10.
STAGES IN TRADEMARK DEVELOPMENT The courts give greater weight to the similarity of the
A. Filing of application
- The application must be done in and under the name of the
owner
- A lawyer may file provided there is a special power of attorney
- filed in the IPO
B. Examination
- At this stage, the examiners look up to the registrability of the
trademark
3 things that may happen in examination
1) Denial of the application or
2) Submit further documents
3) Given due course
If denied, then that is the end. Refile it again
In this stage, the proceedings is ex parte, meaning, not
adversarial, no adverse party
C. Publication
After examination and it was given due course, then it is
published in the official gazette of the IPO
The date of the release of the copy of the official gazette is very
important for purposes of filing the oppositions.
Anyone who wants to oppose the trademark application can do
so, within 30 days from the release of the official gazette or an
extended period of not more than 120 days
After the publication and there is opposition, then the case
becomes adversarial. The applicant and oppositor will be in a
hearing before the IPO officer to determine whether to whom is
entitled to the registration of the mark.
If the application is denied, the opposition granted, that is the
end of registration. If the application is granted then final stage.
D. Issuance of certificate of registration
Sec. 136. Issuance and Publication of Certificate. -
When the period for filing the opposition has expired,
or when the Director of Legal Affairs shall have denied
the opposition, the Office upon payment of the
required fee, shall issue the certificate of registration.
Upon issuance of a certificate of registration, notice
thereof making reference to the publication of the
application shall be published in the IPO Gazette.
Sec. 145. Duration.- A certificate of registration shall
remain in force for ten (10) years: Provided, That the
registrant shall file a declaration of actual use and
evidence to that effect, or shall show valid reasons
based on the existence of obstacles to such use, as
prescribed by the Regulations, within one (1) year
from the fifth anniversary of the date of the registration
of the mark. Otherwise, the mark shall be removed
from the Register by the Office.
11. In determining whether a trademark registration should be
a bar to the registration of the identical or similar trademark, the
courts have formulated the doctrine of related goods. They are
related when they belong to the same class or have the same
descriptive properties; when they possess the same physical
attributes or essential characteristics with reference to their
form, composition, texture or quality
What is the dominancy test?
appearance of the product arising from the adoption of the
dominant features of the registered mark, disregarding minor
differences
It focuses on the similarity of the prevalent features of the
competing trademarks that might cause confusion
What is the holistic test?
The courts are required to consider the entirety of the marks as
applied to the products, including the labels and packaging, in
determining confusing similarity
12. Nice Classification - International Classification of Goods
and Services also known as the Nice Classification was
established by the Nice Agreement (1957), is a system of
classifying goods and services for the purpose of
registering trademarks. It is updated every five years and its
latest 11th version of the system groups products into 45 classes
(classes 1-34 include goods and classes 35-45 embrace
services), and allows users seeking to trademark a good or
service to choose from these classes as appropriate. Since the
system is recognized in numerous countries, this makes
applying for trademarks internationally a more streamlined
process. The classification system is specified by the World
Intellectual Property Organization (WIPO).
13. Grounds for non-registrability
Rule 101. Registrability. A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous matter, or
matter which may disparage or falsely suggest a connection
with persons, living or dead, institutions, beliefs, or national
symbols, or bring them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any foreign
nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a
particular living individual except by his written consent, or the
name, signature, or portrait of a deceased President of the
Philippines, during the life of his widow, if any, except by
written consent of the widow;
(d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in
respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely
to deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent
authority of the Philippines to be well-known internationally
and in the Philippines, whether or not it is registered here, as
being already the mark of a person other than the applicant for
registration, and used for identical or similar goods or
services; Provided, That in determining whether a mark is well-
known, account shall be taken of the knowledge of the relevant
sector of the public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a
result of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with
the preceding paragraph, which is registered in the Philippines
with respect to goods or services which are not similar to those
with respect to which registration is applied for: Provided, That
use of the mark in relation to those goods or services would
indicate a connection between those goods or services, and the
owner of the registered mark: Provided, further, That the
interests of the owner of the registered mark are likely to be
damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services. Geographical indications are indications which
identify a good as originating in the territory of a country which
is a member of, or a region or ‘.’ in that territory, where a given
