3B 2019-2020

StratPlan for IPL

SCENARIO:
AUGUST 20, 2019
Last night you dreamt for a beautiful TM
for your sari-sari store. Your dream was
CREATION & ACQUISITION so vivid that you know the font style,
color and the size of the mark. Next
MODES OF ACQUIRING OWNERSHIP morning, at your breakfast table, you
1. Donation drew the TM with its style, color on a
2. Occupation piece of bond paper.
3. Law
4. Tradition Q: When you are dreaming, did you
5. Prescription acquire the TM?
6. Succession S1: YES, one of the modes of acquiring
7. Intellectual Creation ownership is intellectual creation, therefore,
the moment I dreamt of that and
Q: What is intellectual creation? remembered such mark, and use it as a TM
A: refers to the protection of creations of the for my sari-sari store, it can be considered as
mind, which have both a moral and a my TM.
commercial value. S2: NO, before she acquires such TM, she
must first file an application
Q: RA No. 8293, introduced a particular Q: This morning you drew it, did you
system for TM and patent registration. acquire ownership of such TM at that
What is this system? point?
A: First to file system S1: YES, as long as I’m the one who first
drew it, it can be considered as mine.
Q: What is the difference between first to However, if I did not use such mark and
file system and first to use system? someone else registered it ahead of me, then
that person may considered as the owner.
FIRST TO FILE FIRST TO USE
S2: NO
Whoever is the first Whoever is the first
Q: If she went to IPO this morning, she
to file an to use the
filed an application for registration of
application enjoys trademark is
what she drew, can she do that?
preference to have entitled to
S2: YES
his application registration
Q: No need to use it first on a particular
examined ahead of
product or occasion before she can file an
any identical or
application?
similar marks
S2: NO, because that was has been repealed
RA No. 8293 Trademark Act
by Intellectual Property Code
Let see how the first to file system would Q: So, she filed an application this
play a role of the acquisition of ownership morning, at that point, did she acquire
over a TM ownership over that mark?

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S2: at that point sir, YES
Q: Before going to IPO, when she had
nothing except that drawing on the piece
of paper, did she acquire ownership over
the TM?
S2: NOT YET
Justice: The registration process is a
*inaudible* process, it is not as simple as
filing an application and then you get it
right away. It is not like a driver’s license,
that you file an application for renewal an
hour before and get the driver’s license. For
TM, it would take months for you to
prosecute the application.
PROCESS OF REGISTRATION
1. Conceptualization
2. Drawing
3. Application
4. Processing
5. Publication
6. Issuance of Cert of Registration
Q: If you acquire ownership at this point,
Conceptualization, what is the use of
going through the remainder of the
process?
S1: For the legal aspect of ownership, since
registration does not confer ownership, it is
only a prima facie evidence of ownership. In
conceptualization, there is already
ownership but for your ownership be
recognized legally, then such process shall
be followed.
Q: When your ownership become
exclusive or absolute?
S1: Upon issuance of Cert of Registration
Q: Do you agree?
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StratPlan for IPL
A: NO sir.
Q: Did she acquire ownership, at the
breakfast table, over the drawing or TM?
A: She did not acquire ownership, yet
Q: Did she acquire anything, at that
point, over the TM or anything else?
A: YES, over that drawing or intellectual
creation
Q: Is that already a TM, at that point?
A: NOT YET
TRADEMARK
Q: What is a Trademark?
A: TRADEMARK means any visible sign
capable of distinguishing goods and services
of an enterprise and shall include a stamped
or marked container goods.
Justice: Note that the definition mentioned
the words “visible sign” speaks of the 5
senses that we have. Particularly, what is
important is the sense of sight, it should be a
visual sign.
Q: Someone who is visually impaired or
no sense of sight or blind, is he precluded
from perceiving a TM?
A: NO. Although the definition uses the
words “visual sign” it is nothing that
prevents the representation of a visual sign
from itself being a TM, so, it can be
perceived by touch as a means of acquiring
perception of a visual sign, then it qualifies
as a TM.
Q: When do you acquire ownership over
a TM?
S2: When the TM has been registered.

