Trademarks play a crucial role in protecting a business’s identity and reputation, particularly in a competitive market like the Philippines.1 Governed by the Intellectual Property Code (IP Code), a registered trademark grants their owners the exclusive right to use from unauthorized use. However, many businesses and trademark owners make common mistakes that can undermine their rights, from registration lapses to inadequate enforcement.
This article explores these common mistakes and provides steps to avoid them, ensuring comprehensive protection for your intellectual property.
Trademark Mistakes: Why Avoid Them?
Avoiding trademark mistakes is crucial in securing and maintaining the exclusive rights granted under the IP Code. In a recently decided trademark dispute, the Court ruled in favor of Gloria Maris Shark’s Fin Restaurant, Inc. finding that Lim, one of its incorporators, registered the trademark “Gloria Maris” in bad faith.3 Failure to register a trademark or registering the same in bad faith is one of the common mistakes that trademark owners should avoid.
Ultimately, avoiding such mistakes safeguards your intellectual property, enhances brand value, and ensures long-term business success.
5 Common Trademark Mistakes
Here are the 5 common mistakes you should avoid to ensure your trademark rights:
1. Failing to conduct a trademark search
Before starting the actual registration process, it is essential to conduct a trademark search first. Failure to conduct a trademark search opens you to a risk of trademark infringement. You can avoid this mistake by performing the search on your own through the Intellectual Property Office of the Philippines (IPOPHL).
2. Not registering your trademark
Trademark registration is necessary for the acquisition of a right over a mark.4 Accordingly, a void registration confers no right. Hence, not registering your trademark opens your brand to risks of infringement and you won’t be equipped with proper enforcement of intellectual property rights. You can avoid this mistake by following the 3 Easy Steps to Register a Trademark in the Philippines.
3. Failing to use the trademark
Section 124 of the IP Code enumerates the requirements for application for the registration of the mark. One of which is the filing of the registrant a declaration of actual use of the mark within three (3) years from the filing date of the application.5 Failure to use the trademark can lead to its cancellation.
4. Failing to renew a trademark
Failing to renew your trademark can not only result in its cancellation but also weaken the reputation of your business in the long run. Trademark renewal is provided under Section 146 of the IP Code6 as well as the prescribed fees. Maintain your trademark by following the renewal process provided by the law to avoid losing your rights to the mark.
5. Not hiring an accredited trademark lawyer
An accredited trademark lawyer is equipped to handle the complexities of trademark law, offering specialized expertise to ensure your intellectual property is properly protected. Their guidance is invaluable in navigating the registration process, managing legal requirements, and avoiding costly errors that could jeopardize your trademark rights.
To learn more about the importance of hiring an accredited trademark lawyer, check out 5 Reasons to Hire an Accredited Trademark Lawyer.
Conclusion
Trademarks are vital assets that protect your brand identity and give you a competitive edge in the market. Accordingly, avoiding common trademark mistakes is essential to protecting your intellectual property rights and ensuring the long-term success of your brand. By conducting proper research, registering your trademark, and maintaining its use, can secure the benefits of trademark protection under the IP Code.
To know more about avoiding trademark mistakes that can compromise the quality of your brand, book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 Zuneca Pharmaceutical v. Natrapharm, Inc. G.R. No. 211850, September 8,2020.
2 An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for other Purposes, Republic Act No. 8293, §1 (January 1, 1998) [hereinafter Intellectual Property Code of the Philippines].
3 Gloria Maris Shark’s Fin restaurant, Inc. v. Pacific Q. Lim, G.R. No. 264919-21, May 20, 2024.
4 Id at1.
5 Intellectual Property Code of the Philippines§124.2
6 Intellectual Property Code of the Philippines §146