quality, reputation or other characteristic of the good is
essentially attributable to its geographical origin.
(h) Consists exclusively of signs that are generic for the goods
or services that they seek to identify;
(i) Consists exclusively of signs or of indications that have
become customary or usual to designate the goods or services
in everyday language or in bona-fide and established trade
practice;
(j) Consists exclusively of signs or of indications that may serve
in trade to designate the kind, quality, quantity, intended
purpose, value, geographical origin, time or production of the
goods or rendering of the services, or other characteristics of the
goods or services;
(k) Consists of shapes that may be necessitated by technical
factors or by the nature of the goods themselves or factors that
affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
As regards signs or devices mentioned in paragraphs (j), (k),
and (l), nothing shall prevent the registration of any such sign
or device which has become distinctive in relation to the goods
or services for which registration is requested as a result of the
use that has been made of it in commerce in the
Philippines. The Office may accept as prima facie evidence that
the mark has become distinctive, as used in connection with the
applicant’s goods or services in commerce, proof of
substantially exclusive and continuous use thereof by the
applicant in commerce in the Philippines for five (5) years
before the date on which the claim of distinctiveness is made.
The nature of the goods or services to which the mark is applied
will not constitute an obstacle to registration.
14. Abandonment
 If an applicant fails to respond within the
period given counted from the mailing date of an action of the
Examiner, the application shall be deemed abandoned as of the
day immediately following the last day of the aforesaid period.
 A request to revive an abandoned application must be
accompanied by a statement of the causes of the delay in
submitting the complete response and by the proposed
response, unless the same has been previously filed.
 Any application not revived within the specified time will be
deemed forfeited upon the expiration of the 3-month revival
period.
15. Registration of rights
A. REQUIREMENTS
Section 124. Requirements of Application. - 124.1. The
application for the registration of the mark shall be in Filipino
or in English and shall contain the following:
(a) A request for registration;
(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a national or
where he has domicile; and the name of a State in which the
applicant has a real and effective industrial or commercial
establishment, if any;
(d) Where the applicant is a juridical entity, the law under which
it is organized and existing;
(e) The appointment of an agent or representative, if the
applicant is not domiciled in the Philippines;
(f) Where the applicant claims the priority of an earlier
application, an indication of:
(i) The name of the State with whose national office
the earlier application was filed or if filed with an
office other than a national office, the name of that
office,
ii) The date on which the earlier application was filed,
and
iii) Where available, the application number of the
earlier application;
(g) Where the applicant claims color as
a distinctive feature of the mark, a statement to that effect as
well as the name or names of the color or colors claimed and an
indication, in respect of each color, of the principal parts of the
mark which are in that color;
(h) Where the mark is a three- dimensional mark, a statement to
that effect;
(i) One or more reproductions of the mark, as prescribed in the
Regulations; (j) A transliteration or translation of the mark or of
some parts of the mark, as prescribed in the Regulations;
(k) The names of the goods or services for which the registration
is sought, grouped according to the classes of the Nice
Classification, together with the number of the class of the said
Classification to which each group of goods or services
belongs; and
(l) A signature by, or other self- identification of, the applicant
or his representative.
C. CONTENTS OF DECLARATION OF USE
 The declaration shall be:
o Under oath;
o Must refer to only one application or registration;
o Must contain the name and address of the applicant or
registrant declaring that the mark is in actual use in the
Philippines;
o List the goods where the mark is attached;
o List the name/s and the exact locations of the outlet/s where
the products are being sold or where the services are being
rendered;
o Recite sufficient facts to show that the mark described in the
application or registration is being actually used in the
Philippines;
o Specifying the nature of such use.
D. CLAIM OF COLOR
Where color is a material feature of the mark as used or
intended to be used, the color/s employed may be actually
reproduced in the drawings and facsimiles.
Otherwise, a statement must be made giving the name/s of the
color/s claimed indicating the principal part/s of the mark which
are in such color/s.
Color can function as a trademark if it is used on the goods in
the manner of a trademark and if the purchasing public
perceives it as identifying and distinguishing the goods or
services on which it is used and indicating their sources.
E. APPOINTMENT OF AGENT
The appointment of an agent or representative, if the applicant
is not domiciled in the Philippines is necessary.
G. RIGHTS OF REGISTRANT
Section 147. Rights Conferred. - 147.1. The owner of a
registered mark shall have 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 which are identical or similar to those in respect of
which the trademark is registered where such use would result
in a likelihood of confusion. In case of the use of an identical
sign for identical goods or services, a likelihood of confusion
shall be presumed.
147.2. The exclusive right of the owner of a well- known mark
defined in Subsection 123.1(e) which is registered in the
Philippines, shall extend to goods and services which are not
similar to those in respect of which the mark is registered:
Provided, That use of that mark in relation to those goods or
services would indicate a connection between those goods or
services and the owner of the registered mark: Provided further,
That the interests of the owner of the registered mark are likely
to be damaged by such use. (n)
Section 148. Use of Indications by Third Parties for Purposes
Other than those for which the Mark is Used. - Registration of
the mark shall not
confer on the registered owner the right to preclude third parties
from using bona fide their names, addresses, pseudonyms, a
geographical name, or exact indications concerning the kind,
quality, quantity, destination, value, place of origin, or time of
production or of supply, of their goods or services: Provided,
That such use is confined to the purposes of mere identification
or information and cannot mislead
the public as to the source of the goods or services. (n)
Section 149. Assignment and Transfer of Application and
Registration. - 149.1. An application for registration of a mark,
or its registration, may be assigned or transferred with or
without the transfer of the business using the mark. (n)
149.2. Such assignment or transfer shall, however, be null and
void if it is liable to mislead the public, particularly as regards
the nature, source, manufacturing process, characteristics, or
suitability for their purpose, of the goods or services to which
the mark is applied.
149.3. The assignment of the application for registration of a
mark, or of its registration, shall
be in writing and require the signatures of the contracting
parties. Transfers by mergers or other forms of succession may
be made by any document supporting such transfer.
149.4. Assignments and transfers of registrations of marks shall
be recorded at the Office on payment of the prescribed fee;
assignment and transfers of applications for registration shall,
on payment of the same fee, be provisionally recorded, and the
mark, when registered, shall be in the name of the assignee or
transferee. 149.5. Assignments and transfers shall have no
effect against third parties until they are recorded at the Office.
(Sec. 31, R.A. No. 166a)
H. PERIOD OF PROTECTION
Sec. 145. Duration. - A certificate of registration shall remain
in force for ten (10) years: Provided, That the registrant shall
file a declaration of actual use and evidence to that effect, or
shall show valid reasons based on the existence of obstacles to
such use, as prescribed by the Regulations, within one (1) year
from the fifth anniversary of the date of the registration of the
mark.
16. OPPOSING AN APPLICATION
TWO WAYS: Opposition and Petition for Cancellation
-under section 134, any person who believes
that he would be damaged by the registration of a mark may,
upon payment of the required fee and within 30 days after the
publication, file with the office an opposition to the application.
-section 133, subjects an application for registration of a mark
to certain conditions of register ability, including the issue of
confusing similarity with other registered trademarks
Period of filing the opposition
within thirty (30) days from the receipt of the IPO gazette which
can be extended for another 30 day provided for good cause
shown and upon payment of required surcharge
Procedure for filing an opposition
 file an initiatory pleading, a verified opposition
 jurisdiction to hear and decide inter parties cases
regarding opposition of trademark registration is
within the Intellectual property office particularly the
burau of legal affairs
 after opposition, a verified answer is filed, then the
reply and rejoinder
 preliminary conference which is similar to pre-trial
usually position papers are filed and submitted for decision
The IPO is not only the quasi-judicial agency that anyone who
feels aggrieved from the decision of officer is the IPO may file
a motion for reconsideration
Anyone who feels aggrieved from the resolution of the MR can
appeal to the director general of IPO
Anyone who feels aggrieved from the decision of the director
general may appeal to the Court of appeals via petition for
review under rule 43
The decision of the IPO is immediately executory. So there is a
need for a temporary restraining order or an injunction
Appeal to the director general
- the decision or order of the director of the committee of
three shall become final and executory 30 days after
receipt of a copy thereof by the appellant or appellants
unless, within the said period, a motion for reconsideration
is filed with the director or an appeal has been perfected
provided that only 1 motion for reconsideration shall be
allowed, if denied the appellant or appellants has or have
the balance of the period prescribed above within which to
file the appeal
- the decision or order of the director general shall be final
and executory 15 days after receipt of a copy thereof by
parties unless appealed to the court of appeals in
accordance with the rules of court
- appeal shall not stay the decision
- no motion for reconsideration for order or decision of
director general will be allowed
17. CANCELLATION OF REGISTRATION
Sec. 151. Cancellation. -
151.1. A petition to cancel a registration of a mark under this
Act may be filed with the Bureau of Legal Affairs by any person
who believes that he is or will be damaged by the registration
of a mark under this Act as follows:
 (a) Within five (5) years from the date of the
registration of the mark under this Act.
(b) At any time, if the registered mark becomes the
generic name for the goods or services, or a portion
thereof, for which it is registered, or has been
abandoned, or its registration was obtained
