What is service mark?
A service mark or servicemark is a trademark used in several countries to
identify a service rather than a product.
Difference between trademark and servicemark
A service mark differs from a trademark in that the mark is used on the
advertising of the service rather than on the packaging or delivery of the
service, since there is generally no "package" to place the mark on, which is
the practice for trademarks. For example, a private carrier can paint its
service mark on its vehicles, such as on planes or buses. Personal service
providers can place their service marks on their delivery vehicles, such as on
the trucks of plumbers or on moving vans. However, if the service deals with
communications, it is possible to use a service mark consisting of a sound (a
sound trademark) in the process of delivering the service. This has been
done in the case of AT&T, which uses a tone sound followed by a woman
speaking the company's name to identify its long distance service; MGM,
which uses the sound of a lion's roar; and RKO Pictures, which used a Morse
code signal for their motion pictures.
Under United States law, service marks have a different standard of use in
order to count as a use in commerce, which is necessary to complete
registration and to stop infringement by competitors. A trademark normally
needs to be used on or directly in association with the sale of goods, such as
on a store display. As services are not defined by a concrete product, use of
a service mark on the uniforms or vehicles of service providers or in
advertisements is instead accepted as a use in commerce. However, like
trademarks, service marks must pass a test of distinctiveness for it to be
qualified as a service mark. For example, Thrifty, Inc. attempted to submit a
service mark application that described aspects of their business (uniforms,
buildings, certain vehicles) as "being blue." The application was rejected for
not being specific enough, and the rejection was upheld on appeal.
Trademarks and service marks are two versions of a kind of intellectual
property - knowledge property. They assert your ownership of these marks,
logos, and slogans, and they help you protect them from being stolen.
Most businesses have some kind of identification that makes their business
stand out, both for advertising purposes and for general business purposes.
These identifiers are trademarks or service marks.
What is a Trademark?
A trademark is specifically a creation to identify a business product. A
trademark can be any word, name, symbol, or device, or any combination
which is used or intended to be used to identify and distinguish the goods of
one company from those of others. In short, a trademark is a brand name.
For example, a product which cleans windows might have "sparklebrite" and
a sparkler as its trademark. The trademark may or may not include a logo (a
graphic).
What is a Service Mark?
A service mark is the same type of device as a trademark, but service marks
distinguish the services of one company from those of another provider.
Service marks are often slogans. For example, the service mark of a plumber
might be "The Leak Fixers" with or without a distinctive logo.
Is it a Product or a Service?
Service marks are sometimes confusing, and many products are bundled
with services. For example, buying a car might mean you are also buying
services, like maintenance or roadside assistance. For example, is
McDonald's a service or a product? McDonald's the company is a service.
Within that service - providing fast food - the company may have many
products that are also trademarked. The Big Mac® is a trademarked
product.
The National Archives suggests one way to distinguish between a product or
a service is to consider the customer. If the customer asks, "What can you
make for me?" it's probably a product. (They also note that products include
digital products.) If the customer asks, "What can you do for me?" it's
probably a service. They include consulting, providing advice, training, and
education in the category of services.
Do I Have to Register a Trademark or Service Mark?
Intellectual property, sometimes abbreviated as "IP," is handled in the same
way as other types of property, except that these assets must be registered
somehow so it's clear who owns them, and to prevent others from using
this property without permission or payment. You can use a trademark or
service mark without registering it. But registering it protects it from issues
if someone tries to use your mark or uses a similar mark.
How Do I Register a Trademark or Service Mark?
Before you register the trademark or service, you must be able to show that
your business is the owner of the mark and that it is currently being used in
your business.
To register a service mark, use the trademark process, designating the mark
as a service mark for services. To show the use of the service mark, use
specimens such as "signs, photographs, brochures or advertisements that
show the mark used in the sale or advertising of the services."
Trademarks and Service Marks as Intangible Assets
Trademarks and service marks are part of a subset of business assets called
intellectual property - property that has value but has no tangible form.
Intellectual property is considered intangible assets.
Like other business property, trademarks and service marks can be bought
and sold, or they can be licensed to others for things like apparel or
advertising giveaways.
What is the difference between "TM" and "SM" and ®?"
The TM and SM designations are placed with trademarks and service marks
to show that someone owns them. The "R" symbol designates a trademark
or service mark that has been registered.
Well known service marks
McDonalds, Facebook, Botox
1. Who may apply for a trade mark?
All Filipinos or domestic corporations may obtain the registration of a mark
in the Philippines.
With regard to foreigners, all people who are domiciled or have a real and
effective commercial establishment in a country bound by treaty to grant
Filipinos the same right it grants its own nationals, and nationals of these
countries, may obtain a registration mark in the Philippines. If the
applicant’s country also accepts applications for registration of marks from
Filipino nationals then registration is also possible.
2. What is the scope of a normal trade mark?
A mark is defined as any visible sign capable of distinguishing the goods or
