TradeMarks 2024

Question 1

Basic concepts:

Define -
Mark
Collective mark
Tradename

Answer 1

Mark - any visible sign capable of distinguishing the goods (trademark) or service (service mark) of an enterprise
- it includes a stamp or marked container of goods

Collective mark
- any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristics

Tradename
- the name DISTINGUISHING an enterprise

Question 2

Right over a Mark or Tradename - how acquired

Even prior to rego or lack of it, tradenames are protected from Unfair Use of third persons.

Answer 2

The rights in a mark is acquired through REGISTRATION made validly in accordance with provisions of IP law

Question 3

Non Registrable Marks

When is a Mark not for registration?

Answer 3

A mark cannot be registered as a trademark in the Philippines if:

(a) No offensive, misleading, or disrespectful marks.
(b) Don’t copy national symbols of the Philippines or other countries.
(c) Can’t use someone’s name or picture without permission (living) or during the widow’s lifetime (deceased president).
(d) No copying existing trademarks for similar products or creating something too similar that could confuse customers.
(e) Can’t use a well-known international mark, even if not registered in the Philippines, for similar products.
(f) Can’t use a well-known mark for different products if it suggests a connection or could damage the original owner’s interests.
(g) Don’t mislead people about the product’s nature, quality, features, or origin.
(h) Don’t use generic terms that everyone uses to describe the product.
(i) Don’t use common words or symbols that describe the product’s features.
(j) Don’t use symbols for things like size, quality, or origin that everyone uses.
(k) Shapes required for the product itself or its function can’t be trademarked.
(l) Can’t trademark a single color without a specific design.
(m) No marks that go against public order or good morals.

Question 4

Prior Use of the Mark

Explain the prior use rule

Answer 4

The prior use rule in intellectual property (IP) law PROTECTS those who have already been using a trademark, EVEN if they haven’t formally REGISTERED it.

It essentially states that the FIRST PARTY to USE a mark in commerce for a particular product or service has the Right to CONTINUE USING it, even if someone else later tries to register the same or a similar mark

Establishing Prior Use: To claim prior use, you need to show evidence that you used the mark in commerce before the other party filed for registration. This evidence could include things like:
-Packaging with the mark
-Marketing materials
-Sales receipts
-Website records
-Public awareness of the mark in your geographic area