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I. OVERVIEW
A. Constitutional Provision
B. Civil Code
C. Definition of Intellectual Property
a. Sec. 4, R.A. 8293
Intellectual property rights consist of:
a) Copyright and related rights
b) Trademarks and service marks
c) Geographic indications
d) Industrial designs
e) Patents
f) Lay-out designs (topographies) of
integrated circuits; and
g) Protection of undisclosed information
b. Difference between copyright,
trademark and patent
B. Sources of Rights
Case Doctrine: Kho vs Court of Appeals
Trademark, copyright and patents are different intellectual
property rights that cannot be interchanged with one another. 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. 12 In relation thereto,
a trade name means the name or designation identifying or
distinguishing an enterprise.13 Meanwhile, the scope of a copyright is
confined to literary and artistic works which are original intellectual
creations in the literary and artistic domain protected from the
moment of their creation.14 Patentable inventions, on the other hand,
refer to any technical solution of a problem in any field of human
activity which is new, involves an inventive step and is industrially
applicable.15
II. LAW ON TRADEMARKS, TRADENAMES AND
SEVICE MARKS
A. Definition
a. Sec. 121, R. A. 8293
121.1 A 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 the goods.
121.2 Collective mark is any visible sign
designated as such in the application for
registration and capable of distinguishing the
origin or any other common characteristic,
including the quality of goods or services of
different enterprises which use the sign
under the control of the registered owner of
the collective mark.
Case Doctrine: Distilleria Washington vs. CA
A trademark refers to a word, name, symbol, emblem, sign
or device or any combination thereof adopted and used by a
merchant to identify, and distinguish from others, his goods of
commerce. It is basically an intellectual creation that is
susceptible to ownership and gives rise to its own elements of jus
posidendi, jus utendi, jus fruendi, jus disponendi, and jus
abutendi, along with the applicable jus lex comprising that
ownership. The incorporeal right, however, is distinct from the
property in the material object subject to it. Ownership in one
does not necessarily vest ownership in the other. Thus, the
transfer or assignment of the intellectual property will not
necessarily constitute a conveyance of the thing it covers, nor
would a conveyance of the latter imply the transfer or assignment
of the intellectual right.
a. Intellectual Property Code
b. Paris Convention for the Protection of
Intellectual Property
i. National Treatment Principle
Juristic and natural persons who are
either national of or domiciled in a state
party to the convention shall, as regards
the protection of industrial property,
enjoy in all other countries of the Union,
the advantages that their respective laws
grant to nationals.
ii. Right of Priority: Sec. 131, R.A. 8293
An applicant from one contracting state
shall be able to use its first filing date in
one of the contracting states as the
effective filing date in another
contracting state, provided that the
applicant or his successor in title files a
subsequent application within 6 months
for industrial designs and trademarks or
12 months for patents and utility models
from the first filing.
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C. Functions of Trademarks
Case Doctrine: Ang vs. Teodoro
The function of a trade-mark is to point distinctively, either by
its own meaning or by association, to the origin or ownership of
the wares to which it is applied. "Ang Tibay," as used by Toribio to
designate his wares, had exactly performed that function for 22
years before the Ang adopted it as a trade-mark in her own
business. Ang Tibay shoes and slippers are, by association, known
throughout the Philippines as products of the Ang Tibay factory
owned and operated by the respondent Toribio Teodoro.
Case Doctrine: Etepha vs Director of Patents
The object of a trademark is to (1) point out distinctly the origin
or ownership of the articles to which it is affixed, (2) to secure to
him who has been instrumental in bringing into the market a
superior article or merchandise the fruit of his industry and skill,
and to prevent fraud and imposition.
Case Doctrine: Mirpuri vs CA
Modern authorities on trademark law view trademarks as
performing three distinct functions:
(1) They indicate origin or ownership of the articles to which
they are attached;
(2) They guarantee that those articles come up to a certain
standard of quality;
(3) They advertise the articles they symbolize
D. How are marks acquired?
a. Section 122, R.A. 8293
How marks are acquired. The rights in a
mark shall be acquired through registration
made validly in accordance with the
provisions of this code.
 Case Doctrine: Unno Commercial vs General
Milling
The right to register trademark is based on
ownership. The term owner does not include the importer of the
goods bearing the trademark, trade name, service mark, or other
mark of ownership, unless such importer is actually the owner
thereof in the country from which the goods are imported. A local
importer, however, may make application for the registration of a
foreign trademark, trade name or service mark if he is duly
authorized by the actual owner of the name or other mark of
ownership. Where the applicant's alleged ownership is not shown
in any notarial document and the applicant appears to be merely
an importer or distributor of the merchandise covered by said
trademark, its application cannot be granted.
Ownership of a trademark is not acquired by the
mere fact of registration alone. Registration merely creates a
prima facie presumption of the validity of the registration , of the
registrant's ownership of the trademark and of the exclusive right
to the use thereof. Registration does not perfect a trademark
right. Prior use by one will controvert a claim of legal
appropriation, by subsequent users.
 Case Doctrine: Kabushi Kaisha Isetan vs IAC
Actual use in commerce in the Philippines is a pre-requisite to
the acquisition of ownership over a trademark or a trade name.
Adoption alone of a trademark would not give exclusive right
thereto. Such right grows out of their actual use. Adoption is not
use. For trademark is a creation of use. The underlying reason for
all these is that purchasers have come to understand the mark as
indicating the origin of the wares. Flowing from this is the trader's
right to protection in the trade he has built up and the goodwill he
has accumulated from use of the trademark.
In fact, a prior registrant cannot claim exclusive use of the
trademark unless it uses it in commerce.
The Trademark Law is very clear. It requires actual commercial
use of the mark prior to its registration. "Samples" are not for
sale and therefore, the fact of exporting them to the Philippines
cannot be considered to be equivalent to the "use" contemplated
by the law.
 Case Doctrine: Philip Morris vs. CA & Philip
Morris vs Fortune Tobacco
Contrary to what petitioners suggest, the registration of
trademark cannot be deemed conclusive as to the actual use of
such trademark in local commerce. As it were, registration does
not confer upon the registrant an absolute right to the registered
mark. The certificate of registration merely constitutes prima facie
evidence that the registrant is the owner of the registered mark.
Evidence of non-usage of the mark rebuts the presumption of
trademark ownership, as what happened here when petitioners
no less admitted not doing business in this country.
Most importantly, we stress that registration in the Philippines of
trademarks does not ipso facto convey an absolute right or
exclusive ownership thereof… trademark is a creation of use and,
therefore, actual use is a pre-requisite to exclusive ownership;
registration is only an administrative confirmation of the
existence of the right of ownership of the mark, but does not
perfect such right; actual use thereof is the perfecting
ingredient.
The registration of a trademark unaccompanied by actual
use thereof in the country accords the registrant only the
standing to sue for infringement in Philippine courts.
Entitlement to protection of such trademark in the country is
entirely a different matter.
 Case Doctrine: Shangrila International
vs Developers Group
Ownership of a mark or trade name may be acquired not
necessarily by registration but by adoption and use in trade or
commerce. As between actual use of a mark without registration,
and registration of the mark without actual use thereof, the
former prevails over the latter. This is because actual use in
commerce or business is a pre-requisite to the acquisition of the
right of ownership.
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While the present law on trademarks has dispensed with the
requirement of prior actual use at the time of registration, the law
in force at the time of registration must be applied, and
thereunder it was held that as a condition precedent to
registration of trademark, trade name or service mark, the same
must have been in actual use in the Philippines before the filing of
the application for registration. Trademark is a creation of use and
therefore actual use is a pre-requisite to exclusive ownership and
its registration with the Philippine Patent Office is a mere
administrative confirmation of the existence of such right.
By itself, registration is not a mode of acquiring ownership.
When the applicant is not the owner of the trademark being
applied for, he has no right to apply for registration of the same.
Registration merely creates a prima facie presumption of the
validity of the registration, of the registrant's ownership of the
trademark and of the exclusive right to the use thereof. Such
presumption is rebuttable and must give way to evidence to the
contrary.
The new Intellectual Property Code (IPC) undoubtedly shows the
firm resolve of the Philippines to observe and follow the Paris
Convention by incorporating the relevant portions of the
Convention such that persons who may question a mark (that is,
oppose registration, petition for the cancellation thereof, sue for
unfair competition) include persons whose internationally
wellknown mark, whether or not registered, is identical with or
confusingly similar to or constitutes a translation of a mark that is
sought to be registered or is actually registered.
 Case Doctrine: E.Y. Industrial vs Shen Dar
RA 8293 espouses the "first-to-file" rule as stated under Sec.
123.1(d) which states:
Section 123. Registrability. - 123.1. A mark cannot be registered if
it:
xxxx
(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:
Such ownership constitutes sufficient evidence to oppose the
registration of a mark.
Sec. 134 of the IP Code provides that "any person who believes
that he would be damaged by the registration of a mark x x x"
may file an opposition to the application. The term "any person"
encompasses the true owner of the mark¾the prior and
continuous user.
Notably, the Court has ruled that the prior and continuous use of
a mark may even overcome the presumptive ownership of the
registrant and be held as the owner of the mark. As aptly stated
by the Court in Shangri-la International Hotel Management, Ltd. v.
Developers Group of Companies, Inc.:37
Registration, without more, does not confer upon the registrant
an absolute right to the registered mark. The certificate of
registration is merely a prima facie proof that the registrant is the
owner of the registered mark or trade name. Evidence of prior
and continuous use of the mark or trade name by another can
overcome the presumptive ownership of the registrant and may
very well entitle the former to be declared owner in an
appropriate case.
 Case Doctrine: Birkenstock vs Philippine Shoe
Expo
It must be emphasized that registration of a trademark, by itself,
is not a mode of acquiring ownership.1âwphi1 If the applicant is
not the owner of the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie
presumption of the validity of the registration, of the registrant’s
ownership of the trademark, and of the exclusive right to the use
thereof. Such presumption, just like the presumptive regularity in
the performance of official functions, is rebuttable and must give
way to evidence to the contrary.41
Clearly, it is not the application or registration of a trademark that
vests ownership thereof, but it is the ownership of a trademark
that confers the right to register the same. A trademark is an
industrial property over which its owner is entitled to property
rights which cannot be appropriated by unscrupulous entities
that, in one way or another, happen to register such trademark
ahead of its true and lawful owner. The presumption of ownership
accorded to a registrant must then necessarily yield to superior
evidence of actual and real ownership of a trademark.

