TRADEMARK

Of all the intellectual property rights, it is the trademark that is richest in terms of local
jurisprudence. It has been defined as 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 products to which it is attached.

Section 121.1 of IPC defines trademark as any visible sign capable of distinguishing the
goods (trademark) or services (service mark) of an enterprise and shall include a stamped or
marked container or goods.

ACQUIRING A MARK

The rights in a mark shall be acquired through registration made validly in accordance
with the provisions of law (Section 122).

“Let it be remembered that duly registered trademarks are protected by law as

intellectual properties and cannot be appropriated by others without violating the due process
clause. An infringement of intellectual property rights is no less vicious and condemnable as
theft of material property, whether personal or real.”

It must be emphasized that registration of a mark is not similar to acquiring ownership therein.

FUNCTIONS:

A trademark merchandising is a short-cut which induces a purchaser to select what he wants, or

what he has led to believe he wants. The owner of a mark exploits this human propensity by
making every effort to impregnate the atmosphere of the market with the drawing power of a
congenial symbol. Whatever the means employed, the aim is the same - to convey through the
mark, in the minds of potential customers, the desirability of the commodity upon which it
appears.

MIRPURI v. COURT OF APPEALS [G.R. No. 114508, November 19, 1999]

In the Philippine jurisprudence, the function of a trademarks is 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.

They perform three distinct functions: (1) they indicate the 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.
 …trademark is not merely a symbol of origin and goodwill; it became product in their own
right, valued as status symbols and indicators of the preferences and aspirations of those who
use them.

Section 123 specifies marks that cannot be registered:

1. Consists of immoral, deceptive, or scandalous matter, or matter which may

disparage or falsely suggest a connection with persons, living or dead,
institutions or beliefs, or national symbols, or bring them in contempt or disrepute.
2. Consists of a 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.
3. 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.
4. Is identical with registered mark belonging to a different proprietor or a mark with
an earlier filing date, in respect of : (a) the same goods or services; (b) closely
related goods or services; (c) or if it nearly resembles such a mark as to be likely
to deceive or cause confusion
5. 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 a 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 the public at large,
including knowledge in the Philippines which has been obtained as a result of the
promotion of the mark.
6. 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 good or services which are not similar
to those with with respect to which registration is applied for, provided that the
use of the mark in relation to those good 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.
7. Is likely to mislead the public, particularly as to the nature, quality characteristics
or geographical origin of the goods or services.
8. Consists exclusively of signs or of indications that have become customary or
usual to designate the goods or services in everyday language or in bonafide and
established trade practices.
9. Consists exclusively of signs or of indications that may serve in trade ti designate
the kingdom 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.
10. 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.
11. Consists of the shapes that may be necessitated by technical factors or by the
nature of the goods themselves or factors that affect their intrinsic value.
12. Consists of color alone, unless defined by a given form
13. Is contrary to public order or morality.

FALSELY SUGGESTING CONNECTION

The law disallows 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 the institution is
immaterial. But of course, the popularity does matter for the infrigers for this is the rationale of
such prohibition, i.e., that no one may unjustly ride on the goodwill of another.

FREDCO MANUFACTURING CORPORATION. PRESIDENT and FELLOWS OF HARVARD

COLLEGE, G.R. No. 185917, June 1, 2011

Facts:
- Fredco Manufacturing Corporation, a Philippine corporation filed a Petition for
Cancellation of Registration No. 56561 before the Legal Affairs of the Intellectual
Property Office (IPO) against respondents President and Fellows of Harvard College
(Harvard University), a corporation organized and existing under the laws of
Massachusetts, United States of America.
- The registration (issued on November 25, 1993) in question pertains to the mark
“Harvard Veritas Shield Symbol for decals, tote bags, serving trays, sweatshirts, t-shirts,
hats and flying discs.

-
- Fredco alleged that the mark “Harvard” t-shirts, polo shirt, sandos, briefs, jackets and
slacks was first used in the Philippines on 2 January 1982 by New York Garments, a
domestic corporation and predecessor-in-interest.
- It further alleged that it was formed and registered with the Securities and Exchange
Commission on 9 November 1995 and had since then handled the manufacture,
promotion and marketing of “Harvard” clothing articles.
 - It further alleged that at the time the registration was issued to harvard, New York
Garments had already registered the mark Harvard, it was only cancelled on 30 July
1998 when New York Garments inadvertently failed to file and affidavit of use/non-used
on the fifth anniversary of the registration.
- Harvard University on the other hand, alleged that it was the owner of the name
“Harvard” among other countries, including the Philippines. It was alleged to have been
adopted in 1639 as the name of the Harvard College in Cambridge and was used in
commerce as early as 1872
- Harvard is over 350 years old and is highly regarded institution of higher learning in the
United States and in the whole world.

ISSUE:

Whether or not Fredco can use “HARVARD” as a trademark considering that it used the mark
ahead of the respondent?

Ruling:

1. Fredco’s registration of the mark “Harvard” should not have been allowed since it falsely
suggests a connection with Harvard University. Section 4 (a) of R.A. 166 protects the
right of publicity of famous individuals and institutions from commercial exploitation of
their goodwill by others.
2. Harvard University is entitled to protection in the Philippines or its trade name
“HARVARD: even without registration of such trade name in the Philippines under Article
8 of the Paris Convention, as well as Section 37 of R.A. No. 166. Thus, under the
Philippine law, a trade name of a national of a State that is a party to the convention,
whether or not the tradename forms part of a trademark, is protected without the
obligation of filing or registration.

IDENTICAL WITH REGISTERED MARKS

Among the reasons why traders would want to have their trademarks registered is
because they want to use it exclusively. One might think that traders will shy away from using a
mark that is already registered by another but, surprisingly, there are countless attempts to use
identical marks.