Almost all companies connect to their consumers through marketing, advertising, and by providing quality service. To leave a lasting impression to their customers, companies use logos, brands, and marks to stand out from the rest of their competitors.
To demonstrate, imagine receiving a lovely necklace in a cool aquatic blue box. Without disclosing the manufacturer, we would immediately know or at least be familiar where the necklace came from. Now, try to imagine craving for a burger. A smiling bee or a giant yellow “M” usually comes to mind, right? These are just samples of the companies who used their trademarks not only to leave an everlasting impact on their customers but also, and more importantly, associate their trademark to their products.
In the Philippines, these distinctive logos, brands, and names are trademarks which are protected by Republic Act No. 8293 or the “Intellectual Property Code”. As a general rule, trademark rights are conferred upon its registration with the Intellectual Property Office of the Philippines (IPO) through the Bureau of Trademarks. Once registered, the owner of the trademark has the exclusive right to use such trademark and, consequently, sue any other person who infringes or makes use of such trademark without authority.
REGISTRATION OF TRADEMARK
Compared to other jurisdictions, the application for the registration of trademark with the IPO is relatively simple. The IPO requires the details of the applicant (and authorized representative, if any), a copy of the mark sought to be registered, and the goods/service classification covered by the mark. After submission of all the requirements through the eTMFile and payment of the appropriate fees, the IPO will examine and publish the application for any opposition.
If the application is in order and no opposition or motion for extension for the period to file opposition is filed by other persons within thirty (30) days from publication, the trademark is deemed registered at the succeeding day and the Certificate of Registration will be issued in favor of the applicant.
In the event that an opposition is filed, the IPO shall determine the propriety of the registration of the trademark contested. It bears stressing that disputes arising from the oppositions to applications for trademark registration are governed by the Rules and Regulations on Inter Partes Proceedings.
RIGHTS OF THE TRADEMARK OWNER
As mentioned supra, the owner of the registered trademark has the exclusive right to use such trademark and prevent all other persons from using any identical or similar mark. The unauthorized use of the registered mark is considered as trademark infringement.
Section 155 of the Intellectual Property Code states that any person who, without the consent of the owner of the registered mark, reproduce, counterfeit, copy, or colorably imitate a registered mark shall be liable for trademark infringement. In such case, the owner of the registered mark is entitled to several remedies such as damages and/or injunctive relief, as well as to cause the confiscation of the infringing goods.
INSTITUTIONALIZATION OF PROTECTION OF NON-TRADITIONAL MARKS
Prior to 2023, trademark protection is generally limited to traditional marks such as designs marks and name marks of companies. These include the logos of popular brands like the smiling bee and the giant “M” mentioned earlier.
However, due to advancements in technology and development of new marketing strategies, branding has transcended the realm of traditional marks and has started incorporating other kinds of marks such as color marks, three-dimensional marks, certification marks, and motion marks. Verily, the IPO issued Memorandum Circular 2023-001 which institutionalized the protection of these non-traditional marks. The new rules and regulations governing trademarks standardized the representations needed for registration.
Perhaps, in a not-so-distant future, the Intellectual Property Code would be amended and extend the protection of trademarks to include sound marks (i.e. the whispering voice of a popular casino) and other non-traditional marks.
