Class 4
into contempt or disrepute;
The Law on Trademarks-
To conform the existing Philippine intellectual property
regime with the TRIPS Agreement, the new IP Code was
enacted in 1998. Certain changes were introduced in the
trademark law system to give substance to the country’s
accession to the TRIPS Agreement
1. Definition (Section 121)
Mark – visible sign (Section 121.1)
121.1. "Mark" means 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; (Sec. 38, R.A. No. 166a)
Collective Mark – common characteristics (Section
121.2)
121.2. "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; (Sec. 40, R.A. No. 166a)
2. How marks are acquired? (Section 122)
SEC. 122. How Marks are Acquired. – The rights
in a mark shall be acquired through registration
made validly in accordance with the provisions
of this law. (Sec. 2-A, R.A. No. 166a)
3. Functions
a. Indicate Origin
b. Guarantee Quality
c. Advertising
d. Investment
4. Registrability (Section 123)
Examination of the trademark application based on
“absolute and relative grounds”:
 Absolute: Does it meet the definition of a mark?
Is it distinctive?
 Relative: Is it identical or confusingly similar to
another mark?
123.1. A mark 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
(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;
(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.
123.2. 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 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 Office 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 (5) years before
the date on which the claim of distinctiveness is
made.
123.3. The nature of the goods to which the mark is
applied will not constitute an obstacle to registration.
(Sec. 4, R.A. No. 166a)
5. Well-Known Mark-
Sections 123.1 (e) and (f);
123.1. A mark cannot be registered if it:
(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;
(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;
Sec. 147.2;
147.2. The exclusive right of the owner of a
well-known mark defined in Subsection 123.1(e)
which is registered in the Philippines, shall
extend to goods and services which are not
similar to those in respect of which the mark is
registered: Provided, That 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. (n)
Rule 102 Rules and Regulations on Trademarks, Service
Marks, Trade Names
Rule 102 Criteria for Determining whether a Mark is
Well-known In determining whether a mark is well-
known, the following criteria or any combination thereof
may be taken into account:
(a) the duration, extent and geographical area of
any use of the mark, in particular, the duration,
extent and geographical area of any promotion
of the mark, including advertising or publicity
and the presentation, at fairs or exhibitions, of
the goods and/or services to which the mark
applies;
(b) the market share, in the Philippines and in other
countries, of the goods and/or services to which
the mark is applied;
(c) the degree of the inherent or acquired
distinction of the mark;
(d) the quality-image or reputation acquired by the
mark;
(e) the extent to which the mark has been
registered in the world;
(f) the exclusivity of registration attained by the
mark in the world;
(g) the extent to which the mark has been used in
the world;
(h) the exclusivity of use attained by the mark in
the world;
(i) the commercial value attributed to the mark in
the world;
(j) the record of successful protection of the rights
in the mark;
(k) the outcome of litigations dealing with the issue
of whether the mark is a well-known mark; and,
(l) the presence or absence of identical or similar
marks validly registered for or used on identical
or similar goods or services and owned by
persons other than the person claiming that his
mark is a well-known mark.

Fredco Manufacturing Corp. v. Pres. & Fellows of
Harvard College, 650 SCRA 232 (2011)
Facts: Petitioner Fredco Manufacturing filed a petition to
cancel the registration of respondent’s mark ‘Harvard
Veritas Shield Symbol’ used in products such as bags
and t-shirts. Fredco alleges that the mark ‘Harvard’ was
first used and registered by New York Garments, a
domestic corporation and its predecessor-in-interest,
used in its clothing articles. Respondent Harvard
University on the other hand, alleges that it is the lawful
owner of the name and mark in numerous countries
worldwide including in the Philippines which was used in
commerce as early as 1872. Respondent further
contend that it never authorized any person to use its
name or mark in connection with any goods in the
Philippines. The IPO Bureau of Legal Affairs cancelled
respondent’s registration of the mark but only over the
goods which are confusingly similar with that of
petitioner. IPO reversed the decision. CA affirmed.
Issue: Whether or not respondent’s trade name is
infringed.
Ruling: YES.
Fredco’s use of the mark “Harvard,” coupled with its
claimed origin in Cambridge, Massachusetts, obviously
suggests a false connection with Harvard University. On
this ground alone, Fredco’s registration of the mark
“Harvard” should have been disallowed. Indisputably,
Fredco does not have any affiliation or connection with
Harvard University, or even with Cambridge,
Massachusetts. Fredco or its predecessor New York
Garments was not established in 1936, or in the U.S.A.
as indicated by Fredco in its oblong logo.
Under Philippine law, a trade name of a national of a
State that is a party to the Paris Convention, whether or
not the trade name forms part of a trademark, is
protected “without the obligation of filing or registration.”
“Harvard” is the trade name of the world famous
Harvard University, and it is also a trademark of Harvard
University. Under Article 8 of the Paris Convention, as
well as Section 37 of R.A. No. 166, Harvard University
is entitled to protection in the Philippines of its trade
name “Harvard” even without registration of such trade
name in the Philippines. This means that no educational
entity in the Philippines can use the trade name
“Harvard” without the consent of Harvard University.
Likewise, no entity in the Philippines can claim,
expressly or impliedly through the use of the name and
mark “Harvard,” that its products or services are
authorized, approved, or licensed by, or sourced from,
Harvard University without the latter’s consent.
246 Corporation v. Daway, 416 SCRA 315 (2003)
Facts: Respondents Montres Rolex and Rolex Centre
Phil., owners/proprietors of Rolex and Crown Device,
filed a complaint for trademark infringement alleging
petitioner adopted and used without authority the mark
‘Rolex’ in its business name ‘Rolex Music Lounge.’
Petitioner argued that there is no trademark
infringement since no confusion would arise by the use
of ‘Rolex’ considering that its entertainment business is
totally unrelated to respondent’s business or products
such as watches, clocks, etc.
Issue: Whether or not likelihood of confusion would
arise from the use of identical marks over unrelated
goods/business.
Ruling: YES.
Under the old Trademark Law where the goods for which
the identical marks are used are unrelated, there can be
no likelihood of confusion and there is therefore no
infringement in the use by the junior user of the
registered mark on the entirely different goods. This
ruling, however, has been to some extent, modified by
Section 123.1(f) of the Intellectual Property Code.
A junior user of a well-known mark on goods or services
which are not similar to the goods or services, and are
therefore unrelated, to those specified in the certificate
of registration of the well-known mark is precluded from
using the same on the entirely unrelated goods or
services, subject to the following requisites, to wit:
1. The mark is well-known internationally and in
the Philippines.
2. The use of the well-known mark on the entirely
unrelated goods or services would indicate a
connection between such unrelated goods or
services and those goods or services specified in
the certificate of registration in the well-known
mark. This requirement refers to the likelihood
of confusion of origin or business or some
business connection or relationship between the
registrant and the user of the mark.
3. The interests of the owner of the well-known
mark are likely to be damaged. For instance, if
the registrant will be precluded from expanding
its business to those unrelated good or services,
or if the interests of the registrant of the well-
known mark will be damaged because of the
inferior quality of the good or services of the
user.
*Section 123.1(f) is clearly in point because the
Music Lounge of petitioner is entirely unrelated to
respondents’ business involving watches, clocks,
bracelets, etc. However, the Court cannot yet
resolve the merits of the present controversy
considering that the requisites for the application
of Section 123.1(f), which constitute the kernel
issue at bar, clearly require determination facts of
which need to be resolved at the trial court.
