Brand identity is a crucial aspect of every business, whether big or small. It is what makes the businesses stand out from the stiff market competition and what helps consumers distinguish the products and services against those of their competitors. Without the visible elements, e.g., the logo, business name, tagline, color scheme, etc., there won’t be reference points for the brand.
Familiarity breeds trust, and the more people who recognize the brand, the more the business becomes successful. Brand identity must then be protected in order to sustain a good reputation and promote loyalty among consumers. Apart from registering the business with the government regulatory bodies, trademarks and trade names must also be duly registered for legal protection.
In the Philippines, trademark rights are obtained through a first-to-file registration system. A certificate of registration issued by the Intellectual Property Office of the Philippines (IPOPHL) is 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. 128).
By registering trademarks, business owners can safeguard their brand identity, prevent confusion in the market, and take legal action against those who exploit the marks or infringe on their rights. If the marks are already registered or cannot be registered, then rebranding may be the best option while the business is still at its early stage.
In this article, we’ll cover the grounds or reasons for refusals of trademark registrations by the IPOPHL as provided in the Intellectual Property Code of the Philippines. Before jumping into that, however, let’s first gain a little background on trademark registration itself.
IPOPHL Trademark Registration: A Brief Background
The trademark registration in the Philippines is anchored primarily on Republic Act 8293 of 1997, also known as the “Intellectual Property Code of the Philippines,” as amended. It repealed other pre-existing laws on patents, trademarks, and copyrights (i.e., R.A. 165, R.A. 166, P.D. 49, and P.D. 285, among others) and in compliance with other international conventions and treaties to which the country is a party.
The law prescribes the intellectual property code, establishes the Intellectual Property Office of the Philippines (IPOPHL), and provides for its powers and functions. It also covers patents, utility models, industrial designs, trademarks, service marks, trade names, copyrights, original works, derivative works, and the corresponding rules and regulations that govern them.
As defined in the Code, a “mark” is 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. “Trade name,” on the other hand, means the name or designation identifying or distinguishing an enterprise (Section 121).
“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 (Section 121).
In the Philippines, the types of marks that may be registered as trademarks include word marks, figurative marks, figurative marks with words, 3D marks, and stamped or marked containers of goods.
Trademarks, trade names, service marks and names, or other marks of ownership are applied for registration, and registered with the Intellectual Property Office of the Philippines (IPOPHL). While bad-faith registration is prohibited, only the real and legitimate owner of the trademark or trade name may apply for registration.
Trademark registration usually takes six (6) months to one (1) year, but may also take longer, especially if there is a need for appeals or additional documentary requirements. It usually involves online registration, receipt of a Notice of Allowance and Registrability Report, publication in the IPO Gazette for possible opposition, examination and resolution of opposition, if any, and receipt of the IPOPHL Certificate of Registration.
13 Grounds for Refusal or Rejection of Trademark Registration
Not all trademarks and trade names may be registered. The Intellectual Property Code of the Philippines provides restrictions and identifies the absolute and relative grounds for refusal of registration. According to Section 123, a mark cannot be registered if:
[a] It consists of an immoral, deceptive, or scandalous matter. Other than these, the trademark registration may also be refused or rejected if it disparages or falsely suggests a connection with persons, i.e., whether living or dead, institutions, beliefs, or national symbols, or brings them into contempt or disrepute.
[b] It consists of the flag, coat of arms, or other insignia of the Philippines. Any mark that is also related to the political subdivisions in the country, or of any foreign nation, or any simulation thereof may also be a ground for refusal.
[c] It identifies an individual without due consent. It consists of a name, portrait or signature identifying a particular living individual except by his or her 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] It is identical with another registered mark. It is the same as a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, and such resemblance may likely deceive the public or cause any confusion. Subject to the provisions on priority right, the filing date of an application shall be the date on which the IPOPHL received the indications or requirements to secure a filing date and the filing fees.
[e] It is identical with a well-known mark for the same goods or services. It is confusingly similar to, or it constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known whether internationally or locally, whether or not registered in here, as being already the mark of a person other than the applicant, and used for identical or similar goods or services.
[f] It is identical with a well-known mark for different goods or services. Although the mark will be used for goods and services different from those with the identical or confusingly similar marks, this may still be refused as this may be an indication of connection between such goods or services, as well as the owners of such marks.
[g] It is likely to mislead the public. It may mislead or deceive the public particularly as to the nature, quality, characteristics or geographical origin of the goods or services.
[h] It consists exclusively of generic signs. A mark is considered generic if it is commonly used as a name for a particular type of product or service. For example, the word “apple” cannot be registered as a trademark for apples, as it is a generic term. Similarly, descriptive trademarks, which merely describe the product or service offered, are also not eligible for registration.
[i] It consists exclusively of signs or indications that have become customary or usual. It designates the goods or services in everyday language or in bona fide and established trade practice.
[j] It consists exclusively of signs or indications that may serve in trade to designate characteristics. It may not 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] It consists of shapes that may be necessitated by technical factors. It also consists of shapes by the nature of goods themselves or factors that affect their intrinsic value.
[l] It consists of color alone, unless defined by a given form.
[m] It is contrary to public order or morality.
In relation to the signs or devices mentioned in items [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 IPOPHL 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 (Sec. 123.2). Additionally, the nature of the goods to which the mark is applied will not constitute an obstacle to registration. (Sec. 123.3).
If during the examination of the application, the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt. (Sec. 124.4).
Notable Trademark Registration-Related Cases
The trademark prosecution process within the Intellectual Property Office of the Philippines (IPOPHL) comes in 72 possible paths.. The trademark being registered undergoes an examination by the designated Examiner. If there is any issue with the trademark, such as on the likelihood of confusion, merely descriptive mark, failure-to-function as a trademark, the Examiner will send an Registrability Report (first and non-final).
After receiving this, the applicant must file a Responsive Action to the Director of the Bureau of Trademarks (DOBT). Pursuant to Rule 610 of Trademark Regulations, an application may be abandoned either for failure to respond to the official action of the Examiner or for submission of an incomplete response within two (2) months from the mailing date of the official action. If the latter sustains the refusal and issues a final trademark rejection, or Final Office Action, the applicant may still file an appeal or a motion for reconsideration with the Office of the Director General (ODG), the last stage.
Outside the IPOPHL, the applicant may further appeal the decision of the ODG to the Court of Appeals (CA), and thereafter, appeal the decision of the CA to the Supreme Court (SC).
To further understand the grounds for refusal and the process of filing the appeals, