Section 1. A new
section is hereby added to Republic Act Numbered One hundred and
sixty-six, immediately after section two thereof, to read as
follows:
"Sec. 2-A. Ownership of trade-marks, trade-names
and service-marks; how acquired. — Anyone who lawfully produces or
deals in merchandise of any kind or who engages in any lawful business,
or who renders any lawful service in commerce, by actual use thereof in
manufacture or trade, in business, and in the service rendered, may
appropriate to his exclusive use a trade-mark, a trade-name, or a
service-mark not so appropriated by another, to distinguish his
merchandise, business or service from the merchandise, business or
services of others. The ownership or possession of a trade-mark,
trade-name, service-mark, heretofore or hereafter appropriated, as in
this section provided, shall be recognized and protected in the same
manner and to the same extent as are other property rights known to the
law."
Sec. 2. The following is hereby inserted between
section three and section four of Republic Act Numbered One hundred and
sixty-six:
"CHAPTER II-A. — The principal register"
Sec. 3. Section four of Republic Act Numbered One
hundred and sixty-six is hereby amended to read as follows:
"Sec. 4. Registration of trade-marks, trade-names
and service-marks on the principal register. — There is hereby
established a register of trade-mark, trade-names and service-marks
which shall be known as the principal register. The owner of a
trade-mark, a trade-name or service-mark used to distinguish his goods,
business or services from the goods, business or services of others
shall have the right to register the same on the principal register,
unless it:
"(a) Consists of or comprises 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 or comprises 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 or comprises 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 the written consent of the widow;
"(d) Consists of or comprises a mark or trade-name
which so resembles a mark or trade-name registered in the Philippines
or a mark or trade-name previously used in the Philippines by another
and not abandoned, as to be likely, when applied to or used in
connection with the goods, business or services of the applicant, to
cause confusion or mistake or to deceive purchasers; or
"(e) Consists of a mark or trade-name which, when
applied to or used in connection with the goods, business or services
of the applicant is merely descriptive or deceptively misdescriptive of
them, or when applied to or used in connection with the goods, business
or services of the applicant is primarily geographically descriptive or
deceptively misdescriptive of them, or is primarily merely a surname;
"(f) Except as expressly excluded in paragraphs (a),
(b), (c) and (d) of this section, nothing herein shall prevent the
registration of a mark or trade-name used by the applicant which has
become distinctive of the applicant's goods, business or services. The
Director may accept as prima facie evidence that the mark or trade-name
has become distinctive, as applied to or used in connection with the
applicant's goods, business or services, proof of substantially
exclusive and continuous use thereof as a mark or trade-name by the
applicant in connection with the sale of goods, business or services
for the five years next preceding the date of the filing of the
application for its registration.
Sec. 4. A new section is hereby added to Republic
Act Numbered One hundred and sixty-six, immediately after section nine
thereof, to read as follows:
"Sec. 9-A. Equitable principles to govern
proceedings. — In opposition proceedings and in all other inter parties
proceedings in the patent office under this act, equitable principles
of laches, estoppel, and acquiescence, where applicable, may be
considered and applied."
Sec. 5. The following new section is hereby added
to Republic Act Numbered One hundred and sixty-six, immediately after
section ten thereof:
"Section 10-A. Interference. — An interference is a
proceeding instituted for the purpose of determining the question of
priority of adoption and use of a trade-mark, trade-name, or
service-mark between two or more parties claiming ownership of the same
or substantially similar trade-mark, trade-name, or service-mark."
"Whenever application is made for the registration of a trade-mark,
trade-name, or service-mark which so resembles a mark or trade-name
previously registered by another, or for the registration of which
another had previously made application, as to be likely when applied
to the goods or when used in connection with the business or services
of the applicant to cause confusion or mistake or to deceive
purchasers, the director may declare that an interference exists.
"Upon the declaration of interference the director shall give notice to
all parties and shall set the case for hearing to determine and decide
the respective rights of registration.
"In an interference proceeding the director may refuse to register any
or all of several interfering marks or trade-names, or may register the
mark or marks or trade-name or trade-names for the person or persons
entitled thereto, as the rights of the parties may be established in
the proceedings."
Sec. 6. The following are hereby added to Republic
Act Numbered One hundred and sixty-six, immediately after section
nineteen thereof;
"CHAPTER IV-A. — The supplemental register"
"Section 19-A. In addition to the principal register,
the director shall keep another register to be called the supplemental
register. All marks and trade-names capable of distinguishing
applicant's goods or services and not registrable on the principal
register herein provided, except those declared to be unregistrable
under paragraphs (a), (b), (c), and (d) of section four of this Act,
which have been in lawful use in commerce by the proprietor thereof,
upon or in connection with any goods, business or services for the year
preceding the filing of the application, may be registered on the
supplemental register upon payment of a filing fee of eighty pesos for
each application for one class, plus twenty pesos for each additional
class, and compliance with the provisions of section five of this Act
so far as they are applicable.
"Upon the filing of an application for registration on the supplemental
register and payment of the fee herein provided the director shall
cause an examination of the application to be made and, if on such
examination it shall appear that the applicant is entitled to
registration, the registration shall be granted. If the applicant is
found not entitled to registration the provisions of the last paragraph
of section seven of this act shall apply.
"For the purposes of registration on the supplemental register, a mark
or trade-name may consist of any trade-mark, symbol, label, package,
configuration of goods, name, word, slogan, phrase, surname,
geographical name, numeral, or device or any combination of any of the
foregoing, but such mark or trade-name must be capable of
distinguishing the applicant's goods, business or services.
"Upon a proper showing by the applicant that he has begun the lawful
use of his mark or trade-name in foreign commerce and that he requires
domestic registration as a basis for foreign protection of his mark or
trade-name, the director may waive the requirement of a full year's use
and may grant registration forthwith.
"Marks and trade-names for the supplemental register shall not be
published for or be subject to opposition, but shall be published on
registration in the Official Gazette. Whenever any person believes that
he is or will be damaged by the registration of a mark or trade-name on
this register, he may at any time apply to the director to cancel such
registration. Upon receiving the application, the director shall give
notice thereof to the registrant. If it is found after a hearing that
the registrant was not entitled to register the mark at the time of his
application for registration thereof, or that the mark was not used by
the registrant or has been abandoned, the registration shall be
cancelled by the director.
"The certificates or registration for marks and trade-names registered
on the supplemental register shall be conspicuously different from
certificates issued for marks and trade-names registered on the
principal register.
"Except as hereinabove provided, and except sections ten-A, seventeen,
eighteen, nineteen, twenty and thirty-five, the provisions of this act
shall govern, so far as applicable, applications for registration and
registrations on the supplemental register."
Sec. 7. A new section is hereby added to Republic
Act Numbered One hundred and sixty-six, just below section twenty-one
thereof, to read as follows:
"Sec. 21-A. Any foreign corporation or juristic
person to which a mark or trade-name has been registered or assigned
under this act may bring an action hereinunder for infringement, for
unfair competition, or false designation of origin and false
description, whether or not it has been licensed to do business in the
Philippines under Act Numbered Fourteen hundred and fifty-nine, as
amended, otherwise known as the Corporation Law, at the time it brings
complaint: Provided, That the country of which the said foreign
corporation or juristic person is a citizen, or in which it is
domiciled, by treaty, convention or law, grants a similar privilege to
corporate or juristic persons of the Philippines."
Sec. 8. Section thirty-seven of Republic Act
Numbered One hundred and sixty-six, is hereby amended by adding the
following new paragraph thereto, immediately after paragraph (d)
thereof:
"(e) A mark duly registered in the country of origin
of the foreign applicant may be registered on the principal register if
eligible, otherwise on the supplemental register herein provided. The
application thereof shall be accompanied by a certified copy of the
application for or registration in the country of origin of the
applicant."
Sec. 9. This Act shall take effect upon its
approval.
Approved: June 11, 1951
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