Ecole De Cuisine Manille v. Renaud Ceointreau GR
No. 185830, 5 July 2013
Facts: Respondent Cointreau, a partnership registered
under the laws of France, applied for the registration of
the mark ‘Le Cordon Bleu & Device.’ Petitioner Ecole De
Cuisine opposed on the ground that it is the owner of
the mark ‘Le Cordon Bleu, Ecole De Cuisine Manille’ used
in its culinary activities and restaurant business and that
the registration will create confusion to the public.
Respondent Cointreau answered claiming it is the true
and lawful owner of the mark and had long been using
it worldwide. The IPO Bureau of Legal Affairs sustained
petitioner’s opposition stating that Cointreau had no
prior use of the mark in the Philippines to be entitled to
a proprietary right over it. The IPO Director General
reversed the decision and allowed the mark’s
registration holding that under RA No. 166, actual use
in the Philippines is not necessary to acquire ownership
of the mark.
Issue: Whether or not respondent’s prior use of the
mark is a requirement for its registration.
Ruling: YES.
Under Section 2 of R.A. No. 166, in order to register a
trademark, one must be the owner thereof and must
have actually used the mark in commerce in the
Philippines for 2 months prior to the application for
registration. Section 2-A of the same law sets out to
define how one goes about acquiring ownership thereof.
Under Section 2-A, it is clear that actual use in
commerce is also the test of ownership but the provision
went further by saying that the mark must not have
been so appropriated by another. Additionally, it is
significant to note that Section 2-A does not require that
the actual use of a trademark must be within the
Philippines. Thus, as correctly mentioned by the CA,
under R.A. No. 166, one may be an owner of a mark due
to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure
to use the same in the Philippines for 2 months prior to
registration. In the instant case, it is undisputed that
Cointreau has been using the subject mark in France,
prior to Ecole’s averred first use of the same in the
Philippines, of which the latter was fully aware thereof.
On the other hand, Ecole has no certificate of
registration over the subject mark but only a pending
application. Under the foregoing circumstances, even if
Ecole was the first to use the mark in the Philippines, it
cannot be said to have validly appropriated the same.
In any case, the present law on trademarks, Republic
Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, as amended, has
already dispensed with the requirement of prior actual
use at the time of registration. Thus, there is more
reason to allow the registration of the subject mark
under the name of Cointreau as its true and lawful
owner.
Cases:
Mirpuri v. CA GR No. 114508, 318 SCRA 516
(1999): History of trademark protection/ function
Facts: Lolita Escobar applied for the registration of the
trademark ‘Barbizon’ for her products such as brassieres
and ladies undergarments. Respondent Barbizon
Corporation, an American corporation, opposed alleging
that petitioner’s mark is confusingly similar to its own
trademark ‘Barbizon.’ Escobar’s application was given
due course and her trademark was registered. Later,
Escobar assigned all her rights to petitioner Mirpuri who
failed to file an Affidavit of Use resulting in the
cancellation of the trademark. Petitioner then applied for
registration of the trademark to which respondent
Barbizon again opposed, now invoking the protection
under Article 6bis of the Paris Convention. The Director
of Patents declaring respondent’s opposition was
already barred, petitioner’s application was given due
course. CA reversed the judgment.
Issue: Whether or not respondent may invoke the
protection under Article 6bis of the Paris Convention.
Ruling: YES.
The Convention of Paris for the Protection of Industrial
Property, otherwise known as the Paris Convention, is a
multilateral treaty that seeks to protect industrial
property consisting of patents, utility models, industrial
designs, trademarks, service marks, trade names and
indications of source or appellations of origin, and at the
same time aims to repress unfair competition. The
Convention is essentially a compact among various
countries which, as members of the Union, have pledged
to accord to citizens of the other member countries
trademark and other rights comparable to those
accorded their own citizens by their domestic laws for
an effective protection against unfair competition. Art.
6bis is a self-executing provision and does not require
legislative enactment to give it effect in the member
country. It may be applied directly by the tribunals and
officials of each member country by the mere
publication or proclamation of the Convention, after its
ratification according to the public law of each state and
the order for its execution.
The Philippines and the United States of America have
acceded to the WTO Agreement. Conformably, the State
must reaffirm its commitment to the global community
and take part in evolving a new international economic
order at the dawn of the new millennium.
Dermaline v. Myra, re Dermalin, were the competing
marks used in closely related goods?
Facts: Dermaline filed with the IPO an application to
register the trademark “Dermaline.” Myra opposed this
alleging that the trademark resembles its trademark
“Dermalin” and will cause confusion, mistake and
deception to the purchasing public. “Dermalin” was
registered way back 1986 and was commercially used
since 1977. Myra claims that despite attempts of
Dermaline to differentiate its mark, the dominant
feature is the term “Dermaline” to which the first 8
letters were identical to that of “Dermalin.” The
pronunciation for both is also identical. Further, both
have 3 syllables each with identical sound and
appearance.
Issue: W/N the IPO should allow the registration
of the trademark “Dermaline.” NO
Held: The petition is without merit.
A trademark is any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof,
adopted and used by a manufacturer or merchant on his
goods to identify and distinguish them from those
manufactured, sold, or dealt by others. Inarguably, it is
an intellectual property deserving protection by law. In
trademark controversies, each case must be scrutinized
according to its peculiar circumstances, such that
jurisprudential precedents should only be made to apply
if they are specifically in point.
As Myra correctly posits, it has the right under Section
147 of R.A. No. 8293 to prevent third parties from using
a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar to its
registered trademark, where such use would result in a
likelihood of confusion. In determining confusion, case
law has developed two (2) tests, the Dominancy Test
and the Holistic or Totality Test.
The Dominancy Test focuses on the similarity of the
prevalent features of the competing trademarks that
might cause confusion or deception. Duplication or
imitation is not even required; neither is it necessary
that the label of the applied mark for registration should
suggest an effort to imitate. Relative to the question on
confusion of marks and trade names, jurisprudence
noted two (2) types of confusion, viz: (1) confusion of
goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in
the belief that he was purchasing the other; and (2)
confusion of business (source or origin confusion),
where, although the goods of the parties are different,
the product, the mark of which registration is applied for
by one party, is such as might reasonably be assumed
to originate with the registrant of an earlier product, and
the public would then be deceived either into that belief
or into the belief that there is some connection between
the two parties, though inexistent.
Using this test, the IPO declared that both confusion of
goods and service and confusion of business or of origin
were apparent in both trademarks. While it is true that
the two marks are presented differently, they are almost
spelled in the same way, except for Dermaline’s mark
which ends with the letter "E," and they are pronounced
practically in the same manner in three (3) syllables,
with the ending letter "E" in Dermaline’s mark
pronounced silently. Thus, when an ordinary purchaser,
for example, hears an advertisement of Dermaline’s
applied trademark over the radio, chances are he will
associate it with Myra’s. When one applies for the
registration of a trademark or label which is almost the
same or that very closely resembles one already used
and registered by another, the application should be
rejected and dismissed outright, even without any
opposition on the part of the owner and user of a
previously registered label or trademark.
Further, Dermaline’s stance that its product belongs to
a separate and different classification from Myra’s
products with the registered trademark does not
eradicate the possibility of mistake on the part of the
purchasing public to associate the former with the latter,
especially considering that both classifications pertain to
treatments for the skin.
Birkenstock v. Phil. Shoe Expo Marketing Corp,
Why were the registrations of petitioner Birkenstock
approved despite the earlier registration issued to
respondent Phil Shoe Expo for the same identical mark?
FACTS:
Petitioner, a corporation duly organized and
existing under the laws of Germany applied for various
trademark registrations before the Intellectual Property
Office (IPO). However, the applications were suspended
in view of the existing registration of the mark
“BIRKENSTOCK AND DEVICE” under Registration No.
56334 dated October 21, 1993 in the name of Shoe
Town International and Industrial Corporation, the
predecessor-in-interest of respondent Philippine Shoe
Expo Marketing Corporation.
On May 27, 1997, petitioner filed a petition
(Cancellation Case) for cancellation of Registration No.
564334 on the ground that it is the lawful and rightful
owner of the Birkenstock marks. During its pendency,
however, respondent and/or it predecessor-in-interest
failed to file the required 10th Year Declaration of Actual
Use (10th Year DAU) for Registration No. 56334 on or
before October 21, 2004, thereby resulting the
cancellation of such mark. Accordingly, the cancellation
case was dismissed for being moot and academic
thereby paving the way for the publication of the subject
applications.
In response, respondent filed with the Bureau of
Legal Affairs (BLA) of the IPO three separate verified
notices of opposition to the subject applications
docketed as Inter Partes Cases claiming, among others,
it, together with its predecessor-in-interest, has been
using the Birkenstock marks in the Philippines for more
than 16 years through the mark “BIRKENSTOCK AND
DEVICE”. In its Decision, the BLA of the IPO sustained
respondent’s opposition, thus ordering the rejection of
the subject applications. Aggrieved, petitioner appealed
to the IPO Director General whereby in its decision, the
latter reversed and set aside the ruling of the BLA thus
allowing the registration of the subject applications.
Finding the IPO Director General’s reversal of
the BLA unacceptable, respondent filed a petition for
review with the Court of Appeals. In its decision dated
June 25, 2010, the CA reversed and set aside the ruling
of the IPO Director General and reinstated that of the
BLA. The petitioner filed a Motion for Reconsideration
but was denied by the CA. Hence , this petition to the
Supreme Court.
ISSUE/s:
1. Whether or not the petitioner’s documentary
evidence, although photocopies, are admissible
in court?
 2. Whether or not the subject marks should be
allowed registration in the name of the
petitioner?
HELD:
1. The court ruled yes. It is a well-settled principle
that the rules of procedure are mere tools aimed
at facilitating the attainment of justice, rather
than its frustration. A strict and rigid application
of the rules must always be eschewed when it
would subvert the primary objective of the rules,
that is, to enhance fair trials and expedite
justice. In the light of this, Section 5 of the Rules
on Inter Partes Proceedings provides that, “The
Bureau shall not be bound by strict technical
rules of procedure and evidence but may adopt,
in the absence of any applicable rule herein,
such mode of proceedings which is consistent
with the requirements of fair play and conducive
to the just, speedy and inexpensive disposition
of cases, and which will the Bureau the greatest
possibility to focus on the contentious issues
before it.
In the case at bar, it should be noted that the IPO had
already obtained the originals of such documentary
evidence in the related Cancellation Case earlier before
it. Under the circumstance and the merits of the instant
case as will be subsequently discussed, the Court holds
that the IPO Director General’s relaxation of procedure
was a valid exercise of his discretion in the interest of
substantial justice.
2. The court ruled in favour of the petitioner. Under
Section 12 of Republic Act 166, it provides that,
“Each certificate of registration shall remain in
force for twenty years: Provided, that the
registration under the provisions of this Act shall
be cancelled by the Director, unless within one
year following the fifth, tenth and fifteenth
anniversaries of the date of issue of the
certificate of registration, the registrant shall file
in the Patent Office an affidavit showing that the
mark or trade-name is still in use or showing
that its non-use is due to special circumstance
which excuse such non-use and is not due to
any intention to abandon the same, and pay the
required fee.”
In the case at bar, respondent admitted that it failed to
file the 10th Year DAU for Registration No. 56334 within
the requisite period, or on or before October 21, 2004.
As a consequence, it was deemed to have abandoned or
withdrawn any right or interest over the mark
“BIRKENSTOCK”. It must be emphasized that
registration of a trademark, by itself, is not a mode of
acquiring ownership. If the applicant is not the owner of
the trademark, he has no right to apply for its
registration. Registration merely creates a prima facie
presumption of the validity of the registration. Such
presumption, just like the presumptive regularity in the
performance of official functions, is rebuttable and must
give way to evidence to the contrary. Besides, petitioner
has duly established its true and lawful ownership of the
mark “BIRKENSTOCK”. It submitted evidence relating to
the origin and history of “BIRKENSTOCK” and it use in
commerce long before respondent was able to register
the same here in the Philippines. Petitioner also
submitted various certificates of registration of the mark
“BIRKENSTOCK” in various countries and that it has
used such mark in different countries worldwide,
including the Philippines.
Ecole De Cuisine v. Renaud Cointreau: Is Le Cordon
Bleu a well-known mark in the Philippines?
Facts: Respondent Cointreau, a partnership registered
under the laws of France, applied for the registration of
the mark ‘Le Cordon Bleu & Device.’ Petitioner Ecole De
Cuisine opposed on the ground that it is the owner of
the mark ‘Le Cordon Bleu, Ecole De Cuisine Manille’ used
in its culinary activities and restaurant business and that
the registration will create confusion to the public.
Respondent Cointreau answered claiming it is the true
and lawful owner of the mark and had long been using
it worldwide. The IPO Bureau of Legal Affairs sustained
petitioner’s opposition stating that Cointreau had no
prior use of the mark in the Philippines to be entitled to
a proprietary right over it. The IPO Director General
reversed the decision and allowed the mark’s
registration holding that under RA No. 166, actual use
in the Philippines is not necessary to acquire ownership
of the mark.
Issue: Whether or not respondent’s prior use of the
mark is a requirement for its registration.
Ruling: YES.
Under Section 2 of R.A. No. 166, in order to register a
trademark, one must be the owner thereof and must
have actually used the mark in commerce in the
Philippines for 2 months prior to the application for
registration. Section 2-A of the same law sets out to
define how one goes about acquiring ownership thereof.
Under Section 2-A, it is clear that actual use in
commerce is also the test of ownership but the provision
went further by saying that the mark must not have
been so appropriated by another. Additionally, it is
significant to note that Section 2-A does not require that
the actual use of a trademark must be within the
Philippines. Thus, as correctly mentioned by the CA,
under R.A. No. 166, one may be an owner of a mark due
to its actual use but may not yet have the right to
register such ownership here due to the owner’s failure
to use the same in the Philippines for 2 months prior to
registration. In the instant case, it is undisputed that
Cointreau has been using the subject mark in France,
prior to Ecole’s averred first use of the same in the
Philippines, of which the latter was fully aware thereof.
On the other hand, Ecole has no certificate of
registration over the subject mark but only a pending
application. Under the foregoing circumstances, even if
Ecole was the first to use the mark in the Philippines, it
cannot be said to have validly appropriated the same.
In any case, the present law on trademarks, Republic
Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines, as amended, has
already dispensed with the requirement of prior actual
use at the time of registration. Thus, there is more
reason to allow the registration of the subject mark
under the name of Cointreau as its true and lawful
owner.
Shang Properties v. St. Francis, re “St. Francis”, is
the mark a geographic name hence not capable of
registration? What is the criteria for determining
whether a mark describes “geographic origin” of the
goods/ services; hence not registrable?
FACTS:
Respondent domestic corporation is engaged in the real
estate business and is the developer of the St. Francis
Square Commercial Center (built sometime in 1992).
It filed separate complaints against petitioners before
the IPO - BLA, namely:
(a) IPV Case – an intellectual property violation
case for unfair competition, false or fraudulent
declaration, and damages arising from
petitioners’ use and filing of applications for the
registration of the marks “THE ST. FRANCIS
TOWERS” and “THE ST. FRANCIS SHANGRI-LA
PLACE,”; and
(b) St. Francis Towers IP Case – an inter partes
case opposing the petitioners’ application for
registration of the mark “THE ST. FRANCIS
TOWERS” for use relative to the latter’s business,
particularly the construction of permanent
buildings or structures for residential and office
purposes; and
(c) St. Francis Shangri-La IP Case – an inter
partes case opposing the petitioners’ application
for registration of the mark “THE ST. FRANCIS
SHANGRI-LA PLACE,”.
Respondent alleged that it has used the mark “ST.
FRANCIS” to identify its numerous property
development projects located at Ortigas Center, such as
the aforementioned St. Francis Square Commercial
Center, a shopping mall called the “St. Francis Square,”
and a mixed-use realty project plan that includes the St.
Francis Towers. Respondent added that as a result of its
continuous use of the mark “ST. FRANCIS” in its real
estate business, it has gained substantial goodwill with
the public that consumers and traders closely identify
the said mark with its property development projects.
Accordingly, respondent claimed that petitioners could
not have the mark “THE ST. FRANCIS TOWERS”
registered in their names, and that petitioners’ use of
the marks “THE ST. FRANCIS TOWERS” and “THE ST.
FRANCIS SHANGRI-LA PLACE” in their own real estate
development projects constitutes unfair competition as
well as false or fraudulent declaration.
Petitioners denied committing unfair competition and
false or fraudulent declaration, maintaining that they
could register the mark “THE ST. FRANCIS TOWERS”
and “THE ST. FRANCIS SHANGRI-LA PLACE” under their
names. They contended that respondent is barred from
claiming ownership and exclusive use of the mark “ST.
FRANCIS” because the same is geographically
descriptive of the goods or services for which it is
intended to be used. This is because respondent’s as
well as petitioners’ real estate development projects are
located along the streets bearing the name “St. Francis,”
particularly, St. Francis Avenue and St. Francis Street
(now known as Bank Drive), both within the vicinity of
the Ortigas Center.
ISSUE: Whether or not petitioners are guilty of unfair
competition in using the marks “THE ST. FRANCIS
TOWERS” and “THE ST. FRANCIS SHANGRI-LA PLACE.”
RULING: NO.
RATIO DECIDENDI:
The unfair competition concept refers to the “‘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.’ 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. [In other words], 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.”
The “true test” of unfair competition has thus been
“whether the acts of the defendant have the intent of
deceiving or are calculated to deceive the ordinary buyer
making his purchases under the ordinary conditions of
the particular trade to which the controversy relates.”
Based on the foregoing, it is therefore essential to prove
the existence of fraud, or the intent to deceive, actual
or probable, determined through a judicious scrutiny of
the factual circumstances attendant to a particular case.
Here, the Court finds the element of fraud to be wanting;
hence, there can be no unfair competition. The CA’s
contrary conclusion was faultily premised on its
impression that respondent had the right to the
exclusive use of the mark “ST. FRANCIS,” for which the
latter had purportedly established considerable goodwill.
What the CA appears to have disregarded or been
mistaken in its disquisition, however, is the
geographically descriptive nature of the mark “ST.
FRANCIS” which thus bars its exclusive appropriability,
unless a secondary meaning is acquired.
As deftly explained in the U.S. case of Great Southern
Bank v. First Southern Bank: “descriptive
geographical terms are in the ‘public domain’ in
the sense that every seller should have the right
to inform customers of the geographical origin of
his goods. A ‘geographically descriptive term’ is any
noun or adjective that designates geographical location
and would tend to be regarded by buyers as descriptive
of the geographic location of origin of the goods or
services. A geographically descriptive term can
indicate any geographic location on earth, such as
continents, nations, regions, states, cities, streets and
addresses, areas of cities, rivers, and any other location
referred to by a recognized name. In order to determine
whether or not the geographic term in question is
descriptively used, the following question is relevant: (1)
Is the mark the name of the place or region from
which the goods actually come? If the answer is
yes, then the geographic term is probably used in
a descriptive sense, and secondary meaning is
required for protection.”
Secondary meaning is established when a descriptive
mark no longer causes the public to associate the goods
with a particular place, but to associate the goods with
a particular source. In other words, it is not enough that
a geographically-descriptive mark partakes of the name
of a place known generally to the public to be denied
registration as it is also necessary to show that the
public would make a goods/place association – that is,
to believe that the goods for which the mark is sought
to be registered originate in that place. However, where
there is no genuine issue that the geographical
significance of a term is its primary significance
and where the geographical place is neither obscure
nor remote, a public association of the goods with
the place may ordinarily be presumed from the
fact that the applicant’s own goods come from the
geographical place named in the mark.
Societe Des Produits Nestle v. CA, What trademark
function was illustrated in the case? Did respondent
infringe a valid mark? re Master, if neither a generic nor
descriptive, what kind of mark is it?
Facts: Respondent CFC Corporation filed an application
for the registration of the trademark FLAVOR MASTER
for instant coffee. Petitioners, a Swiss company and a
domestic corporation licensee of Societe, opposed on
the ground that it is confusingly similar to its trademark
for coffee and coffee extracts: MASTER ROAST and
MASTER BLEND. Petitioners contend that the dominant
word MASTER is present in the 3 trademarks.
Respondent CFC argued that the word MASTER cannot
be exclusively appropriated being a descriptive or
generic term. BPTTT denied CFC’s application. CA held
otherwise.
Issue: Whether or not the word MASTER is descriptive
or generic term incapable of exclusive appropriation.
Ruling: NO.
The word “MASTER” is neither a generic nor a
descriptive term. As such, said term cannot be
invalidated as a trademark and, therefore, may be
legally protected. Generic terms are those which
constitute “the common descriptive name of an article
or substance,” or comprise the “genus of which the
particular product is a species,” or are “commonly used
as the name or description of a kind of goods,” or “imply
reference to every member of a genus and the exclusion
of individuating characters,” or “refer to the basic nature
of the wares or services provided rather than to the
more idiosyncratic characteristics of a particular
product,” and are not legally protectable. On the other
hand, a term is descriptive and therefore invalid as a
trademark if, as understood in its normal and natural
sense, it “forthwith conveys the characteristics,
functions, qualities or ingredients of a product to one
who has never seen it and does not know what it is,” or
“if it forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods,” or
if it clearly denotes what goods or services are provided
in such a way that the consumer does not have to
exercise powers of perception or imagination.
Rather, the term “MASTER” is a suggestive term brought
about by the advertising scheme of Nestle. Suggestive
terms are those which, in the phraseology of one court,
require “imagination, thought and perception to reach a
conclusion as to the nature of the goods.” Such terms,
“which subtly connote something about the product,”
are eligible for protection in the absence of secondary
meaning. While suggestive marks are capable of
shedding “some light” upon certain characteristics of the
goods or services in dispute, they nevertheless involve
“an element of incongruity,” “figurativeness,” or ”
imaginative effort on the part of the observer.” The term
“MASTER”, therefore, has acquired a certain connotation
to mean the coffee products MASTER ROAST and
MASTER BLEND produced by Nestle. As such, the use by
CFC of the term “MASTER” in the trademark for its coffee
product FLAVOR MASTER is likely to cause confusion or
mistake or even to deceive the ordinary purchasers.
246 Corporation v. Daway re Roles and Rolex Music
Lounge: Determining infringement is a question of fact;
Is there likelihood of confusion or damage to trademark
owner? Note criteria under 123.1(f)
Facts: Respondents Montres Rolex and Rolex Centre
Phil., owners/proprietors of Rolex and Crown Device,
filed a complaint for trademark infringement alleging
petitioner adopted and used without authority the mark
‘Rolex’ in its business name ‘Rolex Music Lounge.’
Petitioner argued that there is no trademark
infringement since no confusion would arise by the use
of ‘Rolex’ considering that its entertainment business is
totally unrelated to respondent’s business or products
such as watches, clocks, etc.
Issue: Whether or not likelihood of confusion would
arise from the use of identical marks over unrelated
goods/business.
Ruling: YES.
Under the old Trademark Law where the goods for which
the identical marks are used are unrelated, there can be
no likelihood of confusion and there is therefore no
infringement in the use by the junior user of the
registered mark on the entirely different goods. This
ruling, however, has been to some extent, modified by
Section 123.1(f) of the Intellectual Property Code.
A junior user of a well-known mark on goods or services
which are not similar to the goods or services, and are
therefore unrelated, to those specified in the certificate
of registration of the well-known mark is precluded from
using the same on the entirely unrelated goods or
services, subject to the following requisites, to wit:
1. The mark is well-known internationally and in
the Philippines.
2. The use of the well-known mark on the entirely
unrelated goods or services would indicate a
connection between such unrelated goods or
services and those goods or services specified in
the certificate of registration in the well-known
mark. This requirement refers to the likelihood
of confusion of origin or business or some
business connection or relationship between the
registrant and the user of the mark.
3. The interests of the owner of the well-known
mark are likely to be damaged. For instance, if
the registrant will be precluded from expanding
its business to those unrelated good or services,
or if the interests of the registrant of the well-
known mark will be damaged because of the
inferior quality of the good or services of the
user.
*Section 123.1(f) is clearly in point because the
Music Lounge of petitioner is entirely unrelated to
respondents’ business involving watches, clocks,
bracelets, etc. However, the Court cannot yet
resolve the merits of the present controversy
considering that the requisites for the application
of Section 123.1(f), which constitute the kernel
issue at bar, clearly require determination facts of
which need to be resolved at the trial court.
Lyceum v. CA, re Lyceum, What trademark law
doctrine was cited here?
Facts: Petitioner Lyceum of the Philippines had
commenced before the SEC a proceeding against the
Lyceum of Baguio to change its corporate name alleging
that the 2 names are substantially identical because of
the word ‘Lyceum’. SEC found for petitioner and the SC
denied the consequent appeal of Lyceum of Baguio in a
resolution. Petitioner then basing its ground on the
resolution, wrote to all educational institutions which
made use of the word ‘Lyceum’ as part of their corporate
name to discontinue their use. When this recourse failed,
petitioner moved before the SEC to enforce its exclusive
use of the word ‘Lyceum.’ Petitioner further claimed that
the word ‘Lyceum’ has acquired a secondary meaning in
its favor. The SEC Hearing Officer found for petitioner.
Both SEC En Banc and CA ruled otherwise.
Issues:
1. Whether or not ‘Lyceum’ is a generic word which
cannot be appropriated by petitioner to the
exclusion of others.
2. Whether or not the word ‘Lyceum’ has acquired
a secondary meaning in favor of petitioner.
3. Whether or not petitioner is infringed by
respondent institutions’ corporate names.
Ruling:
1. YES. “Lyceum” is in fact as generic in character
as the word “university.” In the name of the
petitioner, “Lyceum” appears to be a substitute
for “university;” in other places, however,
“Lyceum,” or “Liceo” or “Lycee” frequently
denotes a secondary school or a college. It may
be that the use of the word “Lyceum” may not
yet be as widespread as the use of “university,”
but it is clear that a not inconsiderable number
of educational institutions have adopted
“Lyceum” or “Liceo” as part of their corporate
names. Since “Lyceum” or “Liceo” denotes a
school or institution of learning, it is not
unnatural to use this word to designate an entity
which is organized and operating as an
educational institution.
2. NO. Under the doctrine of secondary meaning,
a word or phrase originally incapable of
exclusive appropriation with reference to an
article in the market, because geographical or
otherwise descriptive might nevertheless have
been used so long and so exclusively by one
producer with reference to this article that, in
that trade and to that group of the purchasing
public, the word or phrase has come to mean
that the article was his produce. With the
foregoing as a yardstick, [we] believe the
appellant failed to satisfy the aforementioned
requisites. While the appellant may have proved
that it had been using the word ‘Lyceum’ for a
long period of time, this fact alone did not
amount to mean that the said word had
acquired secondary meaning in its favor
because the appellant failed to prove that it had
been using the same word all by itself to the
exclusion of others. More so, there was no
evidence presented to prove that confusion will
surely arise if the same word were to be used
by other educational institutions.
3. NO. We do not consider that the corporate
names of private respondent institutions are
“identical with, or deceptively or confusingly
similar” to that of the petitioner institution. True
enough, the corporate names of private
respondent entities all carry the word “Lyceum”
but confusion and deception are effectively
precluded by the appending of geographic
names to the word “Lyceum.” Thus, we do not
believe that the “Lyceum of Aparri” can be
mistaken by the general public for the Lyceum
of the Philippines, or that the “Lyceum of
Camalaniugan” would be confused with the
Lyceum of the Philippines. We conclude and so
hold that petitioner institution is not entitled to
a legally enforceable exclusive right to use the
word “Lyceum” in its corporate name and that
other institutions may use “Lyceum” as part of
their corporate names.
La Chemise Lacoste v. Fernandez, 129 SCRA 373:
What is the Supplemental Registration under the old law?
Filing of case by foreign nationals. Is the mark a well–
known mark?
Facts: Petitioner La Chemise Lacoste is a foreign
corporation and the actual owner of the trademarks
‘Lacoste,’ ‘Chemise Lacoste,’ and ‘Crocodile Device’ used
on clothing and other goods that are sold in many parts
of the world. Herein respondent Hemadas & Co., a
domestic firm, applied and was granted registration of
the mark ‘Chemise Lacoste and Crocodile Device’ for its
garment products. Sometime later, petitioner applied
for the registration of its mark ‘Crocodile Device’ and
‘Lacoste’ but was opposed by herein respondent. Later,
petitioner filed a letter-complaint of unfair competition
before the NBI which led to the issuance of search
warrants and the seizure of goods of respondent
Hemadas. Respondent moved to quash the warrants
alleging that its trademark was different from
petitioner’s trademark. Respondent court ruled to set
aside the warrants and to return the seized goods.
Issue: Whether or not petitioner’s trademark is a well-
known mark protected under the Paris Convention.
Ruling: YES.
In upholding the right of the petitioner to maintain the
present suit before our courts for unfair competition or
infringement of trademarks of a foreign corporation, we
are moreover recognizing our duties and the rights of
foreign states under the Paris Convention for the
Protection of Industrial Property to which the Philippines
and France are parties.
Pursuant to this obligation, the Ministry of Trade issued
a memorandum addressed to the Director of the Patents
Office directing the latter to reject all pending
applications for Philippine registration of signature and
other world famous trademarks by applicants other than
its original owners or users. The conflicting claims over
internationally known trademarks involve such name
brands as Lacoste, et. al. It is further directed that, in
cases where warranted, Philippine registrants of such
trademarks should be asked to surrender their
certificates of registration, if any, to avoid suits for
damages and other legal action by the trademarks’
foreign or local owners or original users.
The Intermediate Appellate Court, in the La Chemise
Lacoste S.A. v. Sadhwani decision which we cite with
approval sustained the power of the Minister of Trade to
issue the implementing memorandum and declared La
Chemise Lacoste S.A. the owner of the disputed
trademark, stating: “In the case at bar, the Minister of
Trade, as ‘the competent authority of the country of
registration,’ has found that among other well-known
trademarks ‘Lacoste’ is the subject of conflicting claims.
For this reason, applications for its registration must be
rejected or refused, pursuant to the treaty obligation of
the Philippines.”
Fredco Manufacturing Corp. v. Pres. & Fellows of
Harvard College, 650 SCRA 232 (2011); Is
Harvard a famous mark?
Facts: Petitioner Fredco Manufacturing filed a petition to
cancel the registration of respondent’s mark ‘Harvard
Veritas Shield Symbol’ used in products such as bags
and t-shirts. Fredco alleges that the mark ‘Harvard’ was
first used and registered by New York Garments, a
domestic corporation and its predecessor-in-interest,
used in its clothing articles. Respondent Harvard
University on the other hand, alleges that it is the lawful
owner of the name and mark in numerous countries
worldwide including in the Philippines which was used in
commerce as early as 1872. Respondent further
contend that it never authorized any person to use its
name or mark in connection with any goods in the
Philippines. The IPO Bureau of Legal Affairs cancelled
respondent’s registration of the mark but only over the
goods which are confusingly similar with that of
petitioner. IPO reversed the decision. CA affirmed.
Issue: Whether or not respondent’s trade name is
infringed.
Ruling: YES.
Fredco’s use of the mark “Harvard,” coupled with its
claimed origin in Cambridge, Massachusetts, obviously
suggests a false connection with Harvard University. On
this ground alone, Fredco’s registration of the mark
“Harvard” should have been disallowed. Indisputably,
Fredco does not have any affiliation or connection with
Harvard University, or even with Cambridge,
Massachusetts. Fredco or its predecessor New York
Garments was not established in 1936, or in the U.S.A.
as indicated by Fredco in its oblong logo.
Under Philippine law, a trade name of a national of a
State that is a party to the Paris Convention, whether or
not the trade name forms part of a trademark, is
protected “without the obligation of filing or registration.”
“Harvard” is the trade name of the world famous
Harvard University, and it is also a trademark of Harvard
University. Under Article 8 of the Paris Convention, as
well as Section 37 of R.A. No. 166, Harvard University
is entitled to protection in the Philippines of its trade
name “Harvard” even without registration of such trade
name in the Philippines. This means that no educational
entity in the Philippines can use the trade name
“Harvard” without the consent of Harvard University.
Likewise, no entity in the Philippines can claim,
expressly or impliedly through the use of the name and
mark “Harvard,” that its products or services are
authorized, approved, or licensed by, or sourced from,
Harvard University without the latter’s consent.
Dermaline, Inc. v. Myra Pharmaceuticals, Inc. 628
SCRA 356 (2010)- What trademark law principle was
recognized here?
Facts: Dermaline filed with the IPO an application to
register the trademark “Dermaline.” Myra opposed this
alleging that the trademark resembles its trademark
“Dermalin” and will cause confusion, mistake and
deception to the purchasing public. “Dermalin” was
registered way back 1986 and was commercially used
since 1977. Myra claims that despite attempts of
Dermaline to differentiate its mark, the dominant
feature is the term “Dermaline” to which the first 8
letters were identical to that of “Dermalin.” The
pronunciation for both is also identical. Further, both
have 3 syllables each with identical sound and opposition on the part of the owner and user of a
appearance. previously registered label or trademark.

Issue: W/N the IPO should allow the registration Further, Dermaline’s stance that its product belongs to
of the trademark “Dermaline.” NO a separate and different classification from Myra’s
products with the registered trademark does not
Held: The petition is without merit. eradicate the possibility of mistake on the part of the
purchasing public to associate the former with the latter,
A trademark is any distinctive word, name, symbol, especially considering that both classifications pertain to
emblem, sign, or device, or any combination thereof, treatments for the skin.
adopted and used by a manufacturer or merchant on his
goods to identify and distinguish them from those
manufactured, sold, or dealt by others. Inarguably, it is
an intellectual property deserving protection by law. In
trademark controversies, each case must be scrutinized
according to its peculiar circumstances, such that
jurisprudential precedents should only be made to apply
if they are specifically in point.

As Myra correctly posits, it has the right under Section

147 of R.A. No. 8293 to prevent third parties from using
a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar to its
registered trademark, where such use would result in a
likelihood of confusion. In determining confusion, case
law has developed two (2) tests, the Dominancy Test
and the Holistic or Totality Test.

The Dominancy Test focuses on the similarity of the

prevalent features of the competing trademarks that
might cause confusion or deception. Duplication or
imitation is not even required; neither is it necessary
that the label of the applied mark for registration should
suggest an effort to imitate. Relative to the question on
confusion of marks and trade names, jurisprudence
noted two (2) types of confusion, viz: (1) confusion of
goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in
the belief that he was purchasing the other; and (2)
confusion of business (source or origin confusion),
where, although the goods of the parties are different,
the product, the mark of which registration is applied for
by one party, is such as might reasonably be assumed
to originate with the registrant of an earlier product, and
the public would then be deceived either into that belief
or into the belief that there is some connection between
the two parties, though inexistent.

Using this test, the IPO declared that both confusion of

goods and service and confusion of business or of origin
were apparent in both trademarks. While it is true that
the two marks are presented differently, they are almost
spelled in the same way, except for Dermaline’s mark
which ends with the letter "E," and they are pronounced
practically in the same manner in three (3) syllables,
with the ending letter "E" in Dermaline’s mark
pronounced silently. Thus, when an ordinary purchaser,
for example, hears an advertisement of Dermaline’s
applied trademark over the radio, chances are he will
associate it with Myra’s. When one applies for the
registration of a trademark or label which is almost the
same or that very closely resembles one already used
and registered by another, the application should be
rejected and dismissed outright, even without any
Class 5
1. Introduction to the System of Registration View:
http://www.ipophil.gov.ph/services/trademark/applicat
ion-process-flow-chart
2. Procedure –
Sections 127-132 IPC
Filing Date Sec.127 IPC
Priority Date Sec. 131.2 IPC
SEC. 127. Filing Date. – 127.1. Requirements. –
The filing date of an application shall be the date
on which the Office received the following
indications and elements in English or Filipino:
(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.
127.2. No filing date shall be accorded until the
required fee is paid. (n)
SEC. 128. Single Registration for Goods and/or
Services. – Where goods and/or services
belonging to several classes of the Nice
Classification have been included in one (1)
application, such an application shall result in
one registration. (n)
SEC. 129. Division of Application. – Any
application referring to several goods or services,
hereafter referred to as the "initial application,"
may be divided by the applicant into two (2) or
more applications, hereafter referred to as the
"divisional applications," by distributing among
the latter the goods or services referred to in the
initial application. The divisional applications
shall preserve the filing date of the initial
application or the benefit of the right of priority.