(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. (Emphasis supplied.)

Under this provision, the registration of a mark is prevented with

the filing of an earlier application for registration. This must not,
however, be interpreted to mean that ownership should be based
upon an earlier filing date. While RA 8293 removed the previous
requirement of proof of actual use prior to the filing of an
application for registration of a mark, proof of prior and
continuous use is necessary to establish ownership of a mark.
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E. Registrability
a.Non-Registrable Marks
Section 123, R.A. 8293. Registrability 123.1. A
mark cannot be registered if it:
a) Consists of immoral, deceptive or scandalous
matter or matter which falsely suggest a connection
with persons, living or dead, institutions, beliefs or
national symbols or bring them into contempt or
disrepute;
b) Consists of flag or coat of arms or other
insignia of the Philippines or any political subdivisions,
or any foreign nation or any simulation thereof;
c) Consists of a name, portrait or signature
identifying in particular a living individual except by his
written consent, or the name, signature or portrait of a
deceased President of the Philippines during the
lifetime 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;
ii) closely related goods or services;
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 a 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 the 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 as 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 if applied for: Provided,
That the use of the mark in relation to those goods or
services would indicate a connection between those
goods and the owner of the registered mark: Provided
further, That the interests of the owner of the
registered mark are likely to be damages 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; (DECEPTIVE MARKS)
h) Consists exclusively of signs that are generic
for the goods that they seek to identify; (GENERIC
MARKS)
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 a bona fide
and established trade practice; (CUSTOMARY MARKS;
GENERACIZED)
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 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;
123.2. As regards signs or devices mentioned in
par. j (designate kind quality, quantity), k ( shapes) l
(color), nothing shall prevent the registration of any
such sign or device which has become distinctive in
relation to the goods for which registration is requested
as a result of the use that have been made of it in the
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commerce in the Philippines. The Office may accept
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 5 years before the date
on which the claim of distinctiveness is made.
123.3 Nature of the goods to which the mark is
applied will not constitute an obstacle to registration.
CONCEPTS:
Tests of determining similarity and likelihood
of confusion:
a) Holistic Test: Necessitates a consideration of
the entirety of the marks as applied to the products
including the labels, packaging in determining
confusing similarity. The discerning eye of the observer
must not only focus on predominant words but also on
other features.
b) Dominancy Test: Focuses on the similarity of
the prevalent or dominant features of the competing
trademarks that might cause confusion, mistake or
deception in the mind of the purchasing public;
duplication or imitation is not necessary; only an effort
to imitate is necessary; The aural and visual
impressions on the buyer are taken into consideration.
A person who infringes a trademark does not
normally copy out but only makes colorable changes,
employing enough points of similarity to confuse the
public and enough points of differences to confuse the
courts.
 Case Doctrine: Fredco vs President & Fellows
of Harvard
- Marks which falsely suggest a connection
with an institution
- Criteria for determining whether a mark is
well-known: duration, extent and
geographical area of any use of the mark;
any promotion or advertising; the market
share in the Philippines, degree of inherent
distinction, quality-image or reputation,
extent to which the mark has been
registered in the world, exclusivity of
registration attained by the mark in the
world, exclusivity of use in the world,
commercial value, record of successful
protection etc.
 Case Doctrine: Esso vs CA
Theory of Related Goods:
Non-competing but related such that it brings
confusion as to origin.
The products in this case are obviously different
from each other and no iota of similitude.
Likelihood of confusion is a relative concept.
Goods are related when they belong to the
same class or have the same descriptive
properties; when they possess the same
physical attributes or form or composition,
texture or quality.
Zone of potential or logical expansion
Products flow through different channels of
trade: products of each party move a long or
are disposed through different channels of
distribution.
 Case Doctrine: Canon Kabushiki vs CA
 Case Doctrine: Faberge vs IAC
The protective mantle of the Trademark Law
extends only to the goods used by the first user
as specified in the certificate of registration.
There can be no doubt that confusion or the
likelihood of deception to the average
purchaser is unlikely since the goods are non-
competing and unrelated
 Case Doctrine: Ang vs Teodoro
 Case Doctrine: Asia Brewery vs CA
 Case Doctrine: Del Monte vs CA
The ordinary buyer does not usually
make such a scrutiny as an ordinary
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shopper is usually in a hurry and does
not inspect every product on the shelf;
she is apt to be confused.
Factors which may be considered: age,
training, education of usual purchaser,
the nature and cost of the article and
conditions under which they are
purchased.
 Case Doctrine: Dy vs Koninkjlike Philips
 Case Doctrine: Emerald Garments vs
CA
 Case Doctrine: Converse vs Universal
Rubber Products
 Case Doctrine: Somboonsankdikul vs.
Orlane
Requisites of likelihood of confusion:
a) resemblance between trademarks
b) similarity of the goods to which the
trademarks are attached
c) likely effect on the purchaser
d) registrant’s express or implied
consent and other fair and equitable
considerations
2 types of confusion of trademark:
a) confusion of goods
b) confusion or origin
 Case Doctrine: UFC vs Barrio Fiesta
 Case Doctrine: Sehwani vs In-n-out
Burger
 Case Doctrine: 246 Corporation, Rolex
Music Lounge vs Hon. Daway
 Case Doctrine: La Chemise Lacoste vs
Fernandez
 Case Doctrine: Lyceum vs CA
 Case Doctrine: Etepha vs Director of
Patents
(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;  Test used: holistic
 Case Doctrine: Baxter vs Zuasua
"A designation or part of a designation which relates
only to the name, quality, or description of the
merchandise ... cannot be the subject of a trade-
mark." The denominations generally used in commerce
for the purpose of designating a class of goods could
not be the subject of labels or trade-marks.
 Case Doctrine: Compania de Tobaccos
vs Alhambra
 Case Doctrine: Philip Morris vs CA
 Case Doctrine: Mirpuri vs CA
 Case Doctrine: Victorias Milling vs Ong
Su
b. Doctrine of Secondary Meaning
 Case Doctrine: Ang vs Teodoro
 Case Doctrine: Ong Ai Gui vs Director
of Philippine Patents
c. Prior Use
 Case Doctrine: Unno Commercial vs
General Milling
 Bata Industries vs CA
F. Registration of Rights
a. Application
Sec. 3, 124, 125, 126, 128, 130, 131,
239.2, R.A. 8293
b. Assignment of Application and Filing
Date
Sec. 127, 132, R.A. 8293
c. Examination
Sec. 133, 126, 129 R.A. 8293
d. Publication
Sec. 133, R.A. 8293
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A registered mark shall not be deemed

