ABI 23

FUNDAMENTALS OF INTELLECTUAL PROPERTY

UNDERSTANDING INTELLECTUAL PROPERTY: TRADEMARK

Group Members:
 Arguelles, Prince Oliver R.
 De Roxas, John Ray P.
 Labatete, Jake R.
 Masongsong, Warren B.
 Pesigan, Jhon Patrick C.
 Rodriguez, Ruzel M.
 Velasco, Jefferson L.

WHAT IS TRADEMARK?
 is a recognizable sign, design or expression which
showing distinguishes between products or services of a
particular trader from the similar products or services of
other traders.
 A trademark is a symbol which is indicates the
responsible for the goods placed before the public.
(Jahan and Shakil, 2018)

"Mark" means any visible sign capable of distinguishing

the goods (trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods; (Sec. 38, R.A. No. 166a)

EXAMPLES OF VISIBLE SIGNS

 words  colors
 letters  logos
 numerals  three dimensional objects
 figures/ pictures  combinations
 shapes

NON-VISIBLE SIGNS

1. SOUNDS- Recognizable sounds that signify the source of goods

(e.g. old spice whistle sound).
2. SCENTS- Distinctive scent representing a certain product, (e.g.
Victoria’s Secret perfumes).

TYPES OF MARKS/ DISTINCTIVENESS OF MARKS

1. Word Marks- Consists of letters, words or numerals. (e.g.

“Coca Cola”).
2. Device Marks- includes logo and design. (e.g. Nike whoosh).
3. Combined Marks- includes both words and design elements. (e.g. Go Daddy
Logo).
 Generic Marks-

that fail to distinguish themselves from another. (e.g. “Bicycle” or “Computer”).

 Descriptive Marks- Words that reflect the nature, quality or function of the
product or service. Protectable when secondary meaning is acquired. (e.g Kleenex
and Sharp)
 Suggestive Marks- Words that cleverly express an attribute of the product or
service that required the consumers to think about what it represents. (e.g. Burger
King and Under Armour).
 Arbitrary Marks- Words that have a real (dictionary) meaning but bear no
reference to the product or service. (e.g. Apple and StarBucks).
 Fanciful Marks- Made-up (non-dictionary) words invented for the sole purpose
of functioning as a trademark.

TRADEMARK VS. TRADENAME

Tradename- A mark that identifies or distinguishes

goods or products in the eye of the public. Registration
is required. (e.g. Nestle)

Trademark- A name under which a business operates

and is known to the public. Unlike trademarks, which are
used to identify goods or services, trade names identify
the business itself. Registration is not required. (e.g.
Bearbrand)

COLLECTIVE MARKS

are a type of trademark used by members of a

collective group or association to identify goods or
services as originating from that group. They
indicate that the goods or services come from a
particular group, which adheres to certain standards
set by that group.
HOW TO GET AN OWNERSHIP OF A TRADEMARK?

 In the Philippines, ownership of a trademark or service mark is acquired

through registration with the IPOPHL, not merely by use. This means you
become the legal owner only after your application is approved and
registered.
 The Intellectual Property Code of the Philippines (RA 8293), particularly
Section 122, states: "The rights in a mark shall be acquired through registration
made validly in accordance with the provisions of this law." (requirements in the
following slides)
 Application of a mark follows the "first-to-file" principle, meaning the first
person to file for a mark will generally be granted the rights, regardless of who
used it first.
 But the right to register a trademark should be based on ownership.
 An exclusive distributor does not acquire any propriety interest in the principal’s
 trademark, and cannot register it in his own name unless it is has been validly
assigned to him.

Under Section 124.1 of R.A. 8923, the following are the requirements for the
application for a trademark:

 A formal request for registration.

