Course Code: BAM 026

Module #15

Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

Lesson Title: INTELLECUTAL PROPERTY LAW PART 2: Materials:

Trademark, Service Marks and Tradenames Student Activity Sheet
Lesson Objectives:
At the end of this module, I can: References:
1. Define and identify the functions of trademark, service marks Law on Obligations and
and tradenames. Contract by Atty. Andrix D.
2. Understand the registrability and rules in filing. Domingo,CPA,MBA
3. Explain the concept of trademark dilution, doctrine of
secondary meaning and colorable imitation.
4. State the process of renewal, transfer and cancellation of
trademark, service marks and tradenames.

Productivity Tip:
The starting point of goal achievement in every area is desire. He who has a “why” to
live can bear almost any how. Start with answering, why is there a need for you to
accomplish this and you will appreciate the fact that hard work is always a part of all
successful journey.

A. LESSON PREVIEW/REVIEW

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

1) Introduction (2 mins)

Even though it is not required by law, it is always a good idea to register the name of your business
as a trademark. In the event that another business tries to use the same or similar name, you will
have legal basis to stop it. Once registered, you have the exclusive right to all of your products and services and
it can also protect you from counterfeit products.

Trademarks provide protection for both businesses and consumers, making them an important part of running a
successful business.

2) Activity 1: What I Know Chart, part 1 (3 mins)

Try answering the questions below by writing your ideas under the first column What I Know.
What I Know Questions: What I Learned
1. Define trademark.

2. Explain “Trademark Dilution”

3. Explain “Colorable Imitation”

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

B. MAIN LESSON

1) Activity 2: Pre-Printed Content Notes (13 mins)

TRADEMARK:

According to R.A. No. 8293, trademark is any visible sign capable of

distinguishing goods.

Trademark is any distinctive word, name, symbol, emblem, sign or device

or any combination thereof adopted and used by a manufacturer or
merchant to identify his goods and distinguish them form those
manufactured, sold or dealt in by others.

Functions of Trademarks:

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; and
3. They advertise the articles they symbolize.

How Marks Are Acquired:

The rights in a mark shall be acquired through registration with

the Intellectual Property Office and made validly in accordance
with the provisions of the Republic Act No. 8293.

Unregistrable Mark:

Consist of immoral, deceptive or scandalous matter or matter which may disparage or falsely suggest a
connection with persons, living or dead, institution, beliefs or national symbols or bring them into contempt
or disrepute;
Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions
or of any foreign nation, or any simulation thereof;
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;
Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or
priority date;

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

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;
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;
Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin
of the goods or services;
Consists exclusively of signs that are generic for the goods or services that they seek to identify;
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 trad practice;
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;
Consist of shapes that may be necessitated by technical factors or by the nature of the goods themselves
or factors that affect their intrinsic value;
Consist of color alone, unless defined by a given form; or
Is contrary to public order or morality.

COLORABLE IMITATION:

It refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance
of the trademark or tradename with that of the other mark or tradename in their over-all presentation or in their
essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of
purchasing the genuine article.

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

TRADEMARK DILUTION:
It is the lessening of the capacity of a famous mark to identify and
distinguish goods or services, regardless of the presence or absence
of:
1. competition between the owner of the famous mark and other parties;
2. likelihood of confusion, mistake or deception

DOCTRINE OF SECONDARY MEANING:

Secondary meaning means that a word or phrase originally incapable
of exclusive appropriation with reference to an article in the market
(because it is geographically or otherwise descriptive) might
nevertheless have been used for so long and so exclusively by one
producer with reference to his article that, in the trade and to that branch
of the purchasing public, the word or phrase has come to mean that the
article was his property.

Who May Apply for A Mark:

The applicant may be a natural or juridical person.

All applications for a mark should be in the name of the applicant or applicants who may sign the
application.
If there is more than one applicant, all of them should be named as applicants, but any applicant may
sign the application for and on behalf of the all the applicants.

Effect of Death, Insanity or Incapacity of Applicant:

When the applicant dies, becomes insane or is otherwise incapacitated, the legally appointed executor,
administrator, guardian, conservator or representative of the dead or insane or incapacitated applicant may
prosecute the application on behalf of the heirs and successors-in-interest of the applicant.

Application Process:

Filing – The filing date of an application shall be the date on which the Office received the indications
and elements in English or Filipino as stated in Section 127. No filing date shall be accorded until the
required fee is paid.

Issuance of Application Number and Filing Date – The Office shall examine whether the application
satisfies the requirements for the grant of a filing date as provided in Section 127.

If the application meets the filing requirements, 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.
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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

If the application does not satisfy the filing requirements, the Office shall notify the applicant who shall
within a period fixed by the Regulations complete or cored the applications, otherwise, the application
shall be considered withdrawn.

Examination and Publication – Once the application meets the filing requirements, the Office shall
examine whether the application meets the requirements of Section 124, 121 and 123.

Where the Office finds that the conditions are fulfilled and upon payment of the prescribed fee, it will
cause the application to be published in the prescribed manner.

But 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 4 months to
reply or amend his application, which shall be then re-examined.

The final decision of refusal of the Director of Trademarks shall be appealable to the Director General.

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 days after the publication, file an opposition to the
application.

Issuance and Publication of Certificate – When the period for filing the opposition has expired, or when
the Director of Legal Affairs shall have denied the opposition, the Office upon payment of the required
fee, shall issue the certificate of registration.

CERTIFICATE OF TRADEMARK REGISTRATION:

It confers upon the trademark owner the exclusive right to sue those
who have adopted a similar mark not only in connection with the
goods or services specified in the certificate, but also with those that
are related thereto.

It is the prima facie evidence of the validity of the registration, the

registrant’s ownership of the mark and of the registrant’s exclusive
right to use the same in connection with the goods or services and
those that are related thereto specified in the certificate.

Renewal of Registration:
A certificate of registration shall remain in force for ten years and may
be renewed upon payment of the prescribed fee and upon filing of a
request.
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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

Assignment and Transfer of Application and Registration:

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.
Assignments and transfers shall have no effect against third parties until they are recorded at the Office.

Cancellation of Registration:

A petition to cancel a registration of a mark 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. (Section 151)
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 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.

TRADENAME:

It means the name or designation identifying or distinguishing an enterprise, also known or referred to a
s business identifier.
A name or designation may not be used as a trade name if by its nature or the use to which such name
or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive
trade circles or the public as to the nature of the enterprise identified by that name.
Tradenames shall be protected, even prior to or without registration, against any unlawful act committed
by third parties.

2) Activity 3: Skill-building Activities (with answer key) (18 mins + 2 mins checking)

Exercise I

1. Give an illustration of “colorable imitation”.

________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________

2. Can an application for registration of mark or the registration of a mark be assigned or transferred? Explain.
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________
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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

3. Can the applicant himself cause the cancellation of the registration? Explain.
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________

3) Activity 4: What I Know Chart, part 2 (2 mins)

It’s time to answer the questions in the What I know chart in Activity 1. Log in your answers in the table.

4) Activity 5: Check for Understanding (5 mins)

Exercise I. TRUE or FALSE

__________1. Tradename is any visible sign capable of distinguishing goods.

__________2. The rights in a mark shall be acquired through registration to Intellectual Property Office.
__________3. Foreign marks which are not registered are still accorded protection against infringement
and unfair competition.
__________4. Colorable imitation is the lessening of the capacity of a famous mark to identify and
distinguish goods or services regardless of the presence or absence of competition between the owner
of the famous mark and other parties.
__________5. Only natural person may apply for registration of trademark.
__________6. The applicant or the registrant shall file a declaration of actual use of the mark with
evidence to that effect within 5 years from the filing date of the application.
__________7. An abandoned application may not be revived.
__________8. The final decision of refusal of the Director of Trademarks is not appealable.
__________9. The certificate of registration is the prima facie evidence of the validity of the registration.
__________10. A certificate of registration may be renewed for a period of 20 years.

A. LESSON WRAP-UP

Activity 6: Thinking about Learning

Congratulations for finishing this module! Shade the number of the module that you finished

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

Did you have challenges learning the concepts in this module? If none, which parts of the module helped you
learn the concepts?
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________

Some question/s I want to ask my teacher about this module is/are:

________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________

Learning Scores Action Plan

Date
Target/Topic

What module# did you What contributed to the quality of your

What were your
What’s the do? What were the performance today? What will you do next
scores in the
date today? learning targets? What session to maintain your performance or
activities?
activities did you do? improve it?

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Name: ________________________________________ Class number: __________________

Section: _________ Schedule: _____________________ Date: _________________________

FAQs

An abandoned application may be revived as a pending application within three months from the date of
abandonment, upon good cause shown and the payment of the required fee.

The 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.

Upon petition by the registrant or the registrant’s authorized representative or agent, the Office may
permit any registration to be surrendered for cancellation. The petition for cancellation of registration shall
be under oath.

Upon request of the registrant or the registrant’s authorized representative or agent, and payment of the
prescribed fee, the Office, for good cause, may permit any registration to be amended or to be disclaimed
in part, provided, that the amendment or disclaimer does not alter materially the character of the mark.

Whenever material mistake in a registration through the fault of the Office is clearly disclosed by the
records of the Office, a new certificate of registration may be issued in accordance with the Regulations
and without charge. The registration will be published without charge.

Whenever a mistake is made in registration by the applicant and such mistake occurred in good faith, the
Office may issue a certificate upon the payment of the prescribed fee, provided, that the correction does
not involve any change in the registration that requires republication of the mark.

The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect
within three years from the filing date of the application.

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