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Republic of the Philippines

Department of Trade and Industry
INTELLECTUAL PROPERTY OFFICE
Bureau of Legal Affairs
Taguig City

POSITION PAPER
(For the Registrant)

COMES NOW, the Registrant by and through the Undersigned

Counsel and unto this Honorable Office, most respectfully avers:

I
PRELIMINARY STATEMENT

Registrant seeks to register GiftrAir Placeholder Logo as figurative

mark with words for the gift wrap and gift note for her business and
patent application of her invention “Solar Panel in a Backpack”.

II
PARTY

Registrant, JENELYN D. CASIM with address at 123 Willoughby

Street, Wollstonecraft Village Olympia, Makati City.

III
STATEMENT OF THE CASE

This is an application of trademark “GiftrAir” and patent “Solar

Panel in a Backpack “filed by the registrant on January 24, 2021.
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IV
FACTS OF THE CASE

Registrant JENELYN D. CASIM alleges that Registration of the

mark “GiftrAir” is in conformity of Section 123.1 of the Intellectual
Property Code and should be registered so as to represent to the goods
or services in connection with which the mark is used.

That Registrant alleges that the registration of the mark “GiftrAir”

is not in contrary to the other provision of Intellectual Property Code
of the Philippines. That the registration of the respondent mark
“GiftrAir” will not cause confusion, mistake and deception on the part
of the purchasing public when applied to or used.

That Registrant also applies for the application of a patent for

“Solar Panel in a Backpack”. She also claims that this bag is a technical
solution to a common problem in today’s society wherein everyone
needs technology and power for their everyday living while in transit.
Her invention offers a cost-effective with the use of a renewable energy
source.

STATEMENT OF THE ISSUES

I. WHETHER OR NOT THE REGISTRANT HAS VALID

GROUND TO FILE APPLICATION FOR REGISTRATION OF
TRADEMARK NAME “GiftrAir”

II. WHETHER OR NOT THE REGISTRANT HAS VALID

GROUND TO FILE APPLICATION FOR REGISTRATION OF
THE PATENT FOR “Solar Panel in a Backpack”

VI
DISCUSSION/ARGUMENTS

I. REGISTRANT HAS VALID GROUND TO FILE APPLICATION FOR

REGISTRATION OF TRADEMARK NAME “GiftrAir”
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A trademark can be protected through valid registration.

Registration gives the trademark owner exclusive right to use
the mark and to prevent others from using the same or similar
marks on identical goods and services and once acquired the
registrant have to comply the critical requirement for the
perfection and maintenance of a trademark registration in the
Philippines. Consistent with the commitment to provide the
declaration and also securing evidence to establish trademark
use in the Philippines through local and online market
inspections.

The mark applied by the registerant conforms with the

requirements on registrability under Section 123 of the
Intellectual Property Code. Sec. 123 of the Intellectual
property Code (R.A. 8293) provides the requirements on
registrability as:

Sec. 123. Registrability.-

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;

b. Consists of the flag or coat of arms or other insignia of

the Philippines or any of its political subdivisions, or of any
foreignnation, or any simulation thereof;

c. Consists of a name, portrait or signature identifying a

particular living individual except by his written consent,
or the name, signature, or portrait of a deceased President
of the Philippines, during the life of his widow, if any,
except by written consent of the widow;

d. Is identical with a registered mark belonging to a

different proprietor or a mark with an earlier filing or
priority date, in respect of:

i. The same goods or services, or

ii. Closely related goods or services, or

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iii. If it nearly resembles such a mark as to be likely to

deceive or cause confusion;

e. Is identical with, or confusingly similar to, or constitutes

a translation of a mark which is considered by the
competent authority of the Philippines to be well-known
internationally and in the Philippines, whether or not it is
registered here, as being already the mark of a person
other than the applicant for registration, and used for
identical or similar goods or services: Provided, That in
determining whether a mark is well-known, account shall
be taken of the knowledge of the relevant sector of the
public, rather than of the public at large, including
knowledge in the Philippines which has been obtained as a
result of the promotion of the mark;