e. Opposition
Sec. 134 and 135, R.A. 8293
Case Doctrine: Bata Industries vs CA
Case Doctrine: Mirpuri vs CA
f. Issuance and Publication of Certificate
Sec. 136, 137, 138, 139, 144 and 4.2, R.A.
8293
g. Duration of Certificate
Sec. 145, R.A. 8293
h. Voluntary Cancellation of Certificate
Sec. 140, R.A. 8293
generic name of the goods or services
solely because such mark is also used as a
name of or to identify a unique product.
The primary significance of the registered
mark to the relevant public rather than
the purchaser motivation shall be the test
of determining whether the registered
mark has become a generic name of
goods or services on in connection with
which it has been used.
 Case Doctrine: Levi Strauss vs Clinton
Apparelle

i. Correction of Mistakes
Sec. 142 and 143, R.A. 8293

j. Renewal
Sec. 146, R.A. 8293

G. Rights Conferred
Sec. 147, 148, 149, 150, 231 R.A. 8293
Sec. 4.2 in rel. to Sec. 87, 88 and 92

 Case Doctrine: Ang Tibay vs Teodoro

 Case Doctrine: Chua Che vs Philippine
Patent Office
 Case Doctrine: Sta. Ana vs Maliwat
 Case Doctrine: Philippine Refining vs
Ng Sam
 Case Doctrine: Esso vs CA
 Case Doctrine: Hickok Manufacturing
vs CA
 Case Doctrine: Faberge vs IAC
 Case Doctrine: Canon Kabushiki vs CA
 Case Doctrine: Pearl and Dean vs
Shoemart
 Case Doctrine: Societe Des Produits
Nestle vs CA
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Flow Chart of Application for Registration Requisites:

In Filipino or in English

1. Request for registration

2. Name and Address of the Applicant
3. Name of the State of which the applicant is
a national or where he has domicile; and
the name of the State in which the
applicant has real and effective industrial or
commercial establishment, if any;
4. Where the applicant is a juridical entity , the
law under which it is organized and existing;
5. The appointment of an agent or
representative, if the applicant is not
domiciled in the Philippines;
6. 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 the national
office, the name of the office;
ii. The date on which the earlier
application was filed
iii. Where available, the application
1. Filing an application for registration of
number of the earlier application
trademark
7. Where the applicant claims color as a
(3)
distinctive feature of the mark, a statement
International Conventions and Reciprocity. -
to that effect as well as the name or names
Any person who is a national or who is
of the color or colors claimed and an
domiciled or has a real and effective industrial
indication in respect of each color, of the
establishment in a country which is a party to
principal parts of the mark which are in that
any convention, treaty or agreement relating to
color;
intellectual property rights or the repression of
8. Where the mark is a three-dimensional
unfair competition, to which the Philippines is
mark, a statement to that effect;
also a party, or extends reciprocal rights to
9. One or more reproductions of the mark, as
nationals of the Philippines by law, shall be
prescribed by the Regulations;
entitled to benefits to the extent necessary to
10. A transliteration or translation of the mark
give effect to any provision of such convention,
or of some parts of the mark, as prescribed
treaty or reciprocal law, in addition to the rights
in the Regulations;
to which any owner of an intellectual property
11. The names of the goods or services for
right is otherwise entitled by this Act. (n)
which the registration is sought, grouped
according to the classes of the Nice
(124.1)
Classification, together with the number of
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the class of the said Classification to which
each group of goods or services belongs;
12. A signature by or other self-identification
of, the applicant or his representative.
 Applicant
Either natural or juridical
If there is more than one applicant, all must be
named; but anyone may sign the application in
behalf of all;
Application may be filed and prosecuted
through an attorney or other person
Note: If applicant has no real and effective
commercial est, not domiciled in PH, the name
and address of a PH resident who may be
served notices or process in the proceedings
affecting the mark.
 Classification
(124.3)
One application may relate to several goods
and/or services, whether they belong to one
class or to several classes of the Nice
Classification.
(128)
Single Registration for Goods and/or Services. -
Where goods and/or services belonging to several
classes of the Nice Classification have been included
in one (1) application, such an application shall result
in one registration. (n)
(129)
Division of Application. - Any application referring to
several goods or services, hereafter referred to as
the “initial application,” may be divided by the
applicant into two (2) or more applications,
hereafter referred to as the “divisional applications,”
by distributing among the latter the goods or
services referred to in the initial application. The
divisional applications shall preserve the filing date
of the initial application or the benefit of the right of
priority. (n)
 Representation
(125)
Applicant shall designate by a written
document filed in the office, name and address
of resident who may be served with notices or
processes affecting the mark if he is:
a) Not domiciled in PH
b) Has no real and effective commercial
establishment in PH
How may he be served with such notices?
By leaving a copy of such at the address
specified in the last designation filed; if person
cannot be found, such notice may be served
upon the Director.
 Disclaimers
(126)
Applicant may be allowed or required to
disclaim an unregistrable component of an
otherwise registrable mark. But it shall not
prejudice the applicant’s rights already existing
if it has become DISTINCTIVE OF THE
APPLICANT’S/ OWNER’S GOODS, BUSINESS or
SERVICES.
Purpose of Disclaimer:
Make of record, that a significant element of a
composite mark is not being exclusively
appropriated apart from the composite.
The following must be disclaimed:
a) Generic term
b) Descriptive matter in the composite mark
c) A matter which does not function as a
trademark or a service mark or a trade
name.
XPN: if it has become DISTINCTIVE OF THE
APPLICANT’S/ OWNER’S GOODS, BUSINESS
or SERVICES.
 Declaration of Actual Use
(124.2)
Applicant shall file a declaration of actual use
of the mark with evidence to that effect, as
prescribed by the Regulations within THREE
YEARS from the filing date of the application.
If such is not done the application shall be
REFUSED or MARK REMOVED from the
Register by the Director of Trademarks.
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 Based on the rules and regulation:
a) Must be under oath
b) Name and address of applicant
c) Declaration that it is in actual use in the
Philippines
d) List of goods
e) Outlets where they were used
f) Must refer only to one application or
registration
 Proof of actual use:
a) Labels of the mark as these are used
b) Downloaded pages from website of
applicant or registrant clearly showing
that the goods are being sold in PH
c) Photographs of goods bearing the
marks
d) Brochures or advertising materials
showing actual use of the mark
e) For online sales, receipt of sale of goods
f) Copies of contract for services
 SIGNATURE & OTHER MEANS OF SELF-
IDENTIFICATION
(130)
130.1Where a signature is required, the Office shall
accept:
(a) A hand-written signature; or
(b) The use of other forms of signature, such as a
printed or stamped signature, or the use of a seal,
instead of a hand-written signature: Provided, That
where a seal is used, it should be accompanied by an
indication in letters of the name of the signatory.
130.2. The Office shall accept communications to it
by telecopier, or by electronic means subject to
the conditions or requirements that will be
prescribed by the Regulations. When
communications are made by telefacsimile, the
reproduction of the signature, or the reproduction
of the seal together with, where required, the
indication in letters of the name of the natural
person whose seal is used, appears. The original
communications must be received by the Office
within thirty (30) days from date of receipt of the
telefacsimile.
130.3. No attestation, notarization, authentication,
legalization or other certification of any signature
or other means of self-identification referred to in
the preceding paragraphs, will be required, except,
where the signature concerns the surrender of a
registration. (n)
 PRIORITY RIGHT
(131)
- Right of priority granted to applications filed in
other countries subject to certain conditions.
(131.1)
Application for registration filed in the PH by a
person referred to in Sec. 3 and who previously
duly filed an application for registration of the
same mark in one of those countries, shall be filed
as of the day the application was first filed in the in
the foreign country.
(131.2)
- No registration of a mark in the PH by a person
described in Sec. 131 shall be granted until such
mark has been registered in the country of origin
of the applicant.
(131.3)
- Nothing in this section shall entitle the owner of a
registration granted under this section to sue for acts
committed prior to the date on which his mark was
registered in this country: Provided, That,
notwithstanding the foregoing, the owner of a well-
known mark as defined in Section 123.1(e) of this Act,
that is not registered in the Philippines, may, against an
identical or confusingly similar mark, oppose its
registration, or petition the cancellation of its
registration or sue for unfair competition, without
prejudice to availing himself of other remedies provided
for under the law.
(131.4)
- May be based on a subsequently regularly filed
application
 THOSE REGISTERED UNDER Trademark Law (R.A.
166)
239.2. Marks registered under Republic Act No.
166 shall remain in force but shall be deemed to
have been granted under this Act and shall be due
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for renewal within the period provided for under
this Act and, upon renewal, shall be reclassified in
accordance with the International Classification.
Trade names and marks registered in the
Supplemental Register under Republic Act No.
166 shall remain in force but shall no longer be
subject to renewal.
2. Assignment of Application & Filing Date
 Filing Date
(127)
It is essential to the trademark since the first to
file the application will be preferred over the
junior applicants.
As of the date the application is filed, requisites
must be complied with:
a) An express or implicit indication that the
registration of the mark is sought
b) The identity of the applicant
c) Indications sufficient to contact the
applicant or his representative
d) A reproduction of the mark whose
registration is sought
e) The list of the goods or services for which
the registration is sought
f) No filing date shall be accorded until the
required fee is paid (127.2)
PROCEDURE:
(132.1)
- It is the examiner on the authorization of the
Director who shall see whether the filing date
shall be granted.
- IF NOT the bureau shall notify the applicant,
who shall within a period of one month from
mailing date of notice, complete or correct the
application as required, otherwise the
application will be considered withdrawn.
(132.2)
- If the application did not satisfy the
requirements for grant of filing date at the time
the filing fee and other indications were
received, the filing date given shall be canceled
and a new filing date entered. The new filing
date is the date when the Office received the
completed or corrected application.
- 132.2 Once an application meets the filing
requirements of Section 127, it shall be
numbered in the sequential order, and the
applicant shall be informed of the application
number and the filing date of the application
will be deemed to have been abandoned. (n)
3. Examination
(133)
Examination begins with the determination
whether the application meets the filing date
requirements in Sec. 127.
If so, the office shall examine whether the
application meets the requirements under Sec
124 and the mark as defined under Sec. 121 is
registrable under Sec. 123.
Where all the conditions of application and
requirement and registrability are met, the
office upon payment of prescribed fee, fortwith
cause the application, as filed to be published in
the prescribed manner.
NOTE: If after the examination, the applicant is
not entitled to registration for any reason, the
Office shall advise the applicant thereof and the
reasons therefor. The applicant shall have a
period of FOUR MONTHS in which to reply or
amend his application, which shall then be re-
examined.
The Regulations shall determine the procedure
for re-examination or revival of an application
as well as the appeal to the director of
trademarks from any final action of the
Examiner.
(133.4)
An abandoned application may be revived as a
pending application within THREE MONTHS
from the date of abandonment, upon good
cause shown and payment of required fees.
 DISCLAIMER
(126)
The Office may allow or require the
applicant to disclaim an unregistrable
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component of an otherwise registrable

mark but such disclaimer shall not prejudice
or affect the applicant’s or owner’s rights
then existing or thereafter arising in the
disclaimed matter, nor such shall disclaimer
prejudice or affect the applicant’s or
owner’s right on another application of
later date if the disclaimed matter became
distinctive of the applicant’s or owner’s
goods, business or services. (Sec. 13, R.A.
No. 166a)
 DIVISIONAL APPLICATION
(129)
Any application referring to several goods or
services, hereafter referred to as the “initial
application,” may be divided by the applicant
into two (2) or more applications, hereafter
referred to as the “divisional applications,” by
distributing among the latter the goods or
services referred to in the initial application.
The divisional applications shall preserve the
filing date of the initial application or the
benefit of the right of priority. (n)

