Law on Trademark
indicate a connection between those goods or services, and the
Trademark- any visible sign capable of distinguishing the goods
of an enterprise (Sec. 121.1)
 Acquiring a mark  Registration (for exclusivity)
-but it is not a mode of acquiring ownership
Functions of a trademark
1. Distinguish one’s goods from another
2. Point out distinctly the origin or ownership of the goods
to which it is affixed
3. To secure him, who has been instrumental in bringing
into the market a superior article of merchandise, the
fruit of his industry and skill
4. To assure to the public that they are procuring the
genuine article
5. To prevent fraud and imposition
6. To protect the manufacturer against substitution and
sale of an inferior and different article as his product
Non-registrable marks (Sec. 123)
(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;
(b) Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any foreign
nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a
particular living individual except by his written consent, or the
name, signature, or portrait of a deceased President of the
Philippines, during the life of his widow, if any, except by written
consent of the widow;
(d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in
respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive
or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent
authority of the Philippines to be well-known internationally and
in the Philippines, whether or not it is registered here, as being
already the mark of a person 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 knowledge of the relevant sector
of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a result
of the promotion of the mark;
(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
with respect to goods or services which are not similar to those
with respect to which registration is applied for: Provided, That
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use of the mark in relation to those goods or services would
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;
(g) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services;
(h) Consists exclusively of signs that are generic for the goods
or services that they seek to identify;
(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 bona fide and established trade
practice;
(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;
(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;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
*As regards signs or devices mentioned in paragraphs (j), (k),
and (l), nothing shall prevent the registration of any such sign
or device which has become distinctive in relation to the goods
for which registration is requested as a result of the use that
have been made of it in commerce in the Philippines
Keywords: Exclusive and Continuous use!
 Identity of mark alone is not trademark infringement
 The law disallows the use of marks that resemble
registered mark if such is likely to deceive or cause
confusion
Colorable Imitation- denotes such close or ingenious imitation
as to be calculated to deceive ordinary persons, or such
resemblance to the original as to deceive an ordinary purchaser
giving such attention as a purchaser usually gives, as to cause
him to purchase the one supposing it to be the other
 Likelihood of confusion is tantamount to a finding of
infringement
Two types of confusion in trademark infringement
1. Confusion of goods- an otherwise prudent purchaser is
induced to purchase one product in the belief that he
is purchasing another, in which case defendant’s goods
are then bought as the plaintiff’s and its poor quality
reflects badly on the plaintiff’s reputation
2. Confusion of business- when the goods of the parties
are different but the defendant’s product can
reasonably be assumed to originate from the plaintiff,
 thus deceiving the public into believing that there is
some connection between the plaintiff and defendant
which, in fact, does not exist
Tests to Determine Confusing Similarity Between Marks
1. Dominancy Test- similarity of the prevalent features of
the competing trademarks which might cause
confusion or deception, and thus infringement. If the
competing trademark contains the main, essential or
dominant features of another, and confusion or
deception is likely to result, infringement takes place
2. Holistic Test- entails a consideration of the entirety of
the marks as applied to the products, including the
labels and packaging, in determining confusing
similarities
Note: Each case must be decided on its own merits. Use of one
test does not preclude the use of another
 Lack of proof of actual confusion does not negate the
claim of trademark infringement  Likelihood of
confusion suffices
 The law disallows the use of a mark that is identical
with or is confusingly similar with a well-known mark
even if such well-known mark is not registered in the
PH
 If registered, prohibition extends to non-related goods
or services
Q: When does ownership
Criteria in determining when a mark is well-known
 knowledge of the relevant sector of the public
 including knowledge in the Philippines which has been
obtained as a result of the promotion of the mark
 Relevant sector  IPO, DTI and SC
 The law disallows the use of marks that are considered
generic for the goods or services that they seek to
identify
Generic terms- common descriptive name of an article of
substance or comprise the genus of which the particular product
is a species or are commonly used as the name or description
of a kind of goods or imply reference to every member of a
genus and the exclusion of individuating characters or refer to
the basic nature of the wares or services provided rather than
to the more idiosyncratic characteristics of a particular product
and are not legally protectable
Geographically descriptive term- indicate any geographic
location on earth
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Procedure in Trademark Registration
1. Filing of application
 Natural/juridical
 All of the applicants must be named but
anyone may sign for and behalf of all the
applicants
 If not domiciled or has no real and effective
interest  include name of resident to be
served notices
 Name goods and services to be grouped
according to the NICE classification
 Allowed or required to disclaim unregistrable
component but will not affect the applicant’s
existing rights
 Declaration of Actual Use- file within 3 years
from filing date, otherwise application shall be
refused or the mark shall be removed from
the register
 The filing date shall be the date on which the
IPO received the completed or corrected
application
 Priority right is followed
2. Examination
 Formal examination- ascertaining if the
application meets the filing date requirements
 Substantive examination- examination of the
mark and the drawing
 If compliant + payment of fees  publication
 If not  advise (with reasons)  applicant is
given 4 months to reply/amend application
3. Notice of allowance of application
 Payment of publication fee, otherwise
abandoned
 Revival of abandoned application  3 months
from date of abandonment, upon good cause
shown
4. Publication in the IPO Gazette
5. Opposition proceedings
 Filed by any person who believes that he
would be damaged by the registration
 Filed within 30 days after the publication
6. Issuance of Certificate of Registration
 Issued when period for filing opposition has
expired, or when DLA shall deny opposition
 Prima facie evidence of the validity of the
registration, ownership of the mark,
registrat’s exclusive right to use
Cancellation or Amendment of Certificate
Amendment  must not alter materially the character of the
mark
  Use of mark in a different form, but does not alter the
distinctive character of the mark, shall not be a ground
for cancellation or removal of the mark and shall not
diminish the protection granted to the mark
 Use of mark for goods belonging to the class registered
shall prevent its cancellation or removal in respect of
all other goods or services of the same class
 Use of mark by related company shall not affect the
validity of the mark provided that such mark is not used
in such manner as to deceive the public
 Validity of the certificate  10 years
Provided: File declaration of actual use within 1 year
from the 5th anniversary of the registration of the mark,
otherwise, the mark shall be removed (Sec. 145)
 Limitation: 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 such use is confined to the purposes of mere
identification or information and cannot mislead the public
as to the source of the goods or services.
 Person in GF using the mark before it was registered  the
mark may only be transferred together with the business or
part of the business where the mark is used
 Printer of infringing mark  injunction will lie only to future
printing

