Trademarks 1: Nature, Functions, Rights, Prohibitions, Registration (Intellectual Property Law)

The video introduces trademarks under the Intellectual Property Code (Republic Act 8293). It defines various types of marks, including word marks (e.g., Hugo Boss, Armani), composite marks (e.g., BMW), service marks, and collective marks. A trademark is defined as any visible sign distinguishing goods, while a trade name identifies an enterprise and its goodwill. For simplicity, all these terms will be referred to as 'trademark' for the discussion.

Trademarks serve several functions: indicating origin/ownership, assuring product genuineness to prevent fraud, protecting manufacturers from product substitution, and advertising goods. They implicitly guarantee satisfaction, creating consumer desire for further purchases, acting as a 'silent salesman.' Most importantly, trademarks secure the 'fruit of labor and skill' for those bringing superior merchandise to market.

Under Section 147, registered mark owners have the exclusive right to prevent third parties from using identical or similar signs or containers for goods/services without consent, especially if such use is likely to cause confusion. Likelihood of confusion is presumed for identical signs on identical goods/services. This right allows owners to prevent or penalize trademark violations.

The law also protects well-known marks, even if unregistered in the Philippines. To be considered well-known, a mark's recognition within the relevant public sector (not the public at large) is assessed, including knowledge from promotions in the Philippines. The extent of protection depends on whether the well-known mark is registered locally. If unregistered, protection covers identical or similar goods/services. If registered, protection extends to unrelated goods/services, provided there's a perceived connection leading to potential damage to the owner's interests.

A mark can become well-known through exclusive and continuous long-term use, leading to the 'doctrine of secondary meaning' (or distinctiveness). This doctrine allows registration of marks initially unregistrable (e.g., geographical, descriptive, or a surname) if their primary meaning has been lost and they've become associated with specific goods in the public mind due to prolonged and exclusive use by one producer. Evidence of long-standing business, considerable goodwill, and established reputation is required, such that others' use of the mark would cause confusion. It's about how the public perceives the mark rather than its technical registrability.

Trademark registration lasts 10 years and is renewable for subsequent 10-year periods, with renewal requests made within 6 months before or after expiration. Rights in a mark are acquired through registration with the Intellectual Property Office (IPO), while trade name rights are acquired through adoption and use. Registration of a trade name is not mandatory but preferable. Restrictions apply to trade names, prohibiting those contrary to public order/morals or those liable to deceive.

Applicants who first filed for trademark registration abroad may claim a priority right in the Philippines, meaning their local application is considered filed as of the foreign filing date, provided specific international agreements or reciprocal rights exist. However, this doesn't allow immediate lawsuits for prior violations; rather, it enables opposing registration or petitioning cancellation of similar marks, or suing for unfair competition. The Birkenstock case illustrates that registration does not automatically vest ownership. While Philippine Shoe first registered 'Birkenstock' locally, the Supreme Court ruled in favor of Birkenstock Germany due to its long-standing prior use, highlighting that ownership confers the right to register, not vice-versa. Registration merely creates a prima facie presumption of validity and ownership, which can be rebutted by superior evidence of actual and real ownership through prior adoption and use in trade or commerce.

To ensure registration, a mark must not fall under legal prohibitions. These include marks that consist of: immoral/deceptive/scandalous matter; disparage/falsely suggest connection with/create contempt for living/dead persons, institutions, beliefs, or national symbols; incorporate flags, coats of arms, or insignia of nations/political subdivisions; use names, portraits, or signatures of living individuals without consent (or deceased presidents during their widow's lifetime without her consent); are identical or confusingly similar to existing registered marks or well-known marks (including translations); are misleading regarding nature, quality, characteristics, or geographical origin; are generic, exclusively descriptive (e.g., 'shoe' for shoes); consist exclusively of customary or usual signs in trade; consist exclusively of signs designating kind, quality, quantity, purpose, value, geographical origin, time of production, or other characteristics; or consist of shapes or colors that are necessitated by technical factors, the goods' nature, or intrinsic value, or color alone unless defined by a given form (unless distinctive use is proven for 5 years). The Asia Brewery case exemplified the non-registrability of descriptive terms ('pale pilsen') and functional elements (amber bottle color).

If a mark is partly valid and partly non-registrable, the applicant can disclaim the unregistrable component and proceed with the valid portion. Upon completion of registration, a certificate is issued, serving as prima facie evidence of validity, ownership, and exclusive right to use the mark. However, this presumption can be overcome by evidence of prior use by another. While prior use is no longer a condition for filing, a 'declaration of actual use' with supporting evidence must be filed within three years of the application date, and again before the sixth year of registration (from the fifth anniversary) to avoid removal from the register. Non-use may be excused only by circumstances independent of the owner's will, not due to lack of funds.

A petition for cancellation of a mark can be filed within five years of registration or at any time if the mark becomes generic, abandoned, fraudulently obtained, used to misrepresent the source of goods/services, or if the registered owner fails to use the mark (or cause its use) in the Philippines for an uninterrupted period of three years without legitimate reason.