Xxx
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RIGHTS CONFERRED
SECTION 147. Rights Conferred. - 147.1. Except in cases
of importation of drugs and medicines allowed under
Section 72.1 of this Act and of off-patent drugs and
medicines, 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.
There shall be no infringement of trademarks or
tradenames of imported or sold patented drugs and
medicines allowed under Section 72.1 of this Act, as
well as imported or sold off-patent drugs and
medicines: Provided, That, said drugs and medicines
bear the registered marks that have not been
tampered, unlawfully modified, or infringed upon,
under Section 155 of this Code.
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)
SECTION 150. License Contracts. - 150.1. Any license
contract concerning the registration of a mark, or an
application therefor, shall provide for effective control
by the licensor of the quality of the goods or services
of the licensee in connection with which the mark is
used. If the license contract does not provide for such
quality control, or if such quality control is not
effectively carried out, the license contract shall not be
valid.
150.2. A license contract shall be submitted to the
Office which shall keep its contents confidential but
shall record it and publish a reference thereto. A
license contract shall have no effect against third parties
until such recording is effected. The Regulations shall fix
the procedure for the recording of the license contract.
(n)
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SECTION 231. Reverse Reciprocity of Foreign Laws. - Any
condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed by
the law of a foreign country on a Philippine national
seeking protection of intellectual property rights in that
country, shall reciprocally be enforceable upon
nationals of said country, within Philippine jurisdiction.
(n)
Section 4.2. The term “technology transfer
arrangements” refers to contracts or agreements
involving the transfer of systematic knowledge for the
manufacture of a product, the application of a process,
or rendering of a service including management
contracts; and the transfer, assignment or licensing of
all forms of intellectual property rights, including
licensing of computer software except computer
software developed for mass market.
SECTION 87. Prohibited Clauses. - Except in cases
under Section 91, the following provisions shall be
deemed prima facie to have an adverse effect on
competition and trade:
87.1. Those which impose upon the licensee the
obligation to acquire from a specific source capital
goods, intermediate products, raw materials, and
other technologies, or of permanently employing
personnel indicated by the licensor;
87.2. Those pursuant to which the licensor reserves
the right to fix the sale or resale prices of the
products manufactured on the basis of the license;
87.3. Those that contain restrictions regarding the
volume and structure of production;
87.4. Those that prohibit the use of competitive
technologies in a non-exclusive technology transfer
agreement;
87.5. Those that establish a full or partial purchase
option in favor of the licensor;
87.6. Those that obligate the licensee to transfer
for free to the licensor the inventions or
improvements that may be obtained through the
use of the licensed technology;
87.7. Those that require payment of royalties to
the owners of patents for patents which are not
used;
87.8. Those that prohibit the licensee to export the
licensed product unless justified for the protection
of the legitimate interest of the licensor such as
exports to countries where exclusive licenses to
manufacture and/or distribute the licensed
product(s) have already been granted;
87.9. Those which restrict the use of the
technology supplied after the expiration of the
technology transfer arrangement, except in cases
of early termination of the technology transfer
arrangement due to reason(s) attributable to the
licensee;
87.10. Those which require payments for patents
and other industrial property rights after their
expiration, termination arrangement;
87.11. Those which require that the technology
recipient shall not contest the validity of any of the
patents of the technology supplier;
87.12. Those which restrict the research and
development activities of the licensee designed to
absorb and adapt the transferred technology to
local conditions or to initiate research and
development programs in connection with new
products, processes or equipment;
87.13. Those which prevent the licensee from
adapting the imported technology to local
conditions, or introducing innovation to it, as long
as it does not impair the quality standards
prescribed by the licensor;
87.14. Those which exempt the licensor for liability
for non-fulfilment of his responsibilities under the
technology transfer arrangement and/or liability
arising from third party suits brought about by the
use of the licensed product or the licensed
technology; and
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87.15. Other clauses with equivalent effects. (Sec.
33-C (2), RA 165a)
SECTION 88. Mandatory Provisions. - The following
provisions shall be included in voluntary license
contracts:
88.1. That the laws of the Philippines shall govern
the interpretation of the same and in the event of
litigation, the venue shall be the proper court in the
place where the licensee has its principal office;
88.2. Continued access to improvements in
techniques and processes related to the technology
shall be made available during the period of the
technology transfer arrangement;
88.3. In the event the technology transfer
arrangement shall provide for arbitration, the
Procedure of Arbitration of the Arbitration Law of
the Philippines or the Arbitration Rules of the
United Nations Commission on International Trade
Law (UNCITRAL) or the Rules of Conciliation and
Arbitration of the International Chamber of
Commerce (ICC) shall apply and the venue of
arbitration shall be the Philippines or any neutral
country; and
88.4. The Philippine taxes on all payments relating
to the technology transfer arrangement shall be
borne by the licensor. (n)
SECTION 92. Non-Registration with the Documentation,
Information and Technology Transfer Bureau. -
Technology transfer arrangements that conform with
the provisions of Sections 86 and 87 need not be
registered with the Documentation, Information and
Technology Transfer Bureau. Non-conformance with
any of the provisions of Sections 87 and 88, however,
shall automatically render the technology transfer
arrangement unenforceable, unless said technology
transfer arrangement is approved and registered with
the Documentation, Information and Technology
Transfer Bureau under the provisions of Section 91 on
exceptional cases. (n)
PROTECTION OF TRADEMARKS
General provisions:
Sec. 3
SECTION 3. International Conventions and Reciprocity. -
Any person who is a national or who is domiciled or has
a real and effective industrial establishment in a country
which is a party to any convention, treaty or agreement
relating to intellectual property rights or the repression
of unfair competition, to which the Philippines is also a
party, or extends reciprocal rights to nationals of the
Philippines by law, shall be entitled to benefits to the
extent necessary to give effect to any provision of such
convention, treaty or reciprocal law, in addition to the
rights to which any owner of an intellectual property
right is otherwise entitled by this Act. (n)
Sec. 160
SECTION 160. Right of Foreign Corporation to Sue in
Trademark or Service Mark Enforcement Action. - Any
foreign national or juridical person who meets the
requirements of Section 3 of this Act and does not
engage in business in the Philippines may bring a civil or
administrative action hereunder for opposition,
cancellation, infringement, unfair competition, or false
designation of origin and false description, whether or
not it is licensed to do business in the Philippines under
existing laws. (Sec. 21-A, R.A. No. 166a)
Sec. 231
SECTION 231. Reverse Reciprocity of Foreign Laws. -
Any condition, restriction, limitation, diminution,
requirement, penalty or any similar burden imposed
by the law of a foreign country on a Philippine national
seeking protection of intellectual property rights in that
country, shall reciprocally be enforceable upon
nationals of said country, within Philippine
jurisdiction. (n)
1. Case Doctrine: La Chemise Lacoste vs Fernandez
2. Case Doctrine: Leviton Industries vs Salvador
Law: Sec. 21-A of the Trademark Law
FACTS: Private respondent Leviton Manufacturing, a
foreign corporation filed a complaint for unfair
competition against the petitioner Leviton Industries
and its general managers.
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Leviton Manufacturing alleged in its complaint that it is
a foreign corporation organized and existing under the
laws of New York and its office located in the same
state. It was founded in 1906 by Isidor Leviton and has
since then manufactured electrical wiring devices in US;
it owned the trademark Leviton and has exported its
goods to PH since 1964; it is well-known in PH.
Leviton Industries is a partnership organized and
existing under PH laws and principal office in Caloocan.
They began Manufacturing electrical ballast, fuse and
oval buzzer under the trademark Leviton Industries and
had the trademark Leviton registered.
According to the private respondent (Manufacturing),
the registration of Industries is in violation of par. d and
e Sec 4 of RA 166 and their trademark having been
copied, it would cause confusion to customers. Invoking
Sec. 21-A of RA 166, Manufacturing asked for damages
and a writ of injunction.
On the otherhand, Industries claimed that
Manufacturing is not actually manufacturing ballasts,
