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PART 1 REGISTRATION OF TRADEMARKS AND
SERVICE
MARKS
Rule
100. Definitions.
Unless otherwise specified, the following terms shall have the meaning
provided in this Rule:
(a)
“Bureau” means the Bureau of Trademarks
of the Intellectual Property Office;
(b) “Collective
mark” means any
visible sign designated as such in the application for registration and
capable of distinguishing the origin or any other common
characteristics,
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;
(c) “Competent
authority” for
purposes of determining whether a mark is well-known, means the Court,
the Director General, the Director of the Bureau of Legal Affairs, or
any
administrative agency or office vested with quasi-judicial or judicial
jurisdiction to hear and adjudicate any action to enforce the rights to
a mark;
(d) “Director”
means the Director of
the Bureau of Trademarks;
(e) “Director
General” means the head
of the Intellectual Property Office;
(f)
“Examiner” means the trademark examiner
or any official or employee of the Bureau of Trademarks authorized to
examine
applications for registration or renewals thereof;
(g) “IP
Code” means Republic Act No.
8293 otherwise known as the Intellectual Property Code of the
Philippines;
(h) “IPO
Gazette” means the Intellectual
Property Office’s own publication where all matters required to be
published
under the IP Code shall be published;
(i)
“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;
(j) “Office”
means the Intellectual
Property Office;
(k) “Regulations”
means these set of
rules and regulations and such Rules of Practice in Trademarks and
Service
Marks as may be formulated by the Director of Trademarks and approved
by
the Director General; and
(l) “Trade
name” means the name or designation
identifying or distinguishing an enterprise, also known or referred to
as business identifier.
Rule 101. Registrability.
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 into contempt or disrepute;
(b)
Consists of the flag or coat
of arms or other insignia of the Philippines or any of its
political
subdivisions, or of any foreign nation, or any simulation thereof;
(c)
Consists of a name, portrait or signature
identifying a particular living individual except by his written
consent,
or the name, signature, or portrait of a deceased President of the
Philippines,
during the life of his widow, if any, except by written consent of the
widow;
(d) Is
identical with a registered mark belonging
to a different proprietor or a mark with an earlier filing or priority
date, in respect of:
(i) The same goods or services,
or
(ii) Closely related goods or
services, or
(iii) If it nearly resembles such a
mark as
to be likely to deceive or cause confusion;
(e) Is
identical with, or confusingly similar
to, or constitutes a translation of a mark which is considered by the
competent
authority of the Philippines to be well-known internationally and in
the
Philippines, whether or not it is registered here, as being already the
mark of a person other than the applicant for registration, and used
for
identical or similar goods or services; Provided, That in
determining
whether a mark is well-known, account shall be taken of the knowledge
of
the relevant sector of the public, rather than of the public at large,
including knowledge in the Philippines which has been obtained as a
result
of the promotion of the mark;
(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. Geographical indications are indications which
identify a good as originating in the territory of a country which is a
member of, or a region or locality in that territory, where a given
quality,
reputation or other characteristic of the good is essentially
attributable
to its geographical origin.
(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.
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 or
services
for which registration is requested as a result of the use that has
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.
The
nature of the goods or services to which
the mark is applied will not constitute an obstacle to
registration.
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
applies;
(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.
Rule 103. Trade
Names or Business Names. (a) 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.
(b)
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. 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.
(c) The
remedies provided for cancellation
and infringent of marks in Sections 153 to 156 and Sections 166 and 167
of the IP Code shall apply to tradenames mutatis mutandis.
(d)
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. However, such transfer or assignment
shall
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.
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