CHAPTER IV under the control of the registered owner of
the collective mark.
TRADEMARK
The present law introduces significant
innovations in the law on trademark. Among
these changes are:
1. The requirement of prior use of the
mark as requisite for the filling of
trademark registration has been
removed.
2. Use or registration in the Philippines
of well-known marks is no longer
required for its protection to similar
goods. If the well-known marks are
registered, such registration can
prohibit its use even to non-related
products.
3. The supplemental register has been
abolished.
Trademark – a distinctive mark of
authenticity through which the merchandise
of a particular producer or manufacturer may
be distinguished from that of others and its
sole function is to designate distinctively the
origin of the products to which it is attached.
- Any word, name, symbol or
device adopted and used by a
manufacturer or merchant to
identify his goods and
distinguish them from those
manufactured and sold by
others.
Mark – any visible sign capable of
distinguishing the goods and services of an
enterprise and shall include a stamped or
marked container of goods.
Collective Mark – any visible sign
designated as such in the application for
registration and capable of distinguishing the
origin or any other common characteristics,
including the quality of goods or services of
different enterprises which use the sign
NB: Registration of a trademark by itself
is not a mode of acquiring ownership.
Registration – 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.
Function of Trademark (Philippine
Jurisprudence) – to point out distinctly the
origin or ownership of the goods to which it is
affixed; to secure to him, who has been
instrumental in bringing into the market a
superior article of merchandise, the fruit of
his industry and skill; to assure the public that
they are procuring the genuine article; to
prevent fraud and imposition and to protect
the manufacturer against substitution and
sale of an inferior and different article as his
product.
Modern Authorities on Trademark law
view Trademark as performing 3 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
Symbols – used to identify ownership or
origin of articles for several centuries.
Under Sec 213 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 foreign
nation, 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
(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;
(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.
NB: The law falsely disallows the false
suggestion of connection to a person, an
institution, or a belief. Actual claim of
connection is unnecessary also the
popularity of the person or institution is
immaterial.
NB: The use of identical mark, if taken
alone, does not automatically guarantee a
finding of trademark infringement.
Related Goods or Services – are those
that, though non-identical or non-similar are
so logically connected to each other that they
may reasonably be assumed to originate
from one manufacturer or from economically-
linked manufacturers. In determining
whether goods or services are related,
several factors may be considered. Some of
those factors recognized in our jurisprudence
are:
1. The business (and its location) to
which the goods belong
2. The class of product to which the
goods belong
3. The product’s quality, quantity, or
size, including the nature of the
package, wrapper or container
4. The nature and cost of the articles
5. The descriptive properties, physical
attributes or essential characteristics
with reference to their form,
composition, texture or quality
6. The purpose of the goods
7. Whether the article is bough for
immediate consumption, that is, day-
to-day household items
8. The fields of manufacture
9. The conditions under which the
article is usually purchased and
10. The channels of trade through which
the goods flow, how they are
distributed, marketed, displayed and
sold.
Colorable Imitation – denotes such a close
or ingenious imitation as to be calculated to
deceive ordinary persons, or such a
resemblance to the original as to deceive an
ordinary purchaser giving such attention as a
purchaser usually gives, as to cause him to
purchase the one supposing it to be the
other.
2 types of Confusion in Trademark
Infringement:
1. Confusion of goods – when a
prudent purchaser is induced to
purchase one product in the belief
that he is purchasing another, in
which case defendant’s goods are
then bought as the plaintiff’s and its
poor quality reflects badly on the
plaintiff’s reputation.
2. Confusion of business – when the
goods of the parties are different but
the defendant’s product can
reasonably be assumed to originate
from the plaintiff, thus deceiving the
public into believing that there is
some connection between the
plaintiff and defendant which in fact
does not exist.
Dominancy Test – focuses on the similarity
of the prevalent features of the competing
trademarks which might cause confusion or
deception, and thus infringement. If the
competing trademark contains the main,
essential or dominant features of another
and confusion or deception is likely to result,
infringement takes place.
Test of Dominancy is a way to determine
whether there exists an infringement of a
trademark by:
1. Determining if the use of the mark
has been dominant in the market
2. Focusing on the similarity of the
prevalent features of the competing
marks which might create confusion
3. Looking at the mark whether they are
similar in size, form or color
4. Looking at the mark whether there is
one specific feature that is dominant
NB: While proof of actual confusion is the
best evidence of infringement, its
absence is inconsequential.
NB: The law disallows the use of a mark
that is identical with or is confusingly
similar with as well-known mark even if
such mark is not registered in the
Philippines & if such well-known mark is
registered in the Philippines, the
prohibition to use that mark by another
entity extends to non-related goods or
services.
In determining whether a mark is well-
known, the ff criteria or any combination
thereof maybe taken into account:
1. The duration, extent and
geographical area of any use of the
mark, in particular, the duration,
extent and geographical area of any
promotion of the mark, including
advertising or publicity and
presentation at fairs or exhibitions of
the goods and/or services to which
the mark applies.
2. The market share in the Philippines
and in other countries, of the goods
and/or services to which the mark
applies
3. The degree of the inherent or
acquired distinction of the mark
4. The quality image or reputation
acquired by the mark
5. The extent to which the mark has
been registered in the world
6. The exclusivity of the registration
attained by the mark in the world
7. The extent to which the mark has
been used in the world
8. The exclusivity of use attained by the
mark in the world
9. The commercial value attributed to
the mark in the world
10. The record of successful protection of
the rights in the mark
11. The outcome of litigations dealing
with the issue of whether the mark is
a well-known mark
12. The presence of absence of identical
or similar goods or services and
owned by persons other than the
person claiming that his mark is a
well-known mark
NB: 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.
Geographically descriptive term – any
noun or adjective that designates
geographical location and would tend to be
regarded by buyers as descriptive of the
geographic location of origin of the goods or
services. It can indicate any geographic
location on earth, such as continents,
nations, regions, states, cities, streets and
addresses, areas of cities, rivers and any
other location referred to by a recognized
name.
PROCEDURE IN TRADEMARK
REGISTRATION:
1. A request for registration
2. The name and address of the
applicant
3. The name of a state of which the
applicant is a national or where he
has domicile; and the name of a state
in which the applicant has a 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:
 a) The name of the state with whose
national office the earlier
application was filed or if filed with
an office other than a national
office, the name of that office
b) The date on which the earlier
application was filed and
c) Where available, the application
number of the earlier application
7. Where the applicant claims color as a
distinctive feature of the mark, a
statement to that effect as well as the
name or names of the color or colors
claimed and an indication in respect
of each color, of the principal parts of
the mark which are in that color
8. Where the mark is a 3-dimensional
mark, a statement to that effect
9. One or more reproductions of the
mark as prescribed in the regulations
10. A transliteration or translation of the
mark or of some parts of the mark as
prescribed in the regulations
11. The names of the goods or services
for which the registration is sought,
grouped according to the classes of
the Nice Classification, together with
the number of 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:
- May be a natural or juridical
person
- If there are more than one
applicant, all of them should
be named as applicant but
anyone may sign the
application for and in behalf of
all the applicants
- Applicant may file and
prosecute the application
through an attorney or other
person authorized to practice
in such matters by the office.
- If the applicant is not
domicile or has no real and
effective commercial
establishment in the
Philippines, he shall
designate by a written
document filed in the office,
the name and address of a
Philippine resident who may
be served notices or process
in proceedings affecting the
mark. The written document
shall be submitted ti the office
within 60 days from filing date
without need of any notice
from the office. Such notices
or services may be served
upon the person designated
by leaving a copy at the
address specified and if the
person cannot be found at the
address then such notice of
process may be served upon
the Director of Bureau of
Trademark.
CLASSIFICATION OF GOODS:
TITLE CLASS:
1. Chemicals used in industry, science
and photography, as well as in
agriculture, horticulture and forestry;
unprocessed artificial resins,
unprocessed plastics; manures; fire
extinguishing compositions;
tempering and soldering
preparations; chemical substances
for preserving foodstuffs; tanning
substances; adhesives used in
industry.
2. Paints, varnishes, lacquers;
preservatives against rust and
against deterioration of wood;
colorants; mordants; raw natural
resins; metals in foil and powder form
 for painters, decorators, printers and and instruments; apparatus and
artists. instruments for conducting,
3. Bleaching preparations and other switching, transforming,
substances for laundry use; cleaning, accumulating, regulating or
polishing, scouring and abrasive controlling electricity; apparatus for
preparations; soaps; perfumery, recording, transmission or
essential oils, cosmetics, hair lotions; reproduction of sound or images;
dentifrices. magnetic data carriers, recording
4. Industrial oils and greases; discs; automatic vending machines
lubricants; dust absorbing, wetting and mechanisms for coin-operated
and binding compositions; fuels apparatus; cash registers, calculating
(including motor spirit) and machines, data processing
illuminants; candles and wicks for equipment and computers; fire-
lighting extinguishing apparatus.
5. Pharmaceutical and veterinary 10. Surgical, medical, dental and
preparations; sanitary preparations veterinary apparatus and
for medical purposes; dietetic instruments, artificial limbs, eyes and
substances adapted for medical use, teeth; orthopedic articles; suture
food for babies; plasters, materials for materials.
dressings; material for stopping 11. Apparatus for lighting, heating, steam
teeth, dental wax; disinfectants; generating, cooking, refrigerating,
preparations for destroying vermin; drying, ventilating, water supply and
fungicides, herbicides. sanitary purposes.
6. Common metals and their alloys; 12. Vehicles; apparatus for locomotion
metal building materials; by land, air or water.
transportable buildings of metal; 13. Firearms; ammunition and
materials of metal for railway tracks; projectiles; explosives; fireworks.
non-electric cables and wires of 14. Precious metals and their alloys and
common metal; ironmongery, small goods in precious metals or coated
items of metal hardware; pipes and therewith, not included in other
tubes of metal; safes; goods of classes; jewelry, precious stones;
common metal not included in other horological and chronometric
classes; ores. instruments.
7. Machines and machine tools; motors 15. Musical instruments.
and engines (except for land 16. Paper, cardboard and goods made
vehicles); machine coupling and from these materials, not included in
transmission components (except for other classes; printed matter;
land vehicles); agricultural bookbinding material; photographs;
implements other than hand- stationery; adhesives for stationery or
operated; incubators for eggs. household purposes; artists’
8. Hand tools and implements (hand- materials; paint brushes; typewriters
operated); cutlery; side arms; razors. and office requisites (except
9. Scientific, nautical, surveying, furniture); instructional and teaching
photographic, cinematographic, material (except apparatus); plastic
optical, weighing, measuring, materials for packaging (not included
signaling, checking (supervision), in other classes); printers’ type;
life-saving and teaching apparatus printing blocks.
17. Rubber, gutta-percha, gum,
asbestos, mica and goods made from
these materials and not included in
other classes; plastics in extruded
form for use in manufacture; packing,
stopping and insulating materials;
flexible pipes, not of metal.
18. Leather and imitations of leather, and
goods made of these materials and
not included in other classes; animal
skins, hides; trunks and travelling
bags; umbrellas, parasols and
walking sticks; whips, harness and
saddlery
19. Building materials (non-metallic);
non-metallic rigid pipes for building;
asphalt, pitch and bitumen; non-
metallic transportable buildings;
monuments, not of metal.
20. Furniture, mirrors, picture frames;
goods (not included in other classes)
of wood, cork, reed, cane, wicker,
horn, bone, ivory, whalebone, shell,
amber, mother-of-pearl,
meerschaum and substitutes for all
these materials, or of plastics.
21. Household or kitchen utensils and
containers (not of precious metal or
coated therewith); combs and
sponges; brushes (except paint
brushes); brush-making materials;
articles for cleaning purposes; steel
wool; unworked or semi-worked
glass (except glass used in building);
glassware, porcelain and
earthenware not included in other
classes.
22. Ropes, string, nets, tents, awnings,
CLASSIFICATION
tarpaulins, sails, sacks and bags (not
SERVICES:
included in other classes); padding
and stuffing materials (except of
rubber or plastics); raw fibrous textile
materials.
23. Yarns and threads, for textile use.
24. Textiles and textile goods, not
included in other classes; bed and
table cover
25. Clothing, footwear, headgear.
26. Lace and embroidery, ribbons and
braid; buttons, hooks and eyes, pins
and needles; artificial flowers
27. Carpets, rugs, mats and matting,
linoleum and other materials for
covering existing floors; wall
hangings (nontextile).
28. Games and playthings; gymnastic
and sporting articles not included in
other classes; decorations for
Christmas trees.
29. Meat, fish, poultry and game; meat
extracts; preserved, dried and
cooked fruits and vegetables; jellies,
jams, compotes; eggs, milk and milk
products; edible oils and fats.