services of an enterprise and is to include a stamped or marked container of
goods.
3. What time constraints are there on registering a trade mark?
The date of filing is important under the first-to-file system. It determines
who has the prior right in case of a dispute with another applicant for the
same or similar mark.
4. How long does registration take and what are the standard costs?
The expected time frame for registration of a mark is six months to one
year if there is no opposition filed against the subject mark.
For small entities (total assets of less than P20,000,000 ($470,000), the filing
fee is P1,080 ($25) per class. An additional fee of P750 ($18) is payable for
claiming convention priority and P250 ($6) for claiming colour or
distinctiveness, per class. For big entities (total assets of P20 million or
more), the filing fee is P2,160 per class. An additional fee of P1,500 is
payable for claiming convention priority and P500 for claiming colour or
claim of distinctiveness, per class.
5. How are trade marks classified?
Trade marks are classified according to the Nice Classification.
6. Is there anything in particular about the examination process that
applicants should be aware of?
Applications filed on-line are processed quickly by our Bureau of
Trademarks.
7. What constitutes use of the trade mark? When must this be
demonstrated?
Use as a basis for acquiring ownership of trade marks or service marks must
be lawful, in commerce, and in the Philippines.
Use must also be demonstrated within three years of the date of
application. Furthermore, to maintain the trade mark registration, use
should be demonstrated within one year of the fifth anniversary of the
date of registration.
8. When is a trade mark considered descriptive?
A descriptive term conveys an immediate idea of the ingredients, qualities,
or characteristics of the goods. It is not subject to registration as a trade
mark unless it has acquired secondary meaning through long and exclusive
use.
9. When is it considered generic?
A generic term refers to the genus to which the product merely belongs as a
specie. Courts in the Philippines have ruled that the applicant cannot obtain
registration of poster ads as this is a mere generic term in respect of poster
advertising – the service performed by the applicant.
10. What aspects of a mark can be considered objectionable or immoral?
Marks considered immoral or scandalous are marks that are shocking to the
sense of propriety, offensive to the conscience or moral feelings or calling
out for condemnation. According to the United States’ Trademark Manual of
Examining Procedure, Section 12003.01, the meaning imparted by a mark is
determined in the context of the attitudes of the day and the relevant
marketplace for the goods or services identified in the application, and
should be ascertained from the standpoint of not necessarily a majority, but
a substantial composite of the general public.
11. Are there grounds for registering as a geographical indication?
Philippines’ law provides that a mark that “is likely to mislead the public as
to the geographical origin of the goods or services is not registrable”. In
one case, the courts ruled that the geographical indication that is not used
to indicate the geographical place of production of the goods on which it is
used, is registrable.
12. Can three-dimensional or other unconventional marks be registered?
Philippines’ law provides that a mark that 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 may not be registered as a trade
mark or service mark.
13. What constitutes a well-known mark?
A well-known mark must declared as such by a competent authority – the
Court, the director general, the director of the Bureau of Legal Affairs of the
Intellectual Property Office or other government agencies authorised to
hear and adjudicate any enforcement action – to be well known
internationally and in the Philippines, taking into account knowledge of the
relevant sector of the public, including knowledge in the Philippines
obtained through promotion of the mark.
14. Can you trade mark a personal name?
Philippines’ law provides that a mark cannot be registered if it 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.
15. How can a mark be amended?
Upon application of the registrant and payment of the prescribed fee, the
office may permit any registration to be amended or to be disclaimed in
part for good cause, provided that the amendment or disclaimer does not
materially alter the character of the mark.
16. How do you appeal against a denied application?
If the trade mark examiner rejects the application, the applicant will have
two months, extendible by another two months, within which to appeal the
denial. The final refusal by the examiner can be appealed to the director of
trade marks within two months, also extendible by two months, of the
mailing date of the refusal. The decision of the director of trade marks may
be appealed to the director general of the IPO within fifteen days of receipt
by filing a notice of appeal and payment of a fee.
17. How do you oppose another’s application?
A notice of opposition to a trade mark application may be filed within 30
days of its publication in the IPO e-gazette and upon payment of the
required fee. This opposition must be made in writing and verified by the
opposing party or by any person on his behalf who knows the facts, and is to
specify the grounds on which it is based and include a statement of the facts
relied upon. Copies of certificates of registration of marks registered in
other countries or other supporting documents mentioned in the opposition
must be included, together with the translation in English, if it is not in the
English language.
18. When is a mark considered to be used in bad faith?
In one case, the courts ruled that when a trade mark copycat adopts not
only the word but also the word’s exact font and lettering style and in
addition, he copies also the logo portion of the trade mark, the slightest
doubt vanishes: such adoption was deliberate, malicious and in bad faith.
19. When must registration be renewed and at what cost? How is a trade
mark lost?
A certificate of registration may be renewed for ten-year periods on
expiration upon payment of the prescribed fee and filing of a request. Such
a request may be made at any time within six months before the expiration