Q: Is it at the start of registration, which
upon filing of an application or upon
issuance of Cert of Registration?
S2: Upon issuance of Cert of Registration
Q: Can we register odor or smell as a
trademark?
A: No
Q: Can we register sounds or particular
pitch as a trademark?
A: No
Q: Can we register shape as a
trademark?
A: No
Q: How about particular color?
A: NO
Q: Can we register taste as a trademark?
A: No
Q: Why all of these are not registrable as
trademark?
A: Because it is not a visible sign, one which
is perceive by the sense of sight
Justice: Shape per se cannot be registered
as a TM but as a component of a TM it can
be registered, same as color.
Q: Difference between tradename, service
mark and service name?
Sec. 121.1 "Mark" means 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
Sec. 121.3. "Trade name" means the name
or designation identifying or
distinguishing an enterprise
Justice: Tradename is not registrable
unless it is part of a Trademark.
Functions and objectives of a TM
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StratPlan for IPL
1. Economic Function - serve as an
essential means of distinguishing the
products of one manufacturer or dealers
from those of the others
2. Source-indicating Function – to
indicate the source or origin of the
goods on which it is used
3. Guarantee Function – to guarantee that
the product to which it is affixed comes
up to a certain standard of quality
4. Advertisement Function – through
advertisement in the broadcast and print
media, the owner of the trademark is able
to establish a nexus between its
trademarked products and the public in
regions where the owner does not itself
manufacture or sell its own products.
Q: What is TRIPS?
A: Trade-Related Aspects of Intellectual
Property Rights – is a minimum standards
agreement, which allows Members to
provide more extensive protection of IP if
they so wish.
Q: What is national treatment?
A: Forbids discrimination between a
Member’s own nationals and the nationals
of other Members (Filipino v. Non-Filipino)
Q: What is Most-favored-nation-
treatment?
A: Forbids discrimination between the
nationals of other Members (Non-Filipino v.
Non-Filipino)
NOTE: You cannot file an application for
registration in World Intellectual Property
Organization.
Q: A descriptive mark, is it registrable?
General rule: NO
Sec. 123.1. A mark cannot be registered if
it: (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;
XPN: if it acquired secondary meaning
Q: What is secondary meaning?
A: A word or phrase originally incapable of
exclusive appropriation with reference to an
article of the market, because geographically
or otherwise deceptive, might nevertheless
have been used so long and so exclusively
by one producer with reference to his article
that, in that trade and to that branch of the
purchasing public, the word or phrase has
come to mean that the article was his
product.
Q: How about generic marks?
General Rule: NO
Sec. 123.1. A mark cannot be registered if
it: (h) Consists exclusively of signs that
are generic for the goods or services that
they seek to identify;
XPN: the applicant must submit a disclaimer
to that generic word
When a generic term is made part of an
otherwise registrable mark, it must be
disclaimed before the composite mark may
be registered. The basic purpose of
disclaimers is to make of record that a
significant element of a composite mark is
not being exclusively appropriated by itself
apart from the composite.
After filing the application for trademark
registration, the IPO will communicate with
the applicant and tell him what are the
objectionable features of his trademark
application. Most often than not, he will be
required to disclaim the right to exclusively
use generic terms which form part of his
trademark.
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Geographical indications are indications
which identify a good as originating in the
territory of a Member, or a region or locality
in that territory, where a given quality,
reputation or other characteristic of the
goods is essentially attributable to its
geographical origin. (not registrable)
In case of Baguio oil, it was registered
because it acquired secondary meaning
even prior to its registration.
Arbitrary or Fanciful mark is a word or
picture that is in the common linguistic use
but which, when used in connection with
certain goods or services, neither suggests
nor describes any quality or characteristic of
those particular goods or services.
(registrable) e.g Google
Suggestive mark is a word, picture or other
symbol that suggests, but does not directly
describe, something about the goods or
services in connection with which it is used
as a mark. (registrable)
Q: Are you familiar with spoofs, or shirt
with representation of starbucks logo and
it has a name “starbuko”, are those
registrable as TM?
A: NO. Look at the purpose of the TM, it is
to distinguished one product from another.
In this case, it was not intended to
distinguish a product from another.
Q: Can a name of a person, his signature
or his portrait use as a TM?
A: YES
Q: What are the conditions before it is
allowed to be registered?
A: There must be a written consent from that
person
Q: What kind of consent? Consent to use
or consent to register?
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StratPlan for IPL

A: Both, consent to use is not enough to

secure your ownership over that TM, hence,
you need to register it.

Q: How about national symbols?

Sec 123.1. 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;

INTERNATIONAL WELL-KNOWN
BRAND

NOTE: In case of Internationally well-

known brand, whether or not it is registered
here in the Philippines, it acquires
protection and cannot be used in the
Philippines for the SAME goods or services.
However, if it is registered here in the
Philippines then it can be protected not just
for the same goods or services but for all
other goods or services even if unrelated.

RIGHT OF PRIORITY

You acquire benefit of priority at the time

you file an application for registration.

The right of priority means that, on the basis

of a regular application for an IP right filed
by a given applicant in one of the member
countries, the same applicant may, apply for
protection in all other member countries.
These later applications will then be
regarded as if they have been filed on the
same day as the earliest application. Hence,
these later applications enjoy a priority
status with respect to all applications
relating to the same IP filed after the date of
the first application.

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