Trademarks

Trademark vs Generic Term

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• What is a trademark
• Filing
• Registration process
• Maintaining a trademark
• Tips
What is a mark?
• “any visible sign distinguishing the goods or
services of an enterprise” (Sec. 121.1 RA 8293)
• Name or symbol you put on a product/service =
logos, brand names, tag lines
Functions of a trademark
• Source identifier
Functions of a trademark
• Differentiator

Photo from pepper.ph

Functions of a trademark
• Differentiator
Functions of a trademark
• Quality indicator
 “Yung pangalan lang
binabayaran mo diyan”
Benefits of TM registration

3Gs
• Grants exclusivity
• Gains recognition and reputation
• Generates goodwill
2018 Top Global Brands
(by Interbrands)
2018 Top Global Brands
(by Interbrands)
Top brand 2018: Apple
Top brand 2018: Apple
• Differentiation
– The degree to which consumers perceive the brand
to have a differentiated proposition and brand
experience
• Consistency
– The degree to which a brand is experienced without
fail across all touchpoints or formats
• Engagement
– The degree to which consumers show a deep
understanding of, active participation in, and a
strong sense of identification with the brand
What are the kinds of marks
I can register?
Types of marks

• According to COMPOSITION
– Word NIKE

– Symbol

– Phrase JUST DO IT

– Combination
Types of marks:
according to strength
• Made up words
Fanciful • Ex. Uniqlo, Xerox

• Word or image unrelated

Arbitrary to goods/services
• Ex. Apple, Arrow
• Requires consumers to
Suggestive connect product with mark
• Ex. Fresh, Flawless, Layas
• Merely describes the
Descriptive goods/services
• Ex. Sturdy, Durable
• Names of products they seek to identify
Generic • Ex. Kap Keyk, Sofa, Burger
Non-registrable marks
• Section 123 of the IP Code
– Immoral, deceptive, scandalous
– Flags, coats of arms, emblems
– Names, portraits, signatures
Non-registrable marks
• Section 123 of the IP Code
– Misleading
– Generic
– Customary

For Apples
MAHKINAH
How do I file a
trademark?
Routes of Protection
• National – application is directly filed with
IPOPHL

• International – application is filed with an office

of origin which is a party to Madrid Protocol
Filing a trademark

1. Fill out the form

a. Manually: Two copies of the Trademark
Application Form
b. Online: Access
onlineservices.ipophil.gov.ph/eTMfile
2. Submit and pay at the IPOPHL cashier
(manual filing) or your preferred
Dragonpay channel (online filing)
 THE OWNER OF THE MARK (Natural = person ; Juridical = company)

Required for applicants outside the PH and juridical applicants

 Brand name
Generic colors, if applicable
For non English/ words
LOGO

INDICATE CLASS NUMBER AND ACTUAL

SERVICE/GOODS OFFERED
TM Application Form
• Title of the Mark
• Claim of Color
– Optional, file only if your mark will not be produced
in varying colors. Fee is per Nice Class
• Transliteration/Translation
– Non-English words/characters need to be translated
• Disclaimer
– Generic and descriptive words need to be
disclaimed; Applicant understands that they do not
exclusively own the word/s
TM Application Form
• Convention Priority
– allows the applicant to file a subsequent
application in another country for the same
mark effective as of the date of filing the first
application (1 year)
– Madrid Protocol
TM Application Form
• Collective Mark
– distinguishes the origin or any other common
characteristic, including the quality of
goods/services businesses
TM Application Form

Three-dimensional • Stamped or marked

container of goods

3-DIMENSIONAL TRIANGULAR
PRISM SHAPE
WITH TOBLERONE SCRIPT AND
TOBLER LOGO
TM Application Form
• Nice Classification
– Must be specific
– Class 1-34: for goods
– Class 35-42: for services

– Example: Your company sells beverages

• Class 32: fruit juice
What’s next?
Trademark Fees

TYPES OF FEES SMALL BIG

Filing fee (per class) 1,212.00 2,617.92

Claim for Convention Priority (per class) 870.00 1,818.00
Claim of color, claim distinctiveness (per
class) 290.00 610.00

Allowance / Publication for Opposition 910.00 970.00

Issuance of Certificate of Registration (COR) 580.00 1,212.00
Publication of Registration (2nd Publication) 910.00 970.00
 Registration Process
Examination by
Registrability
File and Pay the Bureau of
Report
Trademarks

Applicant
Responds

Notice of
Allowance
(1st Publication)

No opposition
With opposition
after 30 days

Bureau of Legal
Affairs Registered 2nd Publication
ONIN’s Burger IP owners have the
ONIN’S BURGER
exclusive right to
WEALTHYMOND INCORPORATED
exclude or include
28 Upper McKinley Road, Fort Bonifacio, Taguig
City, Philippines others from
Burger
reproducing,
selling, or using
their work in the
Philippines
Maintaining your TM

• A trademark can be renewed every 10

years, provided that the Declaration of
Actual Use (DAU) is submitted on time
• Non compliance will result to the removal of your
mark from the registry
Maintaining your TM
• Declaration of Actual Use
– Within 3 years from the filing date
– Within 1 year from the 5th anniversary of the
registration date
– Within 1 year from the date of renewal
Maintaining your TM
• Example:
– Filing date: January 1, 2000
– Registration date: March 1, 2000

Maintenance Requirements:
– 1st DAU: before January 1, 2003
– 5th DAU: until March 1, 2006
– Renewal DAU: March 2011
Tips!
Use the brand database

www.wipo.int/branddb/ph
File your correspondence online

eDocFile
Know your application number
• Starts with “4”
• Format: 4/2019/000123

• IPOPHL Codes
– 1 – Patents
– 2 – Utility Models
– 3 – Industrial Designs
Know your examiner
• Indicated at the registrability report, if you will
receive one
When in doubt, ask us
• Landline: 2386300
• Email: dittb@ipophil.gov.ph
• Facebook page
IP AS ASSET
• Commercialize
• License
• Franchise
• Enhance market value of business
IP AS ASSET