The Philippine market continues to be competitive, so brands are constantly looking for ways to secure their identity. The best way of doing it is through trademarking. The Intellectual Property Code (IP Code)1 governs the process of trademarking your business and helping you enforce your intellectual rights to a mark.
If you own a business and you want to protect your brand from the risk of infringement or unfair competition, this article is for you.
Importance of Trademarking a Business
No one wants to go through legal measures to protect a business name, yet cases like these continue to confront businesses in the Philippines. If a business lacks a trademark, it forfeits the right to take legal action against infringement.
For instance, in a case filed in 2018 by BEABA, the Intellectual Property Office (IPO) through the Office of the Director General, ruled that having the same initial letters does not automatically mean that the marks are confusingly similar to warrant a trademark infringement. BEABA, the appellant, held the advantage because it had secured a trademark for its brand.
To help your business avoid a similar situation, here are some legal insights about trademarks and the considerations to account for in trademarking your business.
The Legal Requirements and Considerations for a Business Trademark
1. Eligibility for registration.
Section 123 of the IP Code provides for the registrability of marks. Essentially, marks should be distinctive, not confusingly similar to existing marks, not deceptive, and contrary to morals. A mark is valid if it is distinctive and not barred from registration. Once registered, not only the mark’s validity but also the registrant’s ownership of the mark is prima facie presumed.2
2. Choosing a trademark.
In relation to the previous item, a business should choose a trademark that is not an existing trademark. Once you have secured the eligibility of your business mark, the law requires that choosing a trademark also includes the responsibility of conducting a search to ensure that your mark is unique. To learn more about registering your business, read How Do I Get a Trademark: A Step-by-Step Guide.
3. Registration with the Intellectual Property Office (IPO).
The rights in a mark, including filing an action for trademark infringement, shall be acquired through registration made validly under the provision of the IPC. In Superbrands Marketing International Inc., v. Bel Mondo Italia Corporation, the Office of the Director General of the IPO emphasized that Superbrands has no certificate of registration, hence, the complaint for trademark infringement has no basis and cannot be given due course.
Further, the certificate of registration issued by the IPO will serve as prima facie evidence of the validity of the registration, the ownership of the registrant, and the exclusive right to use the mark in connection with the goods and services specified in the certificate.3
By ensuring compliance with these eligibility requirements, businesses can secure their trademarks under Philippine law, gaining exclusive trademark rights and protecting their intellectual property.
Conclusion
Trademarking a business in the Philippines is a crucial step in establishing and protecting a brand's identity. Understanding these rules according to the IP Code—along with key considerations earlier provided—can help you navigate the process effectively, ensuring your brand is protected in a competitive marketplace.
To know more about trademarking your business, book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 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].
2 Gemma Ong aka Maria Teresa Gemma Catacutan v. People of the Philippines, G.R. No. 169440, November 23, 2011.
3 Intellectual Property Code of the Philippines, §138.
