be made by any document supporting such transfer.
[Sec. 149.3, RA 8293]
4. Assignments and transfers shall have no effect against third parties until they are
recorded at the Office. [Sec. 149.5, RA 8293]

9. Infringement and Remedies

a. Trademark Infringement
The ff. shall be liable in a civil action for infringement:
1. Any person who shall, without the consent of the owner of the registered mark, use in
commerce any reproduction, counterfeit, copy, or colorable imitation of a registered
mark or the same container or a dominant feature thereof
2. Any person who shall, without the consent of the owner of the registered mark: a.
Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant
feature thereof; and b. Apply such reproduction, counterfeit, copy or colorable imitation
to labels, signs, prints, packages, wrappers, receptacles or advertisements, intended to
be used in commerce:

The use or application of the infringing mark or trade name is likely to cause
confusion or mistake or to deceive purchasers or others as to the goods or
services themselves or as to the source or origin of such goods or services or the
identity of such business;
***Of these, it is the element of likelihood of confusion that is the gravamen of trademark
infringement
Whether a trademark causes confusion and is likely to deceive the public hinges on
"colorable imitation" which has been defined as "such similarity in form, content, words,
sound, meaning, special arrangement or general appearance of the trademark or trade
name in their overall presentation or in their essential and substantive and distinctive
parts as would likely mislead or confuse persons in the ordinary course of purchasing
the genuine article."
Two types of confusion arise from the use of similar or colorable imitation marks,
namely –
***
1. Confusion of goods (product confusion) and
2. Confusion of business (source or origin confusion). While there is confusion of goods
when the products are competing, confusion of business exists when the products are
non-competing but related enough to produce confusion or affiliation. [McDonald’s
Corporation v. L.C. Big Mak Burger, Inc., et al., G.R. No. 143993 (2004)]

b. Damages
The owner of a registered mark may recover damages from any person who infringes
his rights, and the measure of the damages suffered s
c. Requirement of Notice
The owner of the registered mark shall not be entitled to recover profits or damages
unless the acts have been committed with knowledge that such imitation is likely to
cause confusion, or to cause mistake, or to deceive.
d. Penalties
Independent of the civil and administrative sanctions imposed by law, a criminal penalty
of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty
thousand pesos (P50,000) to Two hundred thousand pesos (P200,000), shall be
imposed on any person who is found guilty of committing any of the acts mentioned in
Section 155, Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised Penal
Code). [Sec. 170, RA 8293
10. Madrid System for the International Registration of Marks
The Madrid and the Protocol system offers the possibility to record a trademark in more
than 70 countries at once
The Madrid System is a centrally administered system (by the Internal Bureau of the
World intellectual Property Organizations, WIPO) for obtaining a bundle of trademark
registration in separate jurisdiction, creating in a effect a basis for an “international
registration” of marks
Meaning of Madrid Protocol
 An International treaty that allows a trademark owner to seek registration
in any of the countries
Purpose
 the Madrid Protocol is a cost effective and efficient means for trademark
owners, both individuals and businesses, to protect their marks in a variety
of contracting parties by filing one trademark application with the IB of the
WIPO.
 Madrid protocol is a trademark “filing” treaty, not a trademark “granting”
treaty.

National Route Madrid Route

Applicant go individually to country A B C Applicant go to Office of Origin- Then

to be binding approved by International Bureau, then
binding to country ABC
▪ Many procedures ▪ One procedure
▪ Many forms ▪ One form
▪ Many languages ▪ One language
▪ Many currencies ▪ One set of fees
▪ Many registrations ▪ One currency
▪ Many modifications ▪ One registration
▪ One modification

WIPO has made possible a free search on-line of all the trademarks recorded at wipo
under “Madrid Express”
Within 18 months- after the lapse of 18 months, the mark under international
registration, is deemed protected within the territory of the designated country.
For a period of five years from the date of it registration, the international registration
remains dependent on the Basic Mark.
If the Basic Mark ceases to have effect, the international registration will no longer be
protected.
Commonly called “Central Attack
Any international registration may be renewed for a period of ten years from the expiry
of the preceding period.
Unofficial notice of expiry
6 months before expiry of 10 year period

Possible exam question:

Nice Classification
Goods or services may not be considered as being similar or dissimilar to each other on
the ground that, in any registration or publication by the Office, they appear in different
classes of the ***Nice Classification. [Sec. 44.2, RA 8293]

The Nice Classification (NCL), established by the Nice Agreement (1957), is an

international classification of goods and services applied for the registration of marks. A
new edition is published every five years and, since 2013, a new version of each edition
is published annually.
How many nice classifications are there?
The Nice Classification consists of a list of classes together with explanatory notes and
an alphabetical list of goods and services. There are 34 classes of goods and 11
classes of services.

Notes:
▪ We are member state
▪ We are not allowed to use trademarks and tradename registered in NICE
▪ Use it as a basis to prevent from being used
▪ Once you filed with bureau of trademarks of IPOPHL. It will submit to the WIPO
for it to determine the colors etc. etc.
▪ Mandatory for them to check whether there is similarity in a member state
▪ Every 5 years, updated every 5 years.
▪ But that does not mean that your mark is not protected