(n)
SEC.130. Signature and Other Means of Self-
Identification. – 130.1. Where a signature is
required, the Office shall accept:
(a) A hand-written signature; or
(b) The use of other forms of signature,
such as a printed or stamped signature,
or the use of a seal, instead of a hand-
written signature: Provided, That where
a seal is used, it should be accompanied
by an indication in letters of the name
of the signatory.
130.2. The Office shall accept communications
to it by telecopier, or by electronic means
subject to the conditions or requirements that
will be prescribed by the Regulations. When
communications are made by telefacsimile, the
reproduction of the signature, or the
reproduction of the seal together with, where
required, the indication in letters of the name of
the natural person whose seal is used, appears.
The original communications must be received
by the Office within thirty (30) days from date
of receipt of the telefacsimile.
130.3. No attestation, notarization,
authentication, legalization or other certification
of any signature or other means of self-
identification referred to in the preceding
paragraphs, will be required, except, where the
signature concerns the surrender of a
registration. (n)
SEC. 131. Priority Right. – 131.1. An application
for registration of a mark filed in the Philippines
by a person referred to in Section 3, and who
previously duly filed an application for
registration of the same mark in one of those
countries, shall be considered as filed as of the
day the application was first filed in the foreign
country.
131.2. No registration of a mark in the
Philippines by a person described in this section
shall be granted until such mark has been
 registered in the country of origin of the
applicant.
131.3. Nothing in this section shall entitle the
owner of a registration granted under this
section to sue for acts committed prior to the
date on which his mark was registered in this
country: Provided, That, notwithstanding the
foregoing, the owner of a well- known mark as
defined in Section 123.1(e) of this Act, that is
not registered in the Philippines, may, against
an identical or confusingly similar mark, oppose
its registration, or petition the cancellation of its
registration or sue for unfair competition,
without prejudice to availing himself of other
remedies provided for under the law.
131.4. In like manner and subject to the same
conditions and requirements, the right provided
in this section may be based upon a subsequent
regularly filed application in the same foreign
country: Provided, That any foreign application
filed prior to such subsequent application has
been withdrawn, abandoned, or otherwise
disposed of, without having been laid open to
public inspection and without leaving any rights
outstanding, and has not served, nor thereafter
shall serve, as a basis for claiming a right of
priority. (Sec. 37, R.A. No. 166a)
SEC. 132. Application Number and Filing Date.
– 132.1. The Office shall examine whether the
application satisfies the requirements for the
grant of a filing date as provided in Section 127
and Regulations relating thereto. If the
application does not satisfy the filing
requirements, the Office shall notify the
applicant who shall within a period fixed by the
Regulations complete or correct the application
as required, otherwise, the application shall be
considered withdrawn.
132.2. Once an application meets the filing
requirements of Section 127, it shall be
numbered in the sequential order, and the
applicant shall be informed of the application
number and the filing date of the application will
be deemed to have been abandoned. (n)
Certificate of Registration Sections 138 and 147;
SEC. 138. Certificates of Registration. – A
certificate of registration of a mark shall be
prima facie evidence of the validity of the
registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to
use the same in connection with the goods or
services and those that are related thereto
specified in the certificate. (Sec. 20, R.A. No.
165)
SEC. 147. Rights Conferred. – 147.1. The owner
of a registered mark shall have the 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. In case of the use of an
identical sign for identical goods or services, a
likelihood of confusion shall be presumed.
147.2. The exclusive right of the owner of a
well-known mark defined in Subsection 123.1(e)
which is registered in the Philippines, shall
extend to goods and services which are not
similar to those in respect of which the mark is
registered: Provided, That 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. (n)
Sections 145 and 146 IPC Nice Classification (reference)
SEC. 145. Duration. – A certificate of
registration shall remain in force for ten (10)
years: Provided, That the registrant shall file a
declaration of actual use and evidence to that
effect, or shall show valid reasons based on the
existence of obstacles to such use, as prescribed
by the Regulations, within one (1) year from the
fifth anniversary of the date of the registration
of the mark. Otherwise, the mark shall be
removed from the Register by the Office. (Sec.
12, R.A. No. 166a)
SEC. 146. Renewal. – 146.1. A certificate of
registration may be renewed for periods of ten
(10) years at its expiration upon payment of the
prescribed fee and upon filing of a request. The
request shall contain the following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant
or his successor-in-interest, hereafter
referred to as the "right holder";
(c) The registration number of the
registration concerned;
(d) The filing date of the application which
resulted in the registration concerned to
be renewed;
(e) Where the right holder has a
representative, the name and address
of that representative;
(f) The names of the recorded goods or
services for which the renewal is
requested or the names of the recorded
goods or services for which the renewal
is not requested, grouped according to
the classes of the Nice Classification to
which that group of goods or services
belongs and presented in the order of
the classes of the said Classification;
and
 (g) A signature by the right holder or his
representative.
146.2. Such request shall be in Filipino or
English and may be made at any time within six
(6) months before the expiration of the period
for which the registration was issued or renewed,
or it may be made within six (6) months after
such expiration on payment of the additional fee
herein prescribed.
146.3. If the Office refuses to renew the
registration, it shall notify the registrant of his
refusal and the reasons therefor.
146.4. An applicant for renewal not domiciled in
the Philippines shall be subject to and comply
with the requirements of this Act. (Sec. 15, R.A.
No. 166a)
3. Commercialization of Trade Marks Sections 149
and 150 IPC
SEC. 149. Assignment and Transfer of
Application and Registration. – 149.1. An
application for registration of a mark, or its
registration, may be assigned or transferred
with or without the transfer of the business
using the mark. (n)
149.2. Such assignment or transfer shall,
however, be null and void if it is liable to mislead
the public, particularly as regards the nature,
source, manufacturing process, characteristics,
or suitability for their purpose, of the goods or
services to which the mark is applied.
149.3. The assignment of the application for
registration of a mark, or of its registration, shall
be in writing and require the signatures of the
contracting parties. Transfers by mergers or
other forms of succession may be made by any
document supporting such transfer.
149.4. Assignments and transfers of
registrations of marks shall be recorded at the
Office on payment of the prescribed fee;
assignment and transfers of applications for
registration shall, on payment of the same fee,
be provisionally recorded, and the mark, when
registered, shall be in the name of the assignee
or transferee.
149.5. Assignments and transfers shall have no
effect against third parties until they are
recorded at the Office. (Sec. 31, R.A. No. 166a)
SEC.150. License Contracts. – 150.1. Any
license contract concerning the registration of a
mark, or an application therefor, shall provide
for effective control by the licensor of the quality
of the goods or services of the licensee in
connection with which the mark is used. If the
license contract does not provide for such
quality control, or if such quality control is not
effectively carried out, the license contract shall
not be valid.
150.2. A license contract shall be submitted to
the Office which shall keep its contents
confidential but shall record it and publish a
reference thereto. A license contract shall have
no effect against third parties until such
recording is effected. The Regulations shall fix
the procedure for the recording of the license
contract. (n)
4. Basis of Registration
5. Dilution
6. Opposition Sec. 134 IPC
7. Cancellation/ Revocation Sec. 151 IPC
SEC. 151. Cancellation. – 151.1. A petition to cancel
a registration of a mark under this Act may be filed
with the Bureau of Legal Affairs by any person who
believes that he is or will be damaged by the
registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the
registration of the mark under this Act.
