What is TRADEMARK?

Intellectual Property Code, defines a trademark as “any visible sign capable of

distinguishing goods”.Early jurisprudence has taken it to mean “a sign, device or mark by
which the articles produced or dealt in by a particular person or organization are
distinguished or distinguishable from those produced or dealt in by others, and must be
affixed to goods or articles”.[1] This term is given to a recognizable name , marking or term
that a company can by law use to identify itself and its products. See infringement of
trademark. (Black's Law Dictionary Free Online Legal Dictionary 2nd Ed)

Under the Intellectual Property Code (IP Code) of the Philippines, a “mark” is defined 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 of goods."Collective mark"
means 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 mark."Trade name" means the name or designation identifying or
distinguishing an enterprise.

A trademark is any word, name, symbol, or design, or any combination thereof, used in
commerce to identify and distinguish the goods of one manufacturer or seller from those of
another and to indicate the source of the goods.Two basic requirements must be met for a
mark to be eligible for trademark protection: it must be in use in commerce and it must be
distinctive.[2]

Trademarks are an effective communication tool. In a single brand or logo, trademarks

can convey intellectual and emotional attributes and messages about you, your company,
and your company’s reputation, products and services. Trademarks are a valuable asset.
Trademarks can appreciate in value over time. The more your business reputation grows, the
more valuable your brand will be.Trademarks provide value beyond your core business.
Trademarks can lead the way for expansion from one industry to another, such as from
personal care to clothing or eye ware. If you desire it, your trademark can lead to the
acquisition of your business by a larger corporation.(Abigail Rubinstein, Entrepreneur Asia
Pacific 7 Reasons Why Trademarks Are Important to Your Business )

Utilized properly, a trademark can become the most valuable business asset of an enterprise.
In addition to making goods and services distinctive, the owner of a mark may earn
revenues from the use of the mark by licensing its use by another or though franchising
agreements.[3]

[1] R.A 8293.

[2] https://www.law.cornell.edu/wex/
[3] About Trademark http://www.ipophil.gov.ph/services/trademark/about-trademark
What are the requirements for filing a trademark application in the Philippines?

To apply for trademark registration in the Philippines, an applicant must provide the following:

1 Signed trademark application form, which includes:

- The country or residence of incorporation;
- Name and address of the local representative, if the applicant is not domiciled in the
Philippines;
- Details of the priority claim, such as filing date, application number and country or state
where the application was filed, designation of goods and services, reproduction of the
mark, a transliteration or translation of the trademark or some parts of the trademark, an
indication whether the trademark is three-dimensional, a collective mark or for a stamped or
marked container of goods, and colors claimed, if any.

2 Signed Power of Attorney, if the filing is through a representative;

3 Plain copy of the home application, if priority application is claimed;
4 Sworn statement that the applicant is a small entity, if applicable. [4]

A trademark 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;

[4] Federis Intellectual Property Law (Trademark Registration) http://www.federislaw.com.ph/faqs-resources/trademark-registration/

(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.
But as regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the
registration of any such sign or device which has become distinctive.

Why should you register your trademark?

—Your trademark distinguishes your goods from others. It represents your business identity,
image, and reputation that sets it apart from your competitors.
—Your trademark is your asset and property. It is worth a lot of money!
—Registration of your trademark will protect your business and shield it from unscrupulous persons
who want to ride on the goodwill which your business has painstakingly created through the years.
—There are remedies available to owners of registered marks from infringers such as Civil and
criminal actions for infringement, unfair competition, false or fraudulent declaration and false
designation of origin. There are also Administrative Actions before the Bureau of Legal Affairs of
the IPO for violation of IP (infringement, unfair competition, false designation of origin) under
Section 10.2 of the IP Code and Inter Partes Cases (opposition, cancellation) and/ or Border
Measure before the Bureau of Customs.

Why is it important to file an application with the IPO immediately?

We observe the first-to-file rule. Thus, if you filed an application for a mark, no one can file an
application for the same mark anymore.

May we file multiple classes in one trademark application?

Yes. One application may relate to several goods and/or services, whether they belong to one class
or to several classes of the Nice Classification. Where goods and/or services belonging to several
classes of the Nice Classification have been included in one application, such an application shall
result in one registration.
Who may apply for registration?
Only the owner of the mark or trade name may apply for its registration.

Who may be appointed as resident agent of foreign applicant?

If the applicant is not domiciled or has no real and effective commercial establishment in the
Philippines, he shall designate by a written document filed in the Intellectual Property Office (IPO),
the name and address of a Philippine resident who may be served notices or processes in
proceedings affecting the mark. Such notices or services may be served upon the person so
designated by leaving a copy thereof at the address specified in the last designation filed. If the
person so designated cannot be found at the address given in the last designation, such notice or
process may be served upon the Director of the IPO.

When is the filing date of an application?

The filing date of an application shall be the date on which the Intellectual Property Office (IPO)
received the following indications and elements:
(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. No filing date shall be
accorded until the required fee is paid.

What is a Declaration of Actual Use?

A Declaration of Actual Use is a document that must be filed within 3 years from filing of the
trademark application. This is a mandatory requirement in an application. Otherwise, the
application shall be refused or the mark shall be removed from the Register by the Director.

What is the period of protection of a trademark registration?

The period of protection is ten (10) years from the date of issuance and is renewable for a period of
ten (10) years at a time.
If you are interested in filing a trademark application, it is highly recommended that you consult a
Philippine trademark lawyer first so that you can lodge the application properly.[5]

[5] Nicolas & De Vega Law Offices Frequently Asked Questions (FAQs) on Philippine Trademark