Sec. 124.2 Sec. 145

 Advertisement  future presentation
Required within 3 Within 1 year from the 5th
years from the filing anniversary of the date of
date of application the registration of the Assignment and Transfer
mark
 May be assigned with or without the transfer of the
Even if registration has Mark shall be removed business using the mark
been granted, such from the register by the
registration would be office  Null and void  if it is liable to mislead the public,
cancelled and the mark particularly as regards the nature, source,
removed f rom the manufacturing process, characteristics, or suitability
register. If the for their purpose, of the goods or services to which the
application is still mark is applied
pending by the end of
the 3 year period, and  Form: Writing + signature of contracting parties
no declarion of actual
use is filed, then the
application is denied  Must be recorded in IPO otherwise it shall have no
effect against 3rd parties
Declaration of actual 1. Declaration of
use with evidence to actual use with
that effect evidence to what License Contracts
effect or
2. Show valid  Must provide for the effective control by the licensor of
reasons based the quality of the goods or services of the licensee in
on the existence connection with which the mark is used, otherwise
of obstacles to contract is null and void
such use
*From SB mem aid Cancellation of Registration

 Non-use of mark shall be excused ONLY by circumstances Who may file: Any person who believes that he is or will be
arising independently of the will of the trademark owner damaged by the registration of a mark

