Trademark and Service Mark Law
What constitutes a mark – A mark is “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise,” including a stamped or marked container of goods.
Same; What constitutes a collective mark – A collective mark is “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 under the control of the registered owner of the collective mark.”
Same; What constitutes a trade name – A trade name is “the name or designation identifying or distinguishing an enterprise.”
How marks are acquired –The rights in a mark are acquired through registration made validly in accordance with the provisions of this law. A mark may be registered unless it:
- 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;
- 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 latter;
- 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;
- 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: further, in determining whether a mark is well-known, account is to 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;
- 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; in addition, 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: further, the interests of the owner of the registered mark are likely to be damaged by such use;
- 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 trade 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;
- 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;
- Consists of color alone, unless defined by a given form; or
- Is contrary to public order or morality.
Ong Ai Gui v. Director of the Phil. Patent
G.R. No. L-6235, 28 March 28 1955 (En Banc)
Petitioner-applicant Ong Ai Gui filed an application with the Director of Patents for the registration of the following trade-name: “20th Century Nylon Shirts Factory.” It is stated in connection with the application that the trade-name was used for the first time by the applicant on Sept. 12, 1941 for his business described as follows: “General merchandise dealing principally in textiles, haberdasheries; also operating as manufacturer of shirts, pants and other men’s and women’s wears.” After being referred to an examiner, the latter in a report held that the words “shirt factory” are not registrable; so the applicant made a disclaimer of said words inserting a statement to that effect in his original application. Later, the Director ordered the publication of the trade-name in the Official Gazette. Before the expiration of the period for filing opposition, Atty. J.A. Wolfson, on behalf of E. I. Du Pont de Nemours and Company, presented an opposition on the following grounds:
- That the word “nylon” was a name coined by the company as the generic name of a synthetic fabric material, invented, patented, manufactured and sold by it and that this word is a generic term;
- That the use of the name “nylon” is descriptive or deceptively misdescriptive of the goods, business manufactures of the applicant; and
- That the use of the name would produce confusion in trade and would deceive the public; and that “nylon is not distinctive of applicant’s goods.
The Director dismissed the opposition since counsel did not submit authority to file in the corporate name and that subsequent authorization did not cure the general defect. However, the Director ruled that the application must be disapproved unless the word “nylon” is also disclaimed as it is a mere descriptive name of the business and that its registration is expressly forbidden by subsection (e) of Sec. 4 of RA 166, as amended by Sec. 2 of RA 638. Hence, Ong filed an appeal with the Supreme Court.
HELD: The decision of the Director of Patents was affirmed. The legal question is put up by the claim of Ong that while he admits that the generic term “nylon” is by itself alone descriptive and generic what he desires to register is not “nylon” alone but the whole combination of “20th Century Nylon Shirts Factory.” It is to be noted in answer to this contention that the Director has not completely denied the registration of the whole trade-name. He has made a conditional denial only, permitting the registration of the name but with the disclaimer of the terms “shirt factory” and “nylon.” The trade name may be registered, but applicant-appellant may not be entitled to the exclusive use of the terms “shirts factory” and “nylon” as against any other who may subsequently use the said terms, for the latter are merely descriptive or general terms, juris publici, incapable of appropriation by any single individual to the exclusion of others.
“A word of a combination of words which is merely descriptive of an article of trade, or of its composition, characteristics, or qualities, cannot be appropriated and protected as a trade-mark to the exclusion of its use by others. The reason for this is that inasmuch as all persons have an equal right to produce and vend similar articles, they also have the right to describe them properly and to use any appropriate language or words for that purpose, and no person can appropriate to himself exclusively any word or expression, properly descriptive of the article, its qualities, ingredients, or characteristics, and thus limit other persons in the use of language appropriate to the description of their manufactures, the right to the use of such language being common to all. The rule excluding descriptive terms has also been held to apply to trade-names. As to whether words employed fall within this prohibition, it is said that the true test is not whether they are exhaustively descriptive of the article designated, but whether in themselves, and as they are commonly used by those who understand their meaning, they are reasonably indicative and descriptive of the thing intended. If they are thus descriptive, and not arbitrary, they cannot be appropriated from general use and become the exlcusive property of anyone.” (52 Am. Jur. 542-543)
Best Legal Practices
- Meaning of “TM” and “®” – The symbol “TM” means pending that the mark is pending application; while, the symbol “®” means that the mark is registered.