f. Is identical with, or confusingly similar to, or constitutes

a translation of a mark considered well-known in
accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or
services which are not similar to those with respect to
which registration is applied for: Provided, That use of the
mark in relation to those goods or services would indicate
a connection between those goods or services, and the
owner of the registered mark: Provided further, That the
interests of the owner of the registered mark are likely to
be damaged by such use;

g. Is likely to mislead the public, particularly as to the

nature, quality, characteristics or geographical origin of the
goods or services;

h. Consists exclusively of signs that are generic for the

goods or services that they seek to identify;

i. Consists exclusively of signs or of indications that have

become customary or usual to designate the goods or
services in everyday language or in bona fide and
established trade practice;

j. Consists exclusively of signs or of indications that may

serve in trade to designate the kind, quality, quantity,
intended purpose, value, geographical origin, time or
production of the goods or rendering of the services, or
other characteristics of the goods or services;
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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

The aforementioned provision clearly provides for the non-

registrable marks and none of which applies to the application
of the registrant, therefore it is registrable. Subsequently,
under Section 124 of the Same Rules, the applicant or the
registrant shall file a declaration of actual use of the mark with
evidence to that effect, as prescribed by the Regulations within
three (3) years from the filing date of the application.
Otherwise, the application shall be refused or the mark shall be
removed from the Register by the Director.

Hence, it is very clear that the Regsitrant has valid ground to

file for the Application of Registration of her Trademark
“GiftrAir” for the reason that it is registrable under the
Intellectual Property Code”. The registrant meets all the
requirements for registrability of marks under Sec 123.1 of
the Intellectual Property Code Part III The law of
Trademarks, Service Marks and Trade Names (R.A.8293).

II. REGISTRANT HAS APPLICATION FOR REGISTRATION OF THE

PATENT FOR “Solar Panel in a Backpack” MUST BE DENIED ON THE
GROUND OF LACK OF NOVELTY

Under Section 21 of the Intellectual Property Code Part III The

law of Trademarks, Service Marks and Trade Names
(R.A.8293), the patentable inventions are any technical
solution of a problem in any field of human activity that is new,
involves an inventive step, and is industrially applicable. It
may be, or may relate to, a product, process or any
improvement of thereof.

1. An invention is considered new if it does not form part of a

prior art.
2. An invention involves an inventive step if, having regard to a
prior art, it is not obvious to a person skilled in the art at the
time of the filing date or priority date of the application
claiming the invention.
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3. An invention that can be produced and used in any industry

shall be industrially applicable.

After a careful review of the application filed by the registrant

before us, we are not satisfied on the validity of registrant’s patent on
the ground of lack of novelty. There already exist a patent holder of
Solar Panel in a BackPack which is now available in the market
worldwide.

It has been repeatedly held that an invention must possess the

essential elements of novelty, originality and precedence and for the
patentee to be entitled to protection, the invention must be new to the
world. Accordingly, a single instance of public use of the invention by a
patentee for more than two years (now for more than one year only
under Sec. 9 of the Patent Law) before the date of his application for
his patent, will be fatal to, the validity of the patent when issued.
(Frank, et al. v. Kosuyama Vargas v. F.M. Yaptico & Co. and Vargas v.
Chua, et al.).

The law provides:

SEC. 9. Invention not considered new or patentable.

— An invention shall not be considered new or capable of
being patented if it was known or used by others in the
Philippines before the invention thereof by the inventor
named in an application for patent for the invention; or if it
was patented or described in any printed publication in the
Philippines or any foreign country more than one year
before the application for a patent therefor; or if it had been
in public use or on sale in the Philippines for more than one
year before the application for a patent therefor; or if it is
the subject matter of a validity issued patent in the
Philippines granted on an application filed before the filing
of the application for patent therefor.

Under the above established principles, therefore, the

Registration for Patent must be denied.

Submitted by:

CHERRY JEAN O. ROMANO