that it has no registered trademark in PH Patent Office
and that it has no license to do business in PH. Based on
the foregoing, a motion to dismiss was filed by
Industries but the same was denied by CFI Rizal. The
case was then elevated to SC.
ISSUE: Whether or not Leviton Manufacturing had the
right to sue before PH Courts pursuant to Sec. 21-A of
RA. 166.
RULING: NEGATIVE. The complaint failed to allege
essential facts stating the capacity of Manufacturing to
sue before PH Courts. Section 21-A undoubtedly grants
a foreign corp whether or not it has license to do
business in PH, the right to seek redress for unfair
competition. HOWEVER, it has set qualifications, which
in effect as conditions sine qua non: 1) that the
trademark be registered with the PH Patent office or
the corp at least be an assignee of the registered
trademark; 2) that the country of which the plaintiff
foreign corp is a citizen or domiciliary of a country
which grants PH corps the same reciprocal treatment
via a treaty, convention or law.
In this case, Leviton Manufacturing failed to allege the
same, it only stated that it is a foreign corp.
3. Case Doctrine: Puma vs IAC
FACTS: The case is a petition for review on certiorari of
the decision of CA which reversed the RTC’s ruling. CA
dismissed the civil case filed by PUMA on the ground of
litis pendentia and lack of legal capacity to sue of
PUMA.
PUMA Sports is a foreign corporation duly organized
and existing under laws of Germany and is a
manufacturer and producer of PUMA Products. They
filed a complaint for infringement of trademark and
issuance of writ of prelim injunction against MIL-Oro
Manufacturing before RTC Makati.
During the filing of the case 3 cases were pending
before the PH Patent office, for opposition on
registration of PUMA, cancellation of trademark of
PUMA and cancellation of registration of Mil-Oro.
RTC issued a TRO against Mil-Oro. However, Mil-Oro
filed a motion to dismiss due to lack of legal capacity of
PUMA to sue, lack of cause of action and litis pendentia,
but RTC denied the same.
On appeal to CA, CA reversed RTC on the ground of litis
pendentia and that PUMA failed to allege reciprocity of
Germany and PH on trademark laws.
Note that Petitioner PUMA alleged in its complaint that
it is not doing business in PH and is suing under RA 21-A
and provides that the country of which the said corp is a
citizen or domiciled in a country granting similar
privileges to PH via a convention or treaty. They are
further alleging that there is no mandatory requirement
of alleging the reciprocity between Germany and PH
since the same is supplied by the Paris Convention
where PH and Germany are signatories.
ISSUE: Whether or not PUMA has the legal capacity to
sue before PH courts for infringement.
RULING: AFFIRMATIVE.
Based on the ruling of La Chemise Lacoste vs Fernandez,
petitioner therein may still maintain the suit against
respondent since as early as 1927 foreign corp not
doing business in PH needs to license to sue before PH
courts for infringement of trademark and unfair
competition.
In another case it was stated that the PH is obligated
to assure the nationals of the countries of the Union
effective protection against unfair competition the
same way that they protect Filipinos. Ministry of Trade
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even issued Memo (Villafuerte Memo) directing
Director of Patents to reject all pending apps for PH
registration of signature and world famous trademarks
by applicants other than its original owners or users.
Converse case further stated that Article 8 of the
convention protects a trade name without the
obligation of filing or registration, whether or not the
name forms part of a trademark. In essence, the
convention seeks to provide extensive protection
against infringement and unfair competition.
Ultimately, it was held by SC that petitioner had the
legal capacity to file the action.
Additional: There is no litis pendentia as the same
requires that the case must be a court action. In this
case, it was an administrative proceeding before PH
Patents Office that was pending.
1. Administrative
a. Cancellation Proceedings
Sec. 151
SECTION 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. (n)
(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.
151.2. Notwithstanding the foregoing provisions, the
court or the administrative agency vested with
jurisdiction to hear and adjudicate any action to
enforce the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the
registration of said mark may be cancelled in
accordance with this Act. The filing of a suit to enforce
the registered mark with the proper court or agency
shall exclude any other court or agency from assuming
jurisdiction over a subsequently filed petition to cancel
the same mark. On the other hand, the earlier filing of
petition to cancel the mark with the Bureau of Legal
Affairs shall not constitute a prejudicial question that
must be resolved before an action to enforce the rights
to same registered mark may be decided. (Sec. 17, R.A.
No. 166a)
What if it is the infringement that was filed first? What
is the effect on subsequent filing of a petition to cancel
the registration?
Answer: Filing first an infringement case would bar
another agency/ court from acquiring jurisdiction
therefore a subsequent cancellation proceeding is not
allowed.
Sec. 152
SECTION 152. Non-use of a Mark When Excused. -
152.1. Non-use of a mark may be excused if caused by
circumstances arising independently of the will of the
trademark owner. Lack of funds shall not excuse non-
use of a mark.
152.2. The use of the mark in a form different from the
form in which it is registered, which does not alter its
distinctive character, shall not be ground for
cancellation or removal of the mark and shall not
diminish the protection granted to the mark.
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152.3. The use of a mark in connection with one or
more of the goods or services belonging to the class in
respect of which the mark is registered shall prevent its
cancellation or removal in respect of all other goods or
services of the same class.
152.4. The use of a mark by a company related with the
registrant or applicant shall inure to the latter’s benefit ,
and such use shall not affect the validity of such mark or
of its registration: Provided, That such mark is not used
in such manner as to deceive the public. If use of a
mark by a person is controlled by the registrant or
applicant with respect to the nature and quality of the
goods or services, such use shall inure to the benefit of
the registrant or applicant. (n)
Sec. 153
SECTION 153. Requirements of Petition; Notice and
Hearing. - Insofar as applicable, the petition for
cancellation shall be in the same form as that provided
in Section 134 hereof, and notice and hearing shall be
as provided in Section 135 hereof.
SECTION 134. Opposition. - Any person who believes that he would
be damaged by the registration of a mark may, upon payment of the
required fee and within thirty (30) days after the publication
referred to in Subsection 133.2, file with the Office an opposition to
the application. Such opposition shall be in writing and verified by
the oppositor or by any person on his behalf who knows the facts,
and shall specify the grounds on which it is based and include a
statement of the facts relied upon. Copies of certificates of
registration of marks registered in other countries or other
supporting documents mentioned in the opposition shall be filed
therewith, together with the translation in English, if not in the
English language. For good cause shown and upon payment of the
required surcharge, the time for filing an opposition may be
extended by the Director of Legal Affairs, who shall notify the
applicant of such extension. The Regulations shall fix the maximum
period of time within which to file the opposition. (Sec. 8, R.A. No.
165a)
SECTION 135. Notice and Hearing. - Upon the filing of an
opposition, the Office shall serve notice of the filing on the
applicant, and of the date of the hearing thereof upon the
applicant and the oppositor and all other persons having any right,
title or interest in the mark covered by the application, as appear of
record in the Office. (Sec. 31, R.A. No. 165)
Sec. 154
SECTION 154. Cancellation of Registration. - If the
Bureau of Legal Affairs finds that a case for
cancellation has been made out, it shall order the
cancellation of the registration. When the order or
judgment becomes final, any right conferred by such
registration upon the registrant or any person in
interest of record shall terminate. Notice of
cancellation shall be published in the IPO Gazette. (Sec.
19, R.A. No. 166a)
Sec. 230
SECTION 230. Equitable Principles to Govern
Proceedings. - In all inter partes proceedings in the
Office under this Act, the equitable principles of laches,
estoppel, and acquiescence where applicable, may be
considered and applied. (Sec. 9-A, R.A. No. 166)
Sec. 232.2
SECTION 232. Appeals. - 232.1. Appeals from decisions
of regular courts shall be governed by the Rules of
Court. Unless restrained by a higher court, the
judgment of the trial court shall be executory even
pending appeal under such terms and conditions as the
court may prescribe.
232.2. Unless expressly provided in this Act or other
statutes, appeals from decisions of administrative
officials shall be provided in the Regulations. (n)
1. Case: Romero vs Maidenform
Concepts: Temporary non-use due to government
restrictions is not abandonment; using trademark for
one type of product does not affect its validity as
trademark
FACTS: Maidenform, respondent herein, is a foreign
corporation, who applied for registration of the
trademark Adagio for brassieres in 1957. According to
them, they have used the trademark in the US since
