TRADEMARKS codal made by me

Mark

any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise

Visible sign

Requirements:

Capable of distinguishing the goods of an enterprise

Requirements:

any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective

Collective mark:

Trade name:

name or designation identifying or distinguishing an enterprise

How acquired:

The rights in a mark shall be acquired through registration (from the filing date of application) with the IPO.

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

Non-registrable marks:

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

Non-registrable marks:

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

Non-registrable marks:

The same goods or services

Identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:

Closely related goods or services

Identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:

If it nearly resembles such a mark as to be likely to deceive or cause confusion

Identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:

Identical with, or confusingly similar to, or constitutes a translation if 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

Non-registrable marks:

Identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known, 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

Non-registrable marks:

Likely to mislead the public, particularly as to the nature, quality, characteristics, or geographical origin of the goods or services

Non-registrable marks:

Generic terms for goods or services

Non-registrable marks:

Descriptive marks

Non-registrable marks:

Customary sign in everyday language

Non-registrable marks:

Color by itself

Non-registrable marks:

Shapes

Non-registrable marks:

Contrary to public order or morality

Non-registrable marks:

A request for registration

Contents of Trademark Application: (in Filipino or English)

Name and address of the applicant

Contents of Trademark Application: (in Filipino or English)

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

Contents of Trademark Application: (in Filipino or English)

If applicant is a juridical entity, the law under which it is organized and existing

Contents of Trademark Application: (in Filipino or English)

Appointment of an agent or representative, if the applicant is not domiciled in the Philippines

Contents of Trademark Application: (in Filipino or English)

If applicant claims priority of an earlier application:

not required before registration, however, there must be actual use after registration

Prior Use:

Any application referring to several goods or services (initial application) may be divided by the applicant into 2 or more applications (divisional applications), by distributing among the latter the goods or services referred to in the initial application

Division of Application:

must be filed within 3 years from the filing date of application; otherwise, application shall be refused or the mark shall be removed from the Register; after certificate of registration is issued, declaration must be filed within one year from the 5th anniversary of the date of registration

Declaration of Actual Use

The divisional applications shall preserve the filing date of the initial application or the benefit of the right of priority.

Division of Application

When the period for filing opposition has expired, or when the Director of Legal Affairs shall have denied the opposition, the IPO upon payment of the required fee, shall issue the certificate of registration.

Upon issuance of said certificate, notice thereof making reference to the publication of the application shall be published in the IPO Gazette

Issuance and Publication of Certificate:

prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right use the same in connection with the goods or services and those that are related thereto specified in the certificate;

may be renewed for periods of 10 years upon payment of prescribed fee and filing of request

Certificate of Registration:

focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement; question: whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers

Dominancy Test:

requires that the entirety of the marks in question be considered in resolving confusing similarity

Holistic Test

which is determined by competent authority (competent courts or Bureau of Legal Affairs of IPO) to be well-known internationally and in the Philippines, whether or not it is registered in the Philippines, as being already owned by someone taking into account the knowledge of the relevant sector in the Philippines which has been obtained as a result of the promotion of the mark

Well-known Mark:

exclusive right to prevent all third parties not having the owner’s consent from using in 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 by registration:

shall extend to goods and services which are not similar to those in respect of which the mark is registered: provided, that the 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: provided further, that the interests of the owner of the registered mark are likely to be damaged by such use.

Rights conferred by registration:

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 indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply, of their goods or services:

provided, that such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.

Use by third parties:

allowed with or without the transfer of the business using the mark; no effect against third parties until recorded at the IPO

Assignment of Application and Registration:

Any person who believes that he is or will be damaged by the registration may file with the Bureau of Legal Affairs:

Cancellation of Registration:

Within 5 years from the date of registration;

Cancellation of Registration:

At any time, a. if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or

Cancellation of Registration:

At any time, has been abandoned

Cancellation of Registration:

its registration was obtained fraudulently or contrary to law, o

Cancellation of Registration

if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of goods or services on or in connection with which the mark is used

Cancellation of Registration

if the registered owner of the mark without any 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

Cancellation of Registration

if the registered owner of the mark without any 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

Cancellation of Registration

may be excused if caused by circumstances arising independently of the will of the trademark owner

Non-use

lack of funds shall not excuse non-use

Non-use

if it does not alter its distinctive character, it is not a ground for cancellation

Misuse

Any person who shall, without the consent of the owner of the registered mark:

Use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark or the same container of a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive

Trademark Infringement:

Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive

Trademark Infringement

Damages: reasonable profit (doubled if there is actual intent to mislead or defraud)

Remedies

Impoundment of sales invoices and other documents evidencing sales

Remedies

Injunction

Remedies

Destruction of infringing material

Remedies

Criminal action

Remedies

In any suit for infringement, the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive.

Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words

Requirement of notice

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.

Rules in trade names or business names

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.

Rules in trade names or business names

Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties.

Rules in trade names or business names

In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful.

Rules in trade names or business names

Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name

Rules in trade names or business names

An application for registration of a collective mark shall designate the mark as a collective mark and shall be accompanied by a copy of the agreement, if any, governing the use of the collective mark.

Rules on collective marks:

The registered owner of a collective mark shall notify the Director of any changes made in respect of the agreement

Rules on collective marks

The court shall cancel the registration of a collective mark if the person requesting the cancellation proves that only the registered owner uses the mark, or that he uses or permits its use in contravention of the agreements or that he uses or permits its use in a manner liable to deceive trade circles or the public as to the origin or any other common characteristics of the goods or services concerned.

Rules on collective marks

The registration of a collective mark, or an application therefor shall not be the subject of a license contract

Rules on collective marks

Any person who shall employ deception or any other means contrary to good faith by which he shall pass the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result.

Unfair competition

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, who otherwise clothes the goods with such appearance

as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose

Unfair competition

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

Unfair competition

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

independent of the civil and administrative sanctions imposed by law, imprisonment from 2 years to 5 years and a fine ranging from P50,000.00 to P200,000.00

Criminal penalties