Documenti di Didattica
Documenti di Professioni
Documenti di Cultura
THE 5 CATEGORIES OF TRADEMARK o A suggestive mark implies something about the good
or service. A mark in this category typically qualifies
Generic Mark
for protection without requiring a secondary
o A generic trademark actually doesn't qualify for a meaning.
trademark unless it includes more specific detail.
o The term "suggestive" means that the customer
One example of a generic mark is the phrase, "The
must use the imagination to figure out what services
Ice Cream Shop." Offering trademark protection on
or goods the company offers. One example is the
something this generic would restrict all other shops
luxury automotive brand, Jaguar. It suggests speed
that sell ice cream.
and agility, but doesn't immediately convey a car
o To qualify a generic mark for a trademark, it needs to manufacturer.
describe qualities, characteristics, or ingredients of
Fanciful Mark
the good your business sells.
o A fanciful mark is a term, name, or logo that is
Descriptive Mark
different from anything else that exists. This category
o A descriptive mark identifies one or more is the easiest for obtaining trademark protection
characteristics of a prodct or service and only serves because it typically doesn't compete with anything
to describe the product. It has unique elements that else or become too generic.
qualify it for protection under trademark laws such
o Examples of fanciful marks include Kodak, Nike, and
as it must have secondary meaning such as amount
Adidas. These words don't hold any meaning in
and manner of advertising, volume of sales, length
common language, so trademarking them doesn't
and manner of the mark's use, or results of consumer
infringe on the rights of other companies that offer
surveys to qualify. This means that consumers must
similar products.
recognize the mark and identify it with the brand.
Arbitrary Mark
o To qualify as a descriptive mark, it should evolve
from what the brand represents to who the brand o An arbitrary mark might include a term or phrase
represents. with a well-known meaning, but the meaning in its
case is different. The best example of an arbitrary
mark is Apple, the computer and electronics
manufacturer. An apple is a familiar term, but in this
case, the mark doesn't have anything to do with the CASE: KABUSHI KAISHA ISETAN ISETAN CO., LTD., vs. IAC, ISETANN
general meaning of the term. DEPARTMENT STORE, INC.
HOW ARE RIGHTS TO A MARK ACQUIRED? -A fundamental principle of Philippine Trademarks Law is that actual
use in commerce in the Philippines is a prerequisite to the acquisition
1. By USE ( SEC 124.2 of RA 8293)
of ownership over a trademark or a trade name. A prior registrant
BY the regulations within three years from the filing date of cannot claim exclusive use of the trademark unless it uses it in
application. Otherwise, the application shall be refused or the mark commerce.
shall be removed from the Registry by the Director.
The Paris Convention for the Protection of Industrial Property does
2. BY REGISTRATION ( SEC 122 of RA 8293) not automatically exclude all countries of the world that have signed
it from using a trade name which happens to be used in one country.
The rights in a mark shall be acquired through registration made
validly in accordance with the provisions of this law. -Conditions which must exist before any trademark owner can claim
and be afforded rights:
* within 3 three years from the filing date of application
1. the mark must be internationally known or well known;
Trademark and service mark rights arise through USE IN COMMERCE.
In sec 2 of RA 166, prior use in Philippine commerce was basis of 2. the subject of the right must be a trademark, not a patent or
ownership. (UNNO COMMERCIAL vs GEN. MILLING CORP) copyright or anything else;
3. the mark must be for use in the same or similar kinds of goods,
and
Case: UNNO COMMERCIAL vs GEN MILLINGS
4. The person claiming must be the owner of the mark.
The right to register trademark is based on ownership. When the
applicant is not the owner of the trademark being applied for, he has
no right to apply for the registration of the same. Under the
IS THE DOCTRINE OF ACTUAL USE STILL APPICABLE?
Trademark Law only the owner of the trademark, trade name or
service mark used to distinguish his goods, business or service from Yes. Sec 124,2 requires a declaration of actual use within 3 years from
the goods, business or service of others is entitled to register the filing date, otherwise the application shall be refused or the mark
same. removed from the register by the Director. Hence, to maintain the
validity of registration one has to use the mark. In other words, it is
An importer, broker, indentor or distributor acquires no rights to the
the actual use of the mark or trade name which perfects the
trademark of the goods he is dealing with in the absence of a valid
ownership of the mark.
transfer or assignment of the trade mark.