1937 and in the PH since 1946, accumulating to almost
30 years of use.
Director of Patents approved the application for
publication, found that the trademark is a fanciful and
arbitrary use of the foreign word and consequently a
certificate of registration was issued.
In 1958, Romero filed a petition for cancellation of the
trademark due to the following grounds: a) that the
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trademark is descriptive of an article on which a patent
has expired; b) registration was fraudulent, not in
compliance with Sec 37 of RA 166 c) that trademark has
not become distinctive of Maidenform’s goods. This
petition was dismissed by the Director of Patents thus
appeal was taken before the SC.
ISSUE:
a) Whether or not the trademark has become a
common descriptive name of a particular type of
brassiere therefore it has become unregistrable.
A. NEGATIVE. Adagio is not a descriptive term as it is a
musical term used by the owners of Maidenform
because they are musically inclined, it means
slowly/easy manner. The Company used other musical
terms for other types of brassieres.
The long use and continued use of the trademark by
Maidenform for a type of brassiere has not made it
descriptive of the product. Widespread dissemination
does not justify the use of the trademark by other
companies, such as that of Romero’s.
The petitioner Romero also contends that the
trademark was used merely to designate a particular
style or quality of brassiere but the same is bereft of
merit. Evidence showed that it is a brand. Furthermore,
the court ruled that barassieres are usually different
types or styles and the mere fact that the trademark is
used for one type or style does not affect the validity of
the word as a trademark
b) Whether or not the registration was not in
compliance with R.A 166 Sec 37.
A. NEGATIVE. The application was made pursuant to
Sec. 2 of RA. 166 and not Sec. 37.
c) Whether or not the trademark has already been
abandoned.
A. NEGATIVE. It has been first used in PH in 1932 and
there was no evidence of abandonment. There was a
time when the Government imposed restrictions in the
importation of Maidenform’s brassiere and it was at
that time that Romero used the trademark. The Court
ruled that the temporary non-use by Maidenform due
to the government restriction is not abandonment since
abandonment must be permanent, intentional and
voluntary. Non-use due to legal restrictions is not
abandonment.
2. Case: Shangrila vs CA
Concepts: Earlier institution of a petition for
cancellation of a registered mark with BPTTT cannot
effectively bar the subsequent filing of an infringement
case; Section 151.2 of R.A. 8293 (last sentence).
FACTS: Shangrila Group filed with the Bureau of
Patents, Trademarks and Tech. Transfer a petition for
cancellation or registration of the “Shangri-La” mark
and “S” Logo issued to Developer’s Group (respondent)
due to illegal and fraudulent appropriation to the
latter’s restaurant. According to Shangrila Group they
have been using the name since 1962, had the logo
designed for them since 1975 as opposed to the first
use of Developers in 1982. Shangrila Group then filed
their own application for registration but was opposed
by Developers.
On the otherhand, Developers filed a complaint for
infringement before RTC Quezon City against Shangrila
Group. For this case, Shangrila filed a motion to suspend
proceedings due to pendency of the cancellation case
before BPTTT. This motion was denied by RTC, and on
appeal to CA the motion to suspend was still denied.
Developers also sought the suspension of proceedings
before the BPTTT but this motion was denied. The same
was appealed to CA but was likewise denied.
The cases were appealed to SC and consolidated.
ISSUE: Whether or not the institution of the cancellation
case of the mark with the BPTTT bars the filing of a
subsequent action for infringement with the regulars
courts in connection with the same mark.
RULING: NEGATIVE. Based on Section 151.2 of RA. 8293:
151.2. Notwithstanding the foregoing provisions, the
court or the administrative agency vested with
jurisdiction to hear and adjudicate any action to enforce
the rights to a registered mark shall likewise exercise
jurisdiction to determine whether the registration of
said mark may be cancelled in accordance with this Act.
The filing of a suit to enforce the registered mark with
the proper court or agency shall exclude any other court
or agency from assuming jurisdiction over a
subsequently filed petition to cancel the same mark. On
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the other hand, the earlier filing of petition to cancel
the mark with the Bureau of Legal Affairs shall not
constitute a prejudicial question that must be resolved
before an action to enforce the rights to same
registered mark may be decided.
Also, Rule 8, Sec. 7 of the Regulations in Inter Partes
proceedings provides that: The earlier filing of a petition
to cancel the mark with the Bureau shall not constitute
a prejudicial question that must be resolved before an
action to enforce the rights to the same registered mark
may be decided.
Therefore, the cancellation case cannot effectively bar
the subsequent infringement case. The reason is that
the registration of Developers is valid and subsisting
until it is cancelled thus they still have the right to
institute the infringement suit. There are also
differences in issue: 1) the cancellation proceedings
determines whether the mark is subject to cancellation
since Shangrila claims prior ownership; 2) the
infringement case determines whether there was
infringement on the right of Developers.
HOWEVER, the RTC is the infringement case declared
the Developers as the rightful owner of the trademark
and it rendered the cancellation proceedings moot.
Thus it is proper now to call for the suspension of the
proceedings before BPTTT.
3. Case: PhilNut vs Standard Brands
Concepts: Temporary non-use of the trademark, effect
of – Non-use of a trademark on an article due to legal
restrictions beyond one’s control is not considered
abandonment; abandonment must be permanent,
intentional, voluntary.
FACTS: Petitioner PhilNut is a domestic corporation who
obtained registration of trademark PHILIPPINE
PLANTERS CORDIAL PEANUTS for its salted peanuts in
1961. However, respondent Standard Brands, a foreign
corporation filed a petition for cancellation of the
registration since the trademark is confusingly similar to
their trademark PLANTERS COCKTAIL PEANUTS issued
to them in 1958, and it would likely deceive the buying
public and cause damage to Standards.
Standards alleged that it first used their trademark in
1938 and registered the same on 1958, while PhilNut
used theirs in 1958 and registered in 1961.
Director of Patents then cancelled PhilNuts registration
on the finding that the dominant part of the trademark
is PLANTERS, which was displayed in the similar manner
and the appearance and general impression of the
goods are confusingly similar. The case was then
elevated to the Supreme Court.
ISSUE: Whether or not the trademarks are confusingly
similar so as to constitute infringement and justify the
cancellation of PhilNut’s registration of their trademark.
RULING: AFFIRMATIVE.
A) According to R.A. 166, Sec. 4 trademarks which
consist of a mark which so resembles a mark registered
in PH or a trademark previously used by another and
not abandoned as to be likely when applied to goods
and service of the applicant would cause confusion and
deceive the purchasers. Also, Sec 17 stated that one of
the grounds for cancellation of registration is fraudulent
registration or those contrary to provisions of Section 4.
The question of infringement is concerned with
whether the trademark is likely to cause confusion in
the mind of the public and this is answered by the
application of test of dominancy. Test of dominancy
requires only that the main or essential dominant
features of another are likely to result to infringement;
duplication is not necessary. Here, the dominant feature
is indeed PLANTERS. Contrary to the contention of
PhilNut, it is not a descriptive term, it was used to
describe source or origin and not the nature of the
product.
The similarities in the trademarks are as follows: Cordial
and cocktail are adjectives which are not sufficient to
warn unwary customers, they have the same coloring
scheme of blue, white and gold, lay-out of words. The
other small differences pointed out are insignificant.
The goods are ordinary commodities and the customers
would not be able to examine the small letterings but
will consider only the striking mark “PLANTERS”.
B) The term has acquired secondary meaning. According
to the doctrine, a word or phrase originally incapable of
exclusive appropriation with reference to an article in
the market, because geographically or otherwise
descriptive, might nevertheless have been used so long
and so exclusively by one producer that the word has
come to mean that the article was his product. Planters
has been used since 1938, it has become distinctive of
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the salted peanuts thus Standard brands acquired
preferential right.
FURTHERMORE, the contention of PhilNut that the use
of the trademark was interrupted by Japanese
Occupation and in effect secondary meaning could not
have been acquired is bereft of merit.
Non-use of a trademark on an article of merchandize
due to a legal restriction or circumstance beyond one’s
control is not to be considered abandonment. To
constitute abandonment, disuse mys be permanent
and not ephemeral, it must be intentional and
voluntary, not involuntary or even compulsory. There
must be a thorough-going discontinuance of any trade-
mark. There was no intention to abandon the
trademark here.
4. Case: Clorox vs Director of Patents
FACTS: Respondent Go Sui Gian filed with the Patent