fraudulently or contrary to the provisions of this Act,
or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the
source of the goods or services on or in connection
with which the mark is used. If the registered mark
becomes the generic name for less than all of the goods
or services for which it is registered, a petition to
cancel the registration for only those goods or services
may be filed. A registered mark shall not be deemed to
be the generic name of goods or services solely
because such mark is also used as a name of or to
identify a unique product or service. The primary
significance of the registered mark to the relevant
public rather than purchaser motivation shall be the
test for determining whether the registered mark has
become the generic name of goods or services on or in
connection with which it has been used.
(c) At any time, if the registered owner of the mark
without legitimate reason fails to use the mark within
the Philippines, or to cause it to be used in the
Philippines by virtue of a license during an
uninterrupted period of three (3) years or longer.
What initiatory pleading?
A petition for cancellation, file it with the bureau of legal affairs
of IPO. The RTC has concurrent jurisdiction. So, whoever takes
the jurisdiction first excludes the rest
What is the measure of damages in case of unfair competition
or if there is infringement? Can a person file a petition for
cancellation if he did not oppose the application?
Yes, but it differs if it is an inter partes case in one hand and
infringement or unfair competition in the other.
In terms of jurisdiction, inter partes case is filed in IPO, while
infringement or unfair competition, file it in the RTC.
What is the nature of the proceedings?
Inter partes cases are administrative in character while unfair
competition and infringement are judicial in character
Infringement and unfair competition can be filed as a civil case
or criminal case
What is the proof required for inter partes cases?
Substantial evidence
What is the proof required for infringement or unfair
competition?
Civil case: preponderance of evidence Criminal case: proof
beyond reasonable doubt
18. INFRINGEMENT AND UNFAIR COMPETITION
TRADEMARK INFRINGMENT
Section 155. Remedies; Infringement. - Any person who shall,
without the consent of the owner of the registered mark:
155.1. Use in commerce any reproduction, counterfeit,
copy, or colorable imitation of a registered mark or the
same container or a dominant feature thereof in
connection with the sale, offering for sale, distribution,
advertising of any goods or services including other
preparatory steps necessary to carry out the sale of any
goods or services on or in connection with which such
use is likely to cause confusion, or to cause mistake, or
to deceive; or
155.2. Reproduce, counterfeit, copy or colorably
imitate a registered mark or a dominant feature thereof
and apply such reproduction, counterfeit, copy or
colorable imitation to labels, signs, prints, packages,
wrappers, receptacles or advertisements intended to be
used in commerce upon or in connection with the sale,
offering for sale, distribution, or advertising of goods
or services on or in connection with which such use is
likely to cause confusion, or to cause mistake, or to
deceive, shall be liable in a civil action for
infringement by the registrant for the remedies
hereinafter set forth: Provided, That the infringement
takes place at the moment any of the acts stated in
Subsection 155.1 or this subsection are committed
regardless of whether there is actual sale of goods or
services using the infringing material.
ELEMENTS OF TRADEMARK INFRINGMENT
 Validity of plaintiff’s mark
 Plaintiff’s ownership of the mark
 The use of the mark or its colorable imitation by the
alleged infringer results in “likelihood of confusion”
UNFAIR COMPETITION
-consist in passing off or attempting to pass off upon the public
the goods or business in such a manner that there is either an
express or implied representation to that effect
ELEMENTS OF UNFAIR COMPETITION
1. Person complained of shall have given to his goods the
general appearance of the goods of the complaining party, either
in the wrapping of the packages in which they are contained, or
the devices or words thereon or in any other feature of their
appearance which would be likely to influence purchasers to
believe that the goods offered are those of the complaining party
2. That the person complained of should have clothed the goods
with such appearance for the purpose of deceiving the public
and defrauding the complaining party of his legitimate trade
Confusion as to goods – in which event the ordinarily prudent
purchaser would be induced to purchase one product in the
belief that he was purchasing the other
Confusion as to business – though the goods of the parties are
different, the infringer’s product is such as might reasonably be
assumed to originate with the plaintiff, and the public would
then be deceived either into that belief or into the belief that
there is some connection between the plaintiff and defendant
which, in fact, does not exist.
What is the dominancy test?
The courts give greater weight to the similarity of the
appearance of the product arising from the adoption of the
dominant features of the registered mark, disregarding minor
differences It focuses on the similarity of the prevalent features
of the competing trademarks that might cause confusion
What is the holistic test?
The courts are required to consider the entirety of the marks as
applied to the products, including the labels and packaging, in
determining confusing similarity
IMITATION OF PRODUCT FEATURES
- imitating product features is a more insidious form of unfair
competition where the unauthorized user copies the features of
the product that attract consumers while employing a
distinguishable mark
19. ENFORCEMENT OF RIGHTS AND LITIGATION