SEC 145 requires a declaration of actual within one year from the 5th Confusing similarity refers to resemblance between such mark or
anniversary of the date of registration otherwise the mark shall be trade name of a person and that of another as to likely, when applied
removed from the register. to or used on the respective goods, business or services.
A certificate of registration shall remain in force for 10 years; - a purchaser purchased a product in the belief that he/she is
provided, that the registrant shall file a declaration of actual use and purchasing that of the other
evidence to that effect or shall show valid reasons based on the
Confusion of Business
existence of obstacles to such use, as prescribed by the Registration,
within 1 year from the 5th anniversary of the date of the registration - exist when though the goods or services of the parties are different,
of the mark. Otherwise, the mark shall be removed from the Register the defendant’s product is such as might reasonably be assumed to
by the Office. originate with the plaintiff, and the public would be deceived either
into that belief or into the belief that there is connection between
RENEWABLE EVERY 10 years.
the plaintiff and defendant when in fact such does not exist.
DECLARATION OF ACTUAL USE
While there is confusion of goods when the products are competing,
- The applicant or the registrant shall file a Declaration of actual use confusion of business exist when the products are non-competing
of the mark with evidence to that effect within 3 years from the filing but related thereto enough to produce confusion of affiliation.
date of the application. Otherwise, refused or removed from the
Likelihood of confusion is sufficient on the part of the buying public
register.
as to deny or cancel registration of the junior user or to constitute
5th Anniversary infringement of the mark of the senior user.
The registrant shall file a declaration of actual use of the mark with Purchaser- ordinary or average purchaser with at least a modicum of
evidence to that effect within 1 year from the fifth anniversary of the intelligence; not the completely unwary customer but those who are
registration. Otherwise, removed from the register. at least accustomed to buy and are familiar with the hoods in
question.
CONFUSION OF TRADEMARK
a. DOMINANCY TEST
b. HOLLISTIC TEST
What is patent? 3. Schemes, rules and methods of performing mental acts, playing
games or doing business, and programs for computers
It is an exclusive right granted by a state to an inventor or his assignee
for a fixed period of time in exchange of disclosure of an invention. 4. Methods for treatment of the human or Animal body
Three-fold purpose 5. Plant varieties or animal breeds or essentially biological process for
the production of plants or animals. This provision shall not apply to
1. patent law seeks to foster and reward invention
micro‐ organisms and non‐biological and microbiological processes
2. to promote disclosures of inventions and to permit the public to
6. Aesthetic creations
practice the invention once the patent expires
7. Anything which is Contrary to public order or morality. (Sec. 22,
3. the stringent requirements for patent protection seek to ensure
IPC as amended by R.A. 9502)
that ideas in the public domain remain there for the free use of the
public. What are the elements of patentability?
the time of the filing date r priority date of the application claiming 1. Filing of application form
the invention.
2. accordance to filing date
3. industrial applicability- an invention that can be produced and used
3. formality examination
in any industry shall be industrially applicable.
4. classification and search
- if two or more persons have made the invention separately and What are the conditions in availing of priority date?
independently of each other, the right to the patent shall belong to
1. The local application expressly claims priority;
the person who filed the application for such invention, or where two
or more applications are filed for the same invention, to the applicant 2. It is filed within 12 months from the date the earliest foreign
who has the earliest filing date or, the earliest priority date. (sec 29 application was filed; and
of RA 8293)
3. A certified copy of the foreign application together with an English
RIGHT TO PRIORITY translation is filed within 6 months from the date of filing in the
Philippines. (Sec. 31, IPC
(SEC 31 of 8293)
: What are the rights conferred by a patent application after the first
publication?
The applicant shall have all the rights of a patentee against any
person who, without his authorization, exercised any of the rights
conferred under Section 71 in relation to the invention claimed in the
published patent application, as if a patent had been granted for that
PROCEDURE OF GRANT OF PATENT invention, provided that the said person had:
1. Actual knowledge that the invention that he was using was the
subject matter of a published application; or
2. Received written notice that the invention was the subject matter
of a published application being identified in the said notice by its
serial number