Office an application for registration of the trademark
OLDROX in 1959. He alleged that he is a citizen of China,
doing business in Manila, has been using the trademark
for whitening bleach since February of the same year (2
months prior). Director of patents allowed the
application to be published and was released on August
22, 1960.
On September 21 (within 30 days from publication), an
unverified petition for opposition was filed by Lichauco
law office in behalf of Clorox Company.
In 1961, Director of Patents dismissed the opposition on
the ground that Clorox failed to file a verified notice of
opposition within the period allowed by law. However,
Clorox answered, claiming that they filed a verified
petition on November 16, 1960 but was accompanied
by an erroneous cover letter which pertained to
another case. Clorox then sought a motion for relief
from the judgment of Director of Patents, still the same
was denied. The case was then appealed to SC.
ISSUE: Whether or not Clorox failed to file the
opposition within the time period prescribed by law.
RULING: NEGATIVE. According to R.A. 166 Sec. 8, an
opposition to an application must be filed within 30
days from publication of application in the Official
Gazette. The rule was relazed under Rule 187© of
Revised Rules of Practice in Trademark Cases which
state that an unverified notice of opposition may be
filed by a duly authorized attorney but it will be null and
void unless verified by oppositor within 60 days from
filing. In this case, the unverified opposition was filed
within the 30 day period and the verified petition was
filed within the 60 day period from the filing of the
unverified opposition.
The erroneous cover letter is not a part of the pleading,
in this case, the opposition reached the proper office in
time and was submitted to the proper person. The gross
negligence of the clerk of court to receive and file a
pleading based merely on the cover letter without
examining the main pleading cannot prejudice the
petitioner.
Indeed there was substantial compliance with the rule
here.
The case was remanded to the Patent Office for further
proceedings.
5. Case: Wolverine vs CA
Concept: Res judicata now bars the petitioners from
reopening by way of a petition for cancellation the issue
of ownership the trademark Hush Puppies, otherwise
there will never be an end to litigation.
FACTS: In 1984, Petitioner Wolverine Worldwide, a
corporation organized and existing under the laws of
US, filed a petition for cancellation of registration of the
trademark Hush Puppies and Dog Device issued to
private respondent Lolito Cruz, a Filipino Citizen.
Based on the petition, petitioner is a registrant of
internationally known trademark in the US and other
countries who are members of the Paris Convention,
the goods sold by petitioner and respondent belong to
the same class, and that the act of respondent
constitutes unfair competition.
Private respondent moved to dismiss the petition on
the ground of res judicata, stating that there were two
previous petitions for cancellation and an interference
proceeding decided by the Director of Patents. Based
on the mentioned cases, the predecessor in-interest
(Ramon Angeles) of herein private respondent was
declared the prior user and adopter. CA affirmed the
said decisions. No appeal was interposed before the SC.
The motion to dismiss for the present cancellation case
was granted and on appeal to CA, it was affirmed.
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ISSUE: Whether or not the earlier decisions of the
Director of Patents,which was affirmed by the CA,
constituted res judicata for the present petition for
cancellation.
RULING: Affirmative. For a judgment to constitute res
judicata, the following requisites must concur:
1) it must be a final judgment
2) the court which rendered it had jurisdiction over the
subject matter and the parties
3) it must be a judgment on the merits
4) there must be identity between the two cases as to
parties, subject matter and cause of action.
The judgment in the earlier mentioned cases decided by
Director and CA has long been final and executor. The
contention of petitioner that Sec. 17 RA 166 allows the
cancellation of a registered trademark is not a valid
defense to state that a decision on the registration of a
trademark cannot be subject of res judicata.
The judgment here is final, it can no longer be modified.
The earlier mentioned cases were filed before the CA in
1973 and were never appealed to the SC, thus the
judgment denying the cancellation of registration of the
private respondent has become a settled law in the
case.
The fundamental principle of res judicata applies to all
the cases and proceedings in whatever for they may be.
The principle applies in the appropriate cases, to
proceedings for cancellation of trademarks before the
Philippine Patent Office. The final decisions of director
of patents are clothed with judicial character.
There was a final resolution on the merits, the parties
are the same, the petitioner being Wolverine and the
respondent is Randelson Agro which acquired its rights
from Ramon Angeles, subject matter is the cancellation
of registration and the cause of action is the wrongful
registration.
Indeed, res judicata was correctly applied in this case.
6. Case: Levi Strauss vs Vogue
Concepts:
7. Case: La Estrella vs Director of Patents
8. Case: Bata Industries vs CA
9. Case: W Land Holdings vs Starwood Hotels
Concept: Prima facie presumption brought about by the
registration of a mark may be challenged and overcome
in an appropriate action, by proof among others,
nonuse of the mark, except when excused.
Use which the law requires to maintain the registration
of a mark must be genuine and not merely a token.
Genuine use is that which results or tends to result into
a commercial transaction in the ordinary course of
trade.
The specific acts that would constitute use is espoused
in Rue 205 of Trademark Regulation: mark must be
declared to be in actual use in the PH, the name and
location of outlets stated, place where services are
rendered. If the goods are available online, website
must be indicated.
One of the enumerated accepted proof of actual use
include the downloaded pages from the website of the
applicant clearly showing that the goods are being sold
or the services are being rendered in the Philippines; for
online sale receipts of sale of goods or services
rendered, showing that the goods are placed in the
market available in the PH or that the transaction took
place in PH.
FACTS: Initially, this began in the petition to cancel the
registration of the trademark W filed by W Land
Holdings against Starwood Hotels and Resorts.
b. Intellectual Property Rights Violation
Sec. 10(2)
SECTION 10. The Bureau of Legal Affairs. - The Bureau of
Legal Affairs shall have the following functions:
10.1. Hear and decide opposition to the application for
registration of marks; cancellation of trademarks;
subject to the provisions of Section 64, cancellation of
patents, utility models, and industrial designs; and
petitions for compulsory licensing of patents;
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10.2. (a) Exercise original jurisdiction in administrative
complaints for violations of laws involving intellectual
property rights: Provided, That its jurisdiction is limited
to complaints where the total damages claimed are not
less than Two hundred thousand pesos (P200,000):
Provided, further, That availment of the provisional
remedies may be granted in accordance with the Rules
of Court. The Director of Legal Affairs shall have the
power to hold and punish for contempt all those who
disregard orders or writs issued in the course of the
proceedings. (n)
May impose cease and desist orders, accept or approve
voluntary compliance of parties, there can be seizure of
goods, revocation of licenses, fines,
of this Act, may require that his name and residence,
and the name of the locality in which his goods are
manufactured, a copy of the certificate of registration of
his mark or trade name, to be recorded in books which
shall be kept for this purpose in the Bureau of Customs,
under such regulations as the Collector of Customs with
the approval of the Secretary of Finance shall prescribe,
and may furnish to the said Bureau facsimiles of his
name, the name of the locality in which his goods are
manufactured, or his registered mark or trade name,
and thereupon the Collector of Customs shall cause one
(1) or more copies of the same to be transmitted to
each collector or to other proper officer of the Bureau
of Customs. (Sec. 35, R.A. No. 166)

Xxx

Sec. 232

SECTION 232. Appeals. - 232.1. Appeals from decisions

of regular courts shall be governed by the Rules of
Court. Unless restrained by a higher court, the
judgment of the trial court shall be executory even
pending appeal under such terms and conditions as the
court may prescribe.

232.2. Unless expressly provided in this Act or other

statutes, appeals from decisions of administrative
officials shall be provided in the Regulations. (n)

c. Prohibition of Importation

Sec. 166

SECTION 166. Goods Bearing Infringing Marks or Trade

Names. - No article of imported merchandise which
shall copy or simulate the name of any domestic
product, or manufacturer, or dealer, or which shall copy
or simulate a mark registered in accordance with the
provisions of this Act, or shall bear a mark or trade
name calculated to induce the public to believe that the
article is manufactured in the Philippines, or that it is
manufactured in any foreign country or locality other
than the country or locality where it is in fact
manufactured, shall be admitted to entry at any
customhouse of the Philippines. In order to aid the
officers of the customs service in enforcing this
prohibition, any person who is entitled to the benefits