The Law on Trademarks, Service Marks and Trade Names

Definition of Terms

1. Trademark- means any visible sign capable of distinguishing the goods of an enterprise and shall
include a stamped or marked container of goods.
2. Service Mark- means any visible sign capable of distinguishing the services of an enterprise and
shall include a stamped or marked container of goods.
3. Collective Mark- means 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.
4. Trade Name- means the name or designation identifying or distinguishing an enterprise.

Mode of Creation of Right- Trademark, service mark and collective mark must be registered with IPO to
be protected by law while trade name need not be registered to be protected. (Created by Registration)

Non-registrable Marks- A mark cannot be registered if it:

1. 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;
2. 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;
3. 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;
4. Is identical with a registered mark belonging to a different proprietor or a mark with an earlier
filing or priority date, in respect of: cd
i. The same goods or services,
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion;
5. 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;
6. 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 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: Provided
further, That the interests of the owner of the registered mark are likely to be damaged by such
use;
7. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical
origin of the goods or services;
8. Consists exclusively of signs that are generic for the goods or services that they seek to identify;
9. 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;
10. 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;
11. 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;
12. Consists of color alone, unless defined by a given form; or
13. Is contrary to public order or morality.

Term of Trademark and Service Mark- It has a term of 10 years but subject to unlimited terms of renewal.
Therefore, it has indefinite life.

Test of Trademark Infringement

1. Dominancy Test- It focuses on the similarity of the main, prevalent or essential features of the
competing trademarks that might cause confusion. Infringement takes place when the competing
trademark contains the essential features of another. Imitation or an effort to imitate is
unnecessary. The question is whether the use of the marks is likely to cause confusion or deceive
purchasers.
2. Holistic Test- It considers the entirety of the marks, including labels and packaging, in determining
confusing similarity. The focus is not only on the predominant words but also on the other
features appearing on the labels.

Difference between Trademark Infringement and Unfair Competition

1. Trademark Infringement- means any person who shall use, without the consent of the registrant
any reproduction, counterfeit, copy, or colorable imitation of any registered trademark or
tradename in connection with the sale, offering for sale, or advertising of any goods, business or
services on or in connection with which such use is likely to cause confusion, or mistake, or to
deceive purchasers or others as to the source or origin of such goods or services, or identify of
such business; or reproduce, counterfeit, copy or colorably imitate any such mark or tradename
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 such goods, business or services, shall be liable to a civil action by the registrant
for any or all of the remedies herein provided.

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 the mark or its colorable imitation by the alleged infringer results in likelihood of
confusion.

2. Unfair Competition- has been defined as the passing off (or palming off) or attempting to pass off
upon the public of the goods or business of one person as the goods or business of another with
the end and probable effect of deceiving the public. The essential elements of unfair competition
are: confusing similarity in the general appearance of the goods; and intent to deceive the public
and defraud a competitor. Jurisprudence also formulated the following true test of unfair
competition: whether the acts of the 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 the essential requisites in an action to restrain
unfair competition is proof of fraud; the intent to deceive, actual or probable must be shown
before the right to recover can exist.

3. Note: there can be trademark infringement without unfair competition such as when the infringer
discloses on the labels containing the mark that he manufactures the goods, thus preventing the
public from being deceived that the goods originate from the trademark owner. In this case, no
issue of confusion arises because the same manufactured products are sold; only the ownership
of the trademarks is at issue.