chapter 9

• Trademark


  Any distinctive mark, name, symbol, emblem, sign or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold or dealt in by others
• Tradename


  Individual names and surnames, firm names, trade-names, devices or words used by manufacturers, industrialists, agriculturists, merchants, and others to identify their business, vocations, or occupations; the names or titles lawfully adopted and used by natural or juridical persons, unions, and any manufacturing, industrial, commercial, agricultural, or other organization engaged in trade or commerce
• Service Mark


  A mark used in the sale or advertising of service to identify the services of one person and to distinguish them from the services of the other and includes without limitation the marks, names, symbols, titles, designations, slogans, character names, and distinctive features of radio and other advertising
• Collective Trademark or Collective Trade Name


  Used by the members of a cooperative, or association or other collective group or organization
• Ownership of Trademark


  May be owned by an individual, a firm or partnership, a corporation, or an association or their collective group
• Application for Registration of Trademark


  1. Only the owner of the trademark, trade name, or service mark may apply for its registration

  2. A foreign trademark owner may register his trademark with the Bureau if his trademark is in use in the country
• Requirements for Registration


  • A written application properly notarized
  • Drawing of the mark in duplicate
  • Ten facsimiles of the drawing
  • Five specimen labels as actually used in commerce
  • Filing fee
• Duration of Registration

  The term of registration lasts for 20 years from the date of issuance; registration may be renewed at the end of each 20-year term so long as the mark is still in use in commerce
• What may be applied for Registration

  • Trademarks
  • Trade-names
  • Service Marks
  • Collective Trademark
  • Collective Trade names
  • Names and other marks of ownership stamped on containers of beverages
• Establishment of Trademark Rights


  • Rights in a trademark are established by adoption and actual use of the mark on the goods moving in trade, and the use ordinarily must continue if the rights are to be maintained
  • No right can exist until there has been actual use
  • A trademark may not be registered until the goods bearing the mark have been sold in commerce
• Advantages of Registration

  • It is constructive notice of the registrar's claim of ownership
  • The certificate of registration is a prima facie evidence of the validity of the registrant's ownership of the mark oz tradename and of registrant's exclusive rights to use the same on the goods, business or service specified in the certificate subject to the conditions and limitations stated therein
  • The Bureau of Customs can stop importation into the country of goods which copy or simulate a registrant's mark or trade name
  • Registrants are entitled to such other rights and remedies afforded by the law
• Advantages of Trademark


  • To the manufacturer or businessman: Through advertising and sales promotion, the manufacturer can make his products well-known to the public
  • To the Retailer or Distributor: The retailer or distributor prefers to deal with products of well-known and popular trademarks, because their customers prefer them
  • To the Buying Public: The average consumer is brand-conscious and buys products by the brand name
• Unfair Competition


  Instances where unfair competition may occur, such as giving goods the general appearance of goods of another manufacturer or dealer, employing any article, device, or any other means calculated to induce the false belief that such person is offering the services of another, or making any false statement in the course of trade or committing any other act contrary to good faith of a nature calculated to discredit the good, business or service of another
• Infringement


  The use of a trademark without the authority of the owner of the trademark, including counterfeiting, imitation, copying or colorable imitation of a trade-mark
• Rights and Remedies


  • The court may issue an injunction enjoining the infringer from continuing to imitate the trademark, order the infringer to pay damages to the owner of the trademark, or take other appropriate actions
• A trademark may not be registered if it so resembles a mark previously registered or used in the Philippines by another and not abandoned, so as to likely cause confusion, mistake, or deception
• The same trademark may be used for different products if it would not cause confusion among the public
• The same names may be used in different trademarks if such are names of a product, or a quality, or of a geographical place
• A color cannot be used exclusively in one trademark nor can the size of a bottle, or box be appropriated in a trademark