(b) At any time, if the registered mark becomes
the generic name for the goods or services,
or a portion thereof, for which it is
registered, or has been abandoned, or its
registration was obtained fraudulently or
contrary to the provisions of this Act, or if
the registered mark is being used by, or
with the permission of, the registrant so as
to misrepresent the source of the goods or
services on or in connection with which the
mark is used. If the registered mark
becomes the generic name for less than all
of the goods or services for which it is
registered, a petition to cancel the
registration for only those goods or services
may be filed. A registered mark shall not be
deemed to be the generic name of goods or
services solely because such mark is also
used as a name of or to identify a unique
product or service. The primary significance
of the registered mark to the relevant public
rather than purchaser motivation shall be
the test for determining whether the
registered mark has become the generic
name of goods or services on or in
connection with which it has been used. (n)
(c) At any time, if the registered owner of the
mark without 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
three (3) years or longer.
151.2. Notwithstanding the foregoing provisions,
the court or the administrative agency vested with
 jurisdiction to hear and adjudicate any action to
enforce the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the
registration of said mark may be cancelled in
accordance with this Act. The filing of a suit to
enforce the registered mark with the proper court or
agency shall exclude any other court or agency from
assuming jurisdiction over a subsequently filed
petition to cancel the same mark. On the other hand,
the earlier filing of petition to cancel the mark with
the Bureau of Legal Affairs shall not constitute a
prejudicial question that must be resolved before an
action to enforce the rights to same registered mark
may be decided. (Sec. 17, R.A. No. 166a)
Q: Distinguish Opposition from Cancellation cases.
8. Maintenance Sections 145 and 146 IPC;
SEC. 145. Duration. – A certificate of
registration shall remain in force for ten (10)
years: Provided, That the registrant shall file a
declaration of actual use and evidence to that
effect, or shall show valid reasons based on the
existence of obstacles to such use, as prescribed
by the Regulations, within one (1) year from the
fifth anniversary of the date of the registration
of the mark. Otherwise, the mark shall be
removed from the Register by the Office. (Sec.
12, R.A. No. 166a)
SEC. 146. Renewal. – 146.1. A certificate of
registration may be renewed for periods of ten
(10) years at its expiration upon payment of the
prescribed fee and upon filing of a request. The
request shall contain the following indications:
(a) An indication that renewal is sought;
(b) The name and address of the registrant
or his successor-in-interest, hereafter
referred to as the "right holder";
(c) The registration number of the
registration concerned;
(d) The filing date of the application which
resulted in the registration concerned to
be renewed;
(e) Where the right holder has a
representative, the name and address
of that representative;
(f) The names of the recorded goods or
services for which the renewal is
requested or the names of the recorded
goods or services for which the renewal
is not requested, grouped according to
the classes of the Nice Classification to
which that group of goods or services
belongs and presented in the order of
the classes of the said Classification;
and
(g) A signature by the right holder or his
representative.
146.2. Such request shall be in Filipino or
English and may be made at any time within six
(6) months before the expiration of the period
for which the registration was issued or renewed,
or it may be made within six (6) months after
such expiration on payment of the additional fee
herein prescribed.
146.3. If the Office refuses to renew the
registration, it shall notify the registrant of his
refusal and the reasons therefor.
146.4. An applicant for renewal not domiciled in
the Philippines shall be subject to and comply
with the requirements of this Act. (Sec. 15, R.A.
No. 166a)
Declaration of Actual Use Sec. 124.2 IPC
124.2. The applicant or the registrant shall file
a declaration of actual use of the mark with
evidence to that effect, as prescribed by the
Regulations within three (3) years from the
filing date of the application. Otherwise, the
application shall be refused or the mark shall be
removed from the Register by the Director.
9. Trade Names or Business Names Sec. 165 IPC
SEC. 165. Trade Names or Business Names. –
165.1. 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.
165.2. (a) 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.
(b) 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.
165.3. The remedies provided for in Sections
153 to 156 and Sections 166 and 167 shall apply
mutatis mutandis.
165.4. 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. The provisions of Subsections 149.2 to
149.4 shall apply mutatis mutandis.
Dermaline, Inc. v. Myra Pharmaceuticals, Inc. 628
SCRA 356 (2010)
Facts: Dermaline filed with the IPO an application to
register the trademark “Dermaline.” Myra opposed this
alleging that the trademark resembles its trademark
“Dermalin” and will cause confusion, mistake and
deception to the purchasing public. “Dermalin” was
registered way back 1986 and was commercially used
since 1977. Myra claims that despite attempts of
Dermaline to differentiate its mark, the dominant
feature is the term “Dermaline” to which the first 8
letters were identical to that of “Dermalin.” The
pronunciation for both is also identical. Further, both
have 3 syllables each with identical sound and
appearance.
Issue: W/N the IPO should allow the registration
of the trademark “Dermaline.” NO
Held: The petition is without merit.
A trademark is any distinctive word, name, symbol,
emblem, sign, or device, or any combination thereof,
adopted and used by a manufacturer or merchant on his
goods to identify and distinguish them from those
manufactured, sold, or dealt by others. Inarguably, it is
an intellectual property deserving protection by law. In
trademark controversies, each case must be scrutinized
according to its peculiar circumstances, such that
jurisprudential precedents should only be made to apply
if they are specifically in point.
practically in the same manner in three (3) syllables,
with the ending letter "E" in Dermaline’s mark
pronounced silently. Thus, when an ordinary purchaser,
for example, hears an advertisement of Dermaline’s
applied trademark over the radio, chances are he will
associate it with Myra’s. When one applies for the
registration of a trademark or label which is almost the
same or that very closely resembles one already used
and registered by another, the application should be
rejected and dismissed outright, even without any
opposition on the part of the owner and user of a
previously registered label or trademark.
Further, Dermaline’s stance that its product belongs to
a separate and different classification from Myra’s
products with the registered trademark does not
eradicate the possibility of mistake on the part of the
purchasing public to associate the former with the latter,
especially considering that both classifications pertain to
treatments for the skin.

As Myra correctly posits, it has the right under Section

147 of R.A. No. 8293 to prevent third parties from using
a trademark, or similar signs or containers for goods or
services, without its consent, identical or similar to its
registered trademark, where such use would result in a
likelihood of confusion. In determining confusion, case
law has developed two (2) tests, the Dominancy Test
and the Holistic or Totality Test.

The Dominancy Test focuses on the similarity of the

prevalent features of the competing trademarks that
might cause confusion or deception. Duplication or
imitation is not even required; neither is it necessary
that the label of the applied mark for registration should
suggest an effort to imitate. Relative to the question on
confusion of marks and trade names, jurisprudence
noted two (2) types of confusion, viz: (1) confusion of
goods (product confusion), where the ordinarily prudent
purchaser would be induced to purchase one product in
the belief that he was purchasing the other; and (2)
confusion of business (source or origin confusion),
where, although the goods of the parties are different,
the product, the mark of which registration is applied for
by one party, is such as might reasonably be assumed
to originate with the registrant of an earlier product, and
the public would then be deceived either into that belief
or into the belief that there is some connection between
the two parties, though inexistent.

Using this test, the IPO declared that both confusion of

goods and service and confusion of business or of origin
were apparent in both trademarks. While it is true that
the two marks are presented differently, they are almost
spelled in the same way, except for Dermaline’s mark
which ends with the letter "E," and they are pronounced