If there are already infringement and unfair competition,

what will be the remedies available for the aggrieved party?
 Search warrant in a criminal case
 Search and seizure order in civil cases for unfair
competition and infringement
 Application for TRO and injunction
 damages

What is a search warrant?

Section 1. Search warrant defined. — A search warrant is an

order in writing issued in the name of the People of the
Philippines, signed by a judge and directed to a peace officer,
commanding him to search for personal property described
therein and bring it before the court.

What are the requirements of a valid search warrant?

The requisites for the issuance of a search warrant are:

1. probable cause is present;
2. such probable cause must be determined personally
by the judge;
3. the judge must examine, in writing and under oath or
affirmation, the complainant and the witnesses he or
she may produce;
4. the applicant and the witnesses testify on the facts
personally known to them; and
5. the warrant specifically describes the place to be
searched and the things to be seized.

What is probable cause?

probable cause means such facts and circumstances which

would lead a reasonable discreet and prudent man to believe
that an offense has been committed and that the objects sought
in connection with the offense are in the place sought to be
searched.

Life time of a search warrant?

Section 10. Validity of search warrant. — A search warrant

shall be valid for ten (10) days from its date. Thereafter it shall
be void.

Damages, how do we quantify damages?

 Reasonable profit which the complaining party would
have made, had the defendant not infringed his said
rights
 The profit which the defendant actually made out of
the infringement
 Reasonable percentage based upon the amount of
gross sales of the defendant of the value of the services
in connection with which the mark or trade name was
issued in the infringement of the rights of the
complaining party

Temporary restraining order and a writ preliminary

injunction
How many days is a TRO good for?
20 days from issuance

If issued by CA – 60 days
If issued by SC – it is as good as a writ of preliminary injunction