 Rights conferred  Exclusive right over the mark When: within 5 years from date of the registration mark
Right to prevent all third parties not having the owner's consent
from using in the course of trade identical or similar signs or XPN: anytime when based on the following grounds:
containers for goods or services which are identical or similar to
those in respect of which the trademark is registered where such 1. Mark becomes a generic name
use would result in a likelihood of confusion. In case of the use
of an identical sign for identical goods or services, a likelihood 2. Mark has been abandoned
of confusion shall be presumed.
Limitations
3. Registration was obtained fraudulently or contrary to
 Limitation on TM involving medicines  Requisite: The the provisions of the law
drugs and medicines imported bear the registered marks
that have not been tampered, unlawfully modified, or
infringed upon
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 4. Mark is being used by, or with permission of, the
registrant so as to misrepresent the source of the
goods or services on or in connection with which the
mark is used
5. Owner fails to use, without any legitimate reason fails
to use the mark within the PH or cause it to be used in
the PH by virtue of a license during an uninterrupted
period of 3 years or longer
 Cancellation of the mark does not constitute a
prejudicial question
 Thus, an action for infringement will not be barred by
reason of the petition for cancellation
 Cancellation  termination of rights
Remedies against Trademark Infringement
Requirement: Acts must be committed with knowledge that such
imitation is likely to cause or to cause mistake or to deceive
1. Civil Remedies
Any person who shall, without the consent of the owner of the
registered mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or
colorable imitation of a registered mark or the same container
or a dominant feature thereof in connection with the sale,
offering for sale, distribution, advertising of any goods or
services including other preparatory steps necessary to carry out
the sale of any goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to
deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a
registered mark or a dominant feature thereof and apply such
reproduction, counterfeit, copy or colorable imitation to labels,
signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or
advertising of goods or services on or in connection with which
such use is likely to cause confusion, or to cause mistake, or to
deceive, shall be liable in a civil action for infringement by the
registrant for the remedies hereinafter set forth: Provided, That
the infringement takes place at the moment any of the acts
stated in Subsection 155.1 or this subsection are committed
regardless of whether there is actual sale of goods or services
using the infringing material. (Sec. 155)
2. Trademark Dilution
 Lessening of the capacity of famous mark to
identify and distinguish goods or services,
regardless of the presence of absence of:
A. Competition between the owner of the famous
mark and other parties
B. Likelihood of confusion, mistake or deception
3. Action for False or Fraudulent Declaration
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 Procuring registration in the IPO using false or
fraudulent declarations whether oral or in writing
4. Damages and Injunction
 Measurement of damages is based on the
reasonable profit which the complaining party
would have made, had the defendant not infringed
his rights, or the profit which the defendant actually
made out of the infringement
 If it cannot be measured, it will be based upon the
amount of gross sales of the defendant or the value
of the services in connection with which the mark
or trade name was used in the infringement of the
rights of the complaining party
 Court may impound sales invoices and other
documents evidencing sales during pendency of the
action
 Damages may be doubled if there is actual intent
to mislead the public or defraud complainant
 Injunction may be granted
5. Destruction of infringing material
 The court may order that goods found to be
infringing be, without compensation of any sort,
disposed of outside the channels of commerce in
such a manner as to avoid any harm caused to the
right holder, or destroyed (Sec. 157)
 For counterfeit goods, simple removal of the TM
affixed shall not be sufficient other than in
exceptional cases which shall be determined by the
Regulations, to permit the release of goods into the
channels of commerce
6. Infringement action by a foreign national
 Requirement: Reciprocity granted to PH nationals
in order to commence action
7. Criminal Penalty
 Imprisonment of 2-5 years and a fine of P50k-200k
Presumption in Trademark Infringement cases
 Knowledge is presumed when registrant gives
notice that his mark is registered by displaying the
mark the words “registered mark” or ®
 Presumption of knowledge on the part of the
infringer
Trade name- name identifying an enterprise
 It must not be contrary to public order of morals
 Name shall be protected even before registration
against any unlawful act committed by 3rd parties

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