- Place “TM” and “®” to serve as notice – While the symbols “TM” and “®” are not required to be placed on marks, it is best to place them to serve as notice and warning that that the marks are respectively pending application or registered already.
- Generic words not subject of trademark – Generic words cannot be the subject of trademark. When the brand is becoming a generic word used to refer to a particular good or service, it risks itself to losing its trademark protection. Hence, some businesses publish notices to the public advising them that their brands are unique marks and should not be used as generic words to refer to a good or service.
Same; Registration of distinctive mark – With respect to signs or devices mentioned in numbers 10, 11, 12 above, nothing is to prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. The IPO may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant’s goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five years before the date on which the claim of distinctiveness is made.
Same; Nature of goods –The nature of the goods to which the mark is applied will not constitute an obstacle to registration.
Trademark infringement – The owner of a registered mark may recover damages from any person who infringes his rights.  The measure of the damages suffered is based either: (a) on the reasonable profit which the complaining party would have made, had the defendant not infringed his rights; or (b) on the profit which the defendant actually made out of the infringement. If the previous measures of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party.
Same; Double damages – If actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled.
Same; Injunction – If the complainant is able to establish upon proper showing of his entitlement to an injunction, the same may be granted.
Corporation v. Petron Corporation
G.R. No. 194062, 17 June 2013
Plaintiffs Petron Corporation (registered trademark owner of GASUL and GASUL cylinders, which are used on GASUL LPG containers) and Shell Petroleum Corporation (authorized user of tradename, trademarks, symbols or designs of its principal, Shell International Petroleum Limited, including the marks SHELLANE and SHELL) initiated criminal complaints for trademark infringement and unfair competition against the defendants who were the directors and officers of Republic Gas Corporation (REGASCO). The Complaint alleged that the REGASCO was engaged in refilling gas cylinders bearing the marks GASUL and SHELLANE. The investigating prosecutor did not find probable cause, as well as the Department of Justice (DOJ), which affirmed such finding. On appeal, the Court of Appeals reversed the DOJ.
HELD: There is probable cause to hold defendants liable. It is clear that they have actually committed “trademark infringement when they refilled, without the respondents’ consent, the LPG containers bearing the registered marks” Plaintiffs. By their acts, defendants “will inevitably confuse the consuming public, since they have no way of knowing that the gas contained in the LPG tanks bearing [plaintiffs’] marks is in reality not the latter’s LPG product after the same had been illegally refilled. The public will then be led to believe that [defendants] are authorized refillers and distributors of [plaintiffs’] LPG products, considering that they are accepting empty containers of [defendants] and refilling them for resale.”
In Sec. 155 of R.A. 8293, “the mere unauthorized use
of a container bearing a registered trademark in connection with the sale,
distribution or advertising of goods or services which is likely to cause
confusion, mistake or deception among the buyers or consumers can be considered
as trademark infringement.” Moreover, Sec. 168.3 in relation to Sec. 170
of R.A. 8293, unfair competition – which is “the passing off
(or palming off) or attempting to pass off upon the public of the goods or
business of one person as the goods or business of another with the end and
probable effect of deceiving the public” – is prohibited.
 INTELLECTUAL PROPERTY CODE. Sec. 121.1.
 Ibid. Sec. 121.2.
 Ibid. Sec. 121.3.
 Ibid. Section 122.
 Ibid. Section 123 (a).
 Ibid. Section 123 (b).
 Ibid. Section 123 (c).
 Ibid. Section 123 (d).
 Ibid. Section 123 (e).
 Ibid. Section 123 (f).
 Ibid. Section 123 (g).
 Ibid. Section 123 (h).
 Ibid. Section 123 (i).
 Ibid. Section 123 (j).
 Ibid. Section 123 (k).
 Ibid. Section 123 (l).
 Ibid. Section 123.2.
 INTELLECTUAL PROPERTY CODE. Section 123.3.
 Ibid. Section 156.1.
 INTELLECTUAL PROPERTY CODE. Section 156.3.
 Ibid. Section 156.4.
 “Passing off (or palming off) takes place where the defendant, by imitative devices on the general appearance of the goods, misleads prospective purchasers into buying his merchandise under the impression that they are buying that of his competitors. Thus, the defendant gives his goods the general appearance of the goods of his competitor with the intention of deceiving the public that the goods are those of his competitor.” Here, “by refilling and selling LPG cylinders bearing their registered marks”, defendants are guilty of unfair competition as they sell their goods “by giving them the general appearance of goods of another manufacturer.” (Republic Gas Corporation v. Petron Gas Corporation, supra.)