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Technology and creativity take center stage in the economic growth of today's dynamic world. With the increasing number of marketing intellectual products, enforcing intellectual property rights has become more crucial than ever. In the Philippines, the Intellectual Property Code (IP Code)1 governs these rights, further providing guidelines for trademark protection and defining their limitations.
This article will guide you in understanding the basics of the rights conferred, and the requirements you should comply with as a registrant under trademark law in the Philippines.
What is a Trademark?
A trademark is 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.2
An example of a trademark is “Jollibee”, which was an opposer in a 2017 case against Jolliville Holdings pertaining to the latter’s trademark registration. According to the Intellectual Property Office (IPO), through its Director General, “Jolliville” is not confusingly similar to Jollibee’s registered marks.
What are the Legal Requirements to Acquire a Trademark?
Before one can enforce trademark rights, the owner must first comply with the legal requirements to acquire a trademark:
1. Know the marks that cannot be registered. A mark that consists of immoral, deceptive matter, those consisting of the insignia of the Philippines, or confusingly similar to a mark that is already registered with respect to goods or services are among marks that cannot be registered.3
2. Actual use after registration. Although prior use is not required before registration, the registrant shall file a declaration of actual use of the mark after registration, evidencing such use within three years from the filing date of application to avoid cancellation.
3. Registration with the Intellectual Property Office. The rights in a mark shall be acquired through registration made validly under the provision of the IPC. When registration is made in bad faith, it would result in a void registration which confers no right.4
Accordingly, 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.5
What are the Key Rights under Trademark Law?
Upon valid registration, section 147 of the IPC confers rights to owners of a registered mark, which are:
1. Exclusive Use of the Mark. The owner of a registered mark has the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services that are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.
2. Right to Prevent Others from the Use of the Mark. The owner of the mark has the right to prevent the use of such mark by others to the detriment of the owner’s business interests.
Conclusion
Understanding trademark law better equips you against infringers. Knowing your rights as a registrant and complying with the requirements under the law will protect your brand and ensure that you will have exclusive use of your trade.
To know more about trademark law, book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 An ActPrescribing the Intellectual Property Code and Establishing the IntellectualProperty Office, Providing for its Powers and Functions, and for otherPurposes, Republic Act No. 8293, §1 (January 1, 1998) [hereinafter IntellectualProperty Code of the Philippines].
2 Intellectual Property Code of the Philippines, §121.
3 Intellectual Property Code of the Philippines, §123.
4 Zuneca Pharmaceutical v. Natrapharm, Inc. G.R. No. 211850,September 8, 2020.
5 Intellectual Property Code of the Philippines, §138.
