Law on Trademarks, Service Marks and Trade Names Mark- any visible sign capable of distinguishing the goods

(trademark) or services (service mark) of a an enterprise and shall include a stamped or marked container of goods. Trade Name - a name/designation identifying or distinguishing an enterprise. How Marks are Acquired? the rights in a marks is acquired through registration made validly in accordance with the provision of RA 8293 Registrability A mark cannot be registered if: 1. It is immoral, deceptive or scandalous matter or may disparage or has connection with persons, beliefs, institution or national symbols. 2. 3. Flag or coat of arms or other insignia of the Philippines or any of its subdivision, or any foreign nation. Name, portrait or signature of particular living individual -- except if it has written consent. Includes prez of the phil, during the lifetime of his widow -- except if there is consent 4. Identical to a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date.

1. 2. 3. 5. 6. 1. 7. 8. 9. 10.

same goods or service closely related g&s if nearly resembles as to likely deceive or cause confusion If it is well-known internationally, regardless if registered here. If it is well-known and is registered here. interest of the registered mark will be damaged If will likely mislead the public, as to nature, quality, characteristics or geographical origin of the G&S Exclusively signs that are generic for the G&S that they seek to identify Exclusively signs that have become customary or usual to designate the G&S Exclusively signs that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or the rendering of services

11. Shapes that affect their intrinsic value 12. 13. Consist of colour alone, unless defined by a given form Contrary to public order or morality

** 10, 11 and 12 may be registered if the mark has become distinctive as used in connection with the applicant's goods or services in commerce a prima facie evidence may suffice a proof of substantially exclusive and continuous use in the Phil for 5 years before the claim of distinctiveness is claimed

** Nature of goods to which the mark is applied will not constitute an obstacle in registration Section 124 = Requirements of Application 1. Request for registration 2. 3. 4. 5. Name & address of applicant State where he is national, state where he has a real and effective industrial or commercial establishment Where applicant is juridical entity -- law w/c it is organised and existing Appointment of agent/rep if he is not a domicile in Phil

Section 127 - Filing Date provides the 5 minimum requirements first to file basis 1. An express or implicit indication that a registration of a mark is sought 2. 3. 4. 5. Identity of the applicant Indications sufficient to contact the applicant or his rep Reproduction of mark whose registration is sought List of the G&S for which the registration is sought

** No filing date shall be accorded until the required fee is paid. Initial Application - application referring to several goods and services Divisional Application - an initial application that is divided into 2 or more applications ** Divisional applications shall preserve the filing date of the initial application or the benefit of priority date. Self Identification: 1. Hand-written signature 2. Printed or stamped signature, seal (should be accompanied with the letters of the name of the signatory) Priority Right if a person file a registration of mark in a foreign country and subsequently filed a registration here in the Phil, the former date will be considered the filing date here, provided that it shall be filed within 6 mos. from the first filing in the foreign country. should be registered first in the foreign country before it will considered here. an applicant cannot sue another for infringement if the infringement was done prior to the approved registration of mark

** Once the application meets section 127, the Office shall examine whether the application meets the requirements of Section 124 and if registrable under section 123 (section 133.1) ** If the application does not meet the requirements of section 127, the office shall notify the applicant complete or correct the application within a period prescribed by the Regulations, else it will be deemed withdrawn ** Once 133.1 is fulfilled, payment of prescribed fee application is filed to be published ** If the application is reject, the Office shall advise the applicant thereof and the reasons thereof. the applicant will have 4 mos. to reply or amend his application, w/c shall be re-examined. ** An abandoned application may be revived as pending application w/in 3 mos. from the date of abandonment. good cause should be shown and payment of required fee ** Refusal of the Director of Trademarks shall be appealable to the Director General Section 134 - Opposition

 Any person who believes he may be damaged by the registration of a mark, may file an opposition to the application to the Office. ! ! ! ! ! ! ! required fee must be paid should be done within 30 days after the publication shall be in writing verified by the oppositor or person in his behalf specify the grounds statement of facts other supporting docs

** Period of filing an opposition may be exited upon showing of good cause and payment of required fees.