of the period for which the registration was issued or renewed, or it may be
made within six months after such expiration on payment of the additional
fee prescribed.
For small entities, the renewal fee is P500, while the renewal fee for large
entities is P1,000.
A trade mark may be lost if the registration is allowed to lapse or the
applicant or registrant fails to file a declaration of actual use within three
years of the date of filing or within one year of the fifth anniversary of the
date of registration.
20. How are trade marks jointly owned, transferred or assigned?
Under the Rules and Regulations of the IPO, if there is more than one
applicant, all of them should be named as applicants but anyone may sign
the application for and on behalf of the applicants. Also in cases where
aliquot portion or undivided interest in the mark is assigned, each of the
joint owners will sign the application.
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 of the application for registration of a mark, or of its
registration, must be made in writing and requires the signatures of the
contracting parties. Transfers by mergers or other forms of succession may
be made by any document supporting such a transfer.
Assignments and transfers of registration of marks shall be recorded at the
Office on payment of the prescribed fee.
21. What are the different avenues for infringement? What is the
procedural format and timing for each?
Judicial, criminal and administrative actions are all possible. A civil action for
damages and injunction should be filed after determining that infringement
of the mark is taking place, and after the identity of the infringer and the
place where he manufactures and stores the infringing products are located.
The registrant of the mark in the
Philippines must prove that the mark infringed is registered in the
Philippines, is still in force and the defendant is using an identical or similar
sign likely to deceive or confuse consumers that the goods of the infringer
are the products of the registrant. A presentation of the goods or labels
using the registered mark and the goods or labels bearing the infringing
mark may be necessary.
In addition, a preliminary injunction can be issued to quickly prevent the
infringer from causing damage to the mark owner’s business. At the early
stage of the trial of the case, the court can be asked to issue such an
injunction. The court usually grants this request if the case for infringement
is strong.
After obtaining information on the operations of the infringer, the next step
is to apply to the court for the issuance of an order to search the places
where the infringement is being carried out and to seize the infringing
goods. The police will then conduct the raid and the infringing goods will be
placed under the custody of the court. A complaint will then be filed with
the state prosecutor. If the state prosecutor decides to charge the alleged
infringer with trade mark infringement, information will be filed in the
regional trial court.
If the amount of damages is over P200,000, the registrant may choose to
seek redress against the infringer by filing an administrative action against
the infringer with the Bureau of Legal Affairs. The registrant may likewise
ask the Bureau to stop the sale and manufacture of the infringing goods.
22. How can counterfeiting be contested?
The remedies against counterfeiting are the same as that of trade mark
infringement.
23. What rules cover passing off or unfair competition?
Any person who, in selling his goods, gives them the general appearance of
goods of another manufacturer or dealer, either as to the goods themselves
or in the wrapping of the packages in which they are contained, or the
devices or words thereon or in any other feature of their appearance, which
would probably influence purchasers to believe that the goods offered are
those of a manufacturer or dealer, other than the actual manufacturer or
dealer, constitutes passing off or unfair competition.
24. Is parody considered a valid defense?
There is neither law nor jurisprudence in the Philippines on the legal effects
of parody. It may, however, be raised as fair use in the context of copyright
law and may be a valid defense if the requirements of the law to prove fair
use are met.
25. How about descriptive use, fair use, or use in good faith?
A descriptive use can be a defense when it has acquired a secondary
meaning, where a word or phrase originally incapable of exclusive
appropriation with reference to an article on the market might nevertheless
have been used so long and so exclusively by one particular 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.
For administrative cases, the decision of the director of the Bureau of Legal
Affairs may be appealed to the director general of the IPO. Then the
decision of the director general may be appealed to the Court of Appeals
and then to the Supreme Court.
We are not aware of any other alternative appeal procedure.
28. What arrangements are there for trade marks in bankruptcy?
We do not have a bankruptcy law as it is understood in the United States.
29. How does this jurisdiction interact with international treaties?
To comply with its commitments as a member of the convention, treaties
and agreements relating to IP and the repression of unfair competition,
particularly, the Paris Convention for the Protection of Industrial Property,
the Berne Convention for the Protection of Literary and Artistic Works, and
TRIPs Agreement, the Philippines enacted the Intellectual Property Code of
the Philippines, Republic Act 8293, which came into force on January 1
1998, adopting standards of protection of IP rights that comply with the
mandate of the TRIPs Agreement.

Fair use is a defense under Philippines’ copyright law. The concept of fair
use in the Philippines is similar to that of US law.

Good faith is a defense in a criminal action but not in a civil action.

26. When is it worth conducting a survey to provide evidence of

reputation?
A survey to provide evidence for reputation is worth conducting in cases of
infringement of well known marks which are not registered in the
Philippines, and in cases of unfair competition to establish passing off.

27. How do you appeal an enforcement decision? What other remedies

are available?
For civil and criminal cases filed with the courts, decisions may be appealed
to our Court of Appeals and then to our Supreme Court.