 Applicant’s name and address.
 Applicant’s nationality, domicile, and any real
business presence in another country.
 Legal basis if the applicant is a juridical entity.
 Appointment of a local agent if the applicant is
not based in the Philippines.
 Details of any earlier application claimed for
priority (country, date, and number if
available).
 If color is part of the mark, details of the colors
and their placement.
 Statement if the mark is three-dimensional.
 Reproductions (images) of the mark.
 Translation or transliteration of any parts of the mark, if applicable.
 List of goods or services, grouped and classified under the Nice Classification.
 Signature or identification of the applicant or representative.

Section 124.2 DECLARATION OF ACTUAL USE OF THE MARK

The applicant must prove actual use of the mark

within 3 years of filing, or the application will be
denied or the mark removed.

Section 124.4

If during the examination of the application, the

Office finds factual basis to reasonably doubt the
veracity of any indication or element in the
application, it may require the applicant to submit sufficient evidence to remove the
doubt. (Sec. 5, R.A. No. 166a)

ACQUISITION OF OWNERSHIP OF TRADENAME

 RA 8293 explicitly recognizes trade names as a form of

intellectual property, but it does not provide detailed
procedures for the acquisition of ownership. The law
lacks specific provisions on how to register a trade name,
the requirements for application, the renewal process, and
the roles of administrative agencies. (SINCE
REGISTRATION OF TRADENAME IS NOT
REQUIRED).
 A name or designation may not be used as a trade name 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 if, in particular, it is liable to deceive trade circles or the public as to
the nature of the enterprise identified by that name.

RIGHTS CONFERRED BY REGISTRATION

 The owner of a registered trademark has the exclusive right to stop others
from using identical or similar marks for similar goods or services if it may
cause confusion.
 This right doesn't apply to legally imported or off-patent drugs and
medicines, as long as the marks are not altered or infringed.
 For well-known marks registered in the Philippines, protection extends even
to unrelated goods or services if such use implies a connection to the owner
and may harm their interests.

TM VS R SYMBOL

The ™ symbol may be used when the specific good or service has a
trademark application pending registration.

This ® emblem serves as a reminder that the brand is registered and

protected from trademark law violation.

RA. 8293. SECTION 151. CANCELLATION

 A trademark registration may be cancelled through a petition filed by

anyone who believes they are or will be harmed by the mark. Cancellation
can be requested:

 Within 5 years from registration, or anytime if the mark becomes generic, is

abandoned, was obtained fraudulently, misleads consumers, or has not been
used in the Philippines for 3 or more years without valid reason.
 Courts or agencies handling trademark enforcement can also rule on
cancellation. If a case is already filed to enforce the mark, no other
 cancellation petition can be entertained elsewhere. However, a pending
cancellation case does not delay enforcement actions.

SECTION 154. CANCELLATION OF REGISTRATION

 If the Bureau of Legal Affairs rules in favor of cancellation, it will order the
trademark registration to be cancelled. Once the decision is final, all rights from
the registration will end, and a notice of the cancellation will be published in the
IPO Gazette.

TRADEMARK ISSUES HAPPENED IN THE PHILIPPINES:

1. San Miguel Corporation (SMC) had been
producing San Miguel Pale Pilsen, a well-known
beer in the Philippines, since 1890 and held a
trademark for it. But then, Asia Brewery Inc.
(ABI) introduced a competing beer product
in 1988 under the name "BEER PALE
PILSEN" (later changed to "BEER NA BEER PALE PILSEN"), which SMC
claimed was an infringement of its trademark. SMC argued that ABI’s use
of "PILSEN" (or "PILSNEN") was confusingly similar to its "PALE
PILSEN" trademark and claimed that ABI’s packaging (color scheme, font, and
bottle shape) mimicked San Miguel Pale Pilsen, misleading consumers. But,
the Philippine Supreme Court ruled in favor of Asia Brewery Inc., stating that
"Pilsen" is Descriptive and Generic – The term refers to a beer style and cannot be
exclusively owned by SMC. And the Court found that the overall packaging
(including color, design, and logos) of ABI’s beer was sufficiently distinct from
SMC’s product.
2. TVJ (Tito Sotto, Vic Sotto, and Joey
de Leon) are the original creators and
hosts of the noontime show Eat Bulaga!,
which began airing in 1979. TAPE Inc.
(Television and Production Exponents
Inc.) was the producer of Eat Bulaga! and held the trademark registration for the
show's name. For years, TVJ worked under TAPE Inc., producing and hosting the
show. In 2023, a falling out occurred between TVJ and TAPE Inc. due to internal
disagreements. TVJ left TAPE Inc., and the latter continued airing Eat Bulaga! with
new hosts under the same name. TVJ filed a legal case to reclaim the trademark rights
and ownership of the name "Eat Bulaga!", asserting they were the real creators and
public face of the show. The Intellectual Property Office (IPO) ruled in favor of
TVJ, saying: TVJ are the true originators and owners of the "Eat Bulaga!" name
and concept.TAPE Inc.'s trademark registration was cancelled.
3. Starbucks Corporation, the global coffee
chain, holds trademarks for
its Frappuccino® line of blended coffee drinks
in the Philippines and worldwide. Manila Café,
a local coffee shop, sold a product
called "Manila Café Frappé", which Starbucks claimed was an infringement of its
trademark. Starbucks argued that "Frappé" was confusingly similar to its
registered "Frappuccino" trademark. Starbucks claimed that Manila Café’s use of
"Frappé" could mislead consumers into thinking it was associated with Starbucks.
But, Manila Café claimed it had been using the term before Starbucks entered the
Philippine market. The Bureau of Legal Affairs (BLA) of the IPO ruled in favor of
Manila Café, stating: "Frappé" is Descriptive – The term is generic and refers to a
type of beverage, not exclusively linked to Starbucks. The court noted that Starbucks'
trademark is "Frappuccino", not just "Frappé," and the two terms are distinct.
4. Jolliville Holdings, Inc. (a real estate
and leasing company, unrelated to
Jollibee Foods Corp.) owned the
trademark "Jolliville" (registered in
1997 for real estate services). Jollibee
Foods Corporation (JFC) later filed a trademark opposition against Jolliville,
arguing that the name was too similar and could cause confusion. Later, Jollibee
claimed that "Jolliville" was confusingly similar to "Jollibee" and could mislead
consumers. And, argued that Jollibee’s brand was well-known, and even unrelated
businesses using "Jolli-" could dilute its trademark. Jolliville operated in real estate,
not fast food, so no consumer confusion existed. And, Jolliville had been using the
name since 1997 (before Jollibee’s opposition). And there was no intent to copy
Jollibee, as their businesses were unrelated. The IPO Bureau of Legal Affairs (BLA)
ruled in favor of Jolliville, stating, Real estate (Jolliville) and fast food (Jollibee) are
entirely different industries.
5. Del Monte Corporation (a U.S.-based
food company) owned the "Del
Monte" trademark for various food
products, including canned fruits and
vegetables. Sunshine Sauce
Manufacturing, Inc. (Philippines) produced soy sauce under the brand "Sunshine
Del Monte Soy Sauce." Del Monte sued Sunshine for trademark infringement and
unfair competition, arguing that Sunshine’s use of "Del Monte" misled consumers
into believing the soy sauce was affiliated with Del Monte. But Sunshine argued that
it has been actively marketed its products in the country. Del Monte was known
for canned fruits & vegetables, not condiments like soy sauce. No evidence showed
that buyers believed the soy sauce was connected to Del Monte. The Philippine
Supreme Court ruled in favor of Sunshine Sauce, dismissing Del Monte’s claims.
The decision was based on Sunshine had been using "Del Monte" before Del Monte’s
products became widely known in the Philippines. Del Monte had not yet established
strong market recognition for its brand in the country at the time of Sunshine’s
registration. The court found no intent to deceive consumers. The packaging and
labeling of "Sunshine Del Monte Soy Sauce" were distinct enough from Del Monte’s
products. And, Del Monte was primarily associated with canned fruits, while
Sunshine sold soy sauce—a different market segment.