30. Coffee, tea, cocoa, sugar, rice,
tapioca, sago, artificial coffee; flour
and preparations made from cereals,
bread, pastry and confectionery, ices;
honey, treacle; yeast, baking-
powder; salt, mustard; vinegar,
sauces (condiments); spices; ice.
31. Agricultural, horticultural and forestry
products and grains not included in
other classes; live animals; fresh
fruits and vegetables; seeds, natural
plants and flowers; foodstuffs for
animals, malt.
32. Beers; mineral and aerated waters
and other non-alcoholic drinks; fruit
drinks and fruit juices; syrups and
other preparations for making
beverages.
33. Alcoholic beverages (except beers).
34. Tobacco; smokers’ articles; matches
OF BUSINESS OR
35. Advertising; business management;
business administration; office
functions.
36. Insurance; financial affairs; monetary
affairs; real estate affairs.
37. Building construction; repair;
installation services.
 38. Telecommunications
39. Transport; packaging and storage of
goods; travel arrangement
40. Treatment of materials.
41. Education; providing of training;
entertainment; sporting and cultural
activities
42. Scientific and technological services
and research and design relating
thereto; industrial analysis and
research services; design and
development of computer hardware
and software; legal services.
43. Services for providing food and drink;
temporary accommodation.
DISCLAIMERS - The applicant may be
allowed or may be required to disclaim an
unregistrable component of an otherwise
registrable mark but such disclaimer shall not
RULE 205. Contents of the Declaration
and Evidence of Actual Use. –
(a) The declaration shall be under
oath and filed by the applicant or registrant
(or the authorized officer in case of a juridical
entity) or the attorney or authorized
representative of the applicant or registrant.
The declaration must refer to only one
application or registration, shall contain the
name and address of the applicant or
registrant declaring that the mark is in actual
use in the Philippines, the list of goods or
(b) Actual use for some of the goods
and services in the same class shall
constitute use for the entire class of goods
and services. Actual use for one class shall
be considered use for related classes. In the
event that some classes are not covered in
the declaration, a subsequent declaration of
actual use may be filed for the other classes
of goods or. Services not included in the first
declaration, provided that the subsequent
declaration is filed within the three-year
period or the extension period, in case an
extension of time to file the declaration was
timely made. In the event that no subsequent
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
rights on another application of later date if
the disclaimed matter became distinctive of
the applicant’s or owner’s goods, business or
services.
DECLARATION OF ACTUAL USE – the
applicant or registrant shall file a declaration
of actual use of the mark with evidence to
that effect, as prescribed by the Regulations
within 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 of
Trademarks.
services where the mark is used, the name/s
of the establishment and address where the
products are being sold or where the
services are being rendered. If the goods or
services are available only by online
purchase, the website must be indicated on
the form in lieu of name or address of the
establishment or outlet. The applicant or
registrant may include other facts to show
that the mark described in the application or
registration is actually being used in the
Philippines. The date of first use shall not be
required.
declaration of actual use for the other classes
of goods and services is filed within the
prescribed period, the classes shall be
automatically dropped from the application or
registration without need of notice to the
applicant or registrant.
( c) The following shall be accepted
as proof of actual use of the mark: (1)
labels of the mark as these are used; (2)
downloaded pages from the website of the
applicant or registrant clearly showing that
the goods are being sold or the services are
being rendered in the Philippines; (3)
photographs (including digital photographs
printed on ordinary paper) of goods bearing
the marks as these are actually used or of the
stamped or marked container of goods and
of the establishment/s where the services are
being rendered; ( 4) brochures or advertising
materials showing the actual use of the mark
on the goods being sold or services being
rendered in the Philippines; (5) for online
sale, receipts of sale of the goods or services
rendered or other similar evidence of use,
showing that the goods are placed on the
market or the services are available in the
Philippines or that the transaction took place
in the Philippines; (6) copies of contracts for
services showing the use of the mark.
Computer printouts of the drawing or
reproduction of marks will not be accepted as
evidence of use.
(d) The Director may, from time to
time, issue a list of acceptable evidence of
use and those that will not be accepted by
the Office.
Section 127. Filing Date. Requirements. -
The filing date of an application shall be the
date on which the Office received the
following indications and elements in English
or Filipino:
(a) An express or implicit indication
that the registration of a mark is
sought;
(b) The identity of the applicant;
(c) Indications sufficient to contact the
applicant or his representative, if any;
(d) A reproduction of the mark whose
registration is sought; and
(e) The list of the goods or services
for which the registration is sought.
127.2. No filing date shall be
accorded until the required fee is
paid.
NB: If the application does not satisfy the
filing date requirements, the Bureau shall
notify the applicant who shall, within a
period of one month from mailing date of
the notice, complete or correct the
application as required; otherwise, the
application shall be considered
withdrawn.
NB: If the application does not satisfy the
requirements for grant of a filing date at
the time that the filing fee and other
indications were received by the Office,
the filing date that was given shall be
cancelled and a new filing date shall be
entered in the records of the Office. The
new filing date shall be the date on which
the Office received the completed or
corrected application as specified in the
notice to the applicant.
PRIORITY RIGHT – an application for
registration of a mark filed in the Philippines
by a person and who previously duly filed an
application for registration of the same mark
in one of those countries, shall be considered
as filed as of the day the application was first
filed in the foreign country.
NB: No registration of a mark in the
Philippines by a person described in Sec
131 shall be granted until such mark has
been registered in the country of origin of
the applicant.
EXAMINATION PROCEDURE – the
examination begins with the determination
whether the application meets the filing date
requirements under Sec 127. If so, the office
shall examine whether the application meets
the requirements in Sec 124 and the mark as
defined in Sec 121 is registrable under Sec
123. Where all the conditions of applications
requirements and registrability are met, the
Office, shall upon payment of the fee,
forthwith cause the application as filed to be
published in the prescribed manner.
REVIVING ABNADONED APPLICATION –
an abandoned application may be revived as
a pending application within 3 months from
the date of the abandonment, upon good
case shown and the payment of the required
fee.
OPPOSING AN APPLICATION – any
person who believes that he would be
damaged by the registration of a mark may
upon payment of the required fee and within
30 days after the publication referred in Sec
133.2, file with the Office an opposition to
application. The opposition shall be in writing
and verified by the oppositor or by any
person on his behalf who knows the facts. It
shall specify the ground on which it is based
and include a statement of facts relied upon.
Copies of the certificate of registration of
marks registered in other countries or other
supporting documents mentioned in the
opposition shall be filed together with the
translation in English.
PRIMA FACIE EVIDENCE OF VALIDITY –
a certificate of registration of mark shall be
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.
ISSUANCE AND PUBLICATION OF
CERTIFICATE – the certificate of registration
shall be issued when the period for filing the
opposition has expired, or when the Director
of Legal Affairs shall have denied the
opposition and upon payment of the required
fee.
CANCELLATION OR AMENDMENT OF
CERTIFICATE – upon the application of the
registrant 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 mark.
CORRECTION IN CASE OF A MISTAKE
OF IPO – if such mistake is incurred through
the fault of the office, a certificate stating the
fact and nature of such mistake shall be
issued without charge, the fact and nature of
such mistake shall be issued without charge,
recorded and a printed copy shall be
attached to each printed copy of the
registration. Such corrected registration shall
have the same effect as the original
certificate.
USE OF A MARK IN A DIFFERENT FORM
– the use of mark in a different 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.
USE OF A MARK FOR GOODS
BELONGING TO THE CLASS
REGISTERED – 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.
USE OF A MARK BY RELATED COMPANY
– 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.
DURATION OF CERTIFICATE OF
REGISTRATION – a certificate of
registration shall remain in force for 10 years
provided that the registrant shall file a
declaration of actual use and evidence to that
effect or shall show valid reasons based on
the existence of obstacles to such use, within
1 year from the 5th anniversary of the date of
the registration of the mark.
RENEWAL – a certificate of registration may
be renewed for a period of 10 years at its
expiration upon payment of the prescribed
fee and upon filing of a request. The request
shall contain the following:
1. An indication that renewal is sought
2. The name and address of the
registrant or his successor-in-interest
referred to as the “right holder”
3. The registration number of the
registration concerned
4. The filing date of the application
which resulted in the registration
concerned to be renewed
5. Where the right holder has a
representative, the name and
address of the representative
6. The names of the recorded goods or
services for which the renewal is
requested or the names of the
recorded goods or services for which
the renewal is not requested,
grouped according to the classes of
NICE Classification to which that
group of goods or services belongs
and presented in the order of the
classes of the said classification and
7. A signature by the right holder or his
representative
EXCLUSIVE RIGHT OVER THE MARK –
the owner of a registered mark shall have the
exclusive right to prevent all third parties not
having the owner’s consent from using 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.
RIGHTS CONFERRED TO OWNER OF
WELL-KNOWN MARK – the exclusive right
of the owner of a well-known mark 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 and provided further that the interest of
the owner of the registered mark are likely to
be damaged by such use.
LIMITATION – 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 indication of
origin, or time of production or of supply, of
their goods or services provided that such
use is confined to purposes of mere
identification or information and cannot
mislead the public as to the source of goods
or services.
ASSIGNMENT OF REGISTERED MARK –
an application for registration of mark or its
registration may be assigned or transferred
with or without the transfer of the business
using the mark. Such assignment or transfer
shall 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.
FORM OF ASSIGNMENT – shall be in
writing and require the signatures of the
parties. Transfers by mergers or other forms
of succession may be made by any
document supporting such transfer.
RECORDING OF ASSIGNMENT AND
TRANSFER – 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.
CANCELATTION OF REGISTRATION:
- A petition to cancel a
registration of 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.
- The petition may be filed
within 5 years from the date of
the registration of mark.
- The petition may be filed at
any time if it is based on the ff:
1. If the registered mark
becomes the generic
name for the goods or
services, or a portion
thereof, for which it is
registered
2. Mark has been abandoned
3. Registration of the mark
was obtained fraudulently
or contrary to the
provisions of the law
4. The registered mark is
being used by, or with the
permission of the
registrant so as to
misinterpret the source of
the goods or services on
or in connection with which
the mark is used
5. 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 3
years or longer.
EFFECT OF CANCELLATION – 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 judgement becomes final, any right
conferred by such registration upon the
registrant or any person in interest of records
shall terminate. Notice of cancellation shall
be published in the IPO Gazette.
TRADEMARK DILUTION – 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.
ACTION FOR FALSE OR FRAUDULENT
DECLARATION – any person who shall
procure registration in the office of a mark by
a false or fraudulent declaration or
representation, whether oral or in writing, or
by any false means, shall be liable in a civil
action by any person injured for any
damages sustained in consequence thereof.
INFRINGEMENT ACTION BY A FOREIGN
NATIONAL – any foreign national or juridical
person who meets the requirements of
Section 3 and does not engage in business
in the Philippines may bring a civil or
administrative action 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.
PRIOR USER – a registered mark shall have
no effect against any person who in good
faith before the filing date or the priority date,
was using the mark for the purposes of his
business or enterprises.
TRADE NAME – means the name or
designation identifying or distinguishing an
enterprise. Also called as “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 id
contrary to public order or
morals and if in particular is
liable to deceive trade circles
or the public as to the nature
of the enterprise identified by
that name.
 - Such names shall be
protected even prior to or
without registration against
any unlawful act committed by
third parties.
CORPORATE NAMES – no corporate name
shall be allowed by the Commission if it is not
distinguishable from that already reserved or
registered for the use of another corporation
or if such name is already protected by law,
or when its use is contrary to such existing
laws. A name is not distinguishable even
if it contains one or more of the ff:
1. The word corporation, company,
incorporated, limited, limited liability
or an abbreviation of such words and
2. Punctuations, articles, conjunctions,
contractions, prepositions,
abbreviations, different tenses,
spacing or number of the same word
or phrase.
vendor of such goods or any agent of any
vendor engaged in selling such goods with a
like purpose;
(b) Any person who by any artifice, or device,
or who employs any other means calculated
to induce the false belief that such person is
offering the services of another who has
identified such services in the mind of the
public; or
(c) Any person who shall make any false
statement in the course of trade or who shall
commit any other act contrary to good faith of
a nature calculated to discredit the goods,
business or services of another.

UNFAIR COMPETITION – a person who has

identified in the mind of the public the goods
he manufactures or deals in, his business or
services from those of others, whether or not
a registered mark is employed, has a
property right in the goodwill of the said
goods, business or services or so identified,
which will be protected in the same manner
as other property rights.

GUILTY OF UNFAIR COMPETITION:

(a) Any person, who is selling his goods and

gives them the general appearance of goods
of another manufacturer or dealer, either as
to the goods themselves or in the wrapping
of the packages in which they are contained,
or the devices or words thereon, or in any
other feature of their appearance, which
would be likely to influence purchasers to
believe that the goods offered are those of a
manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise
clothes the goods with such appearance as
shall deceive the public and defraud another
of his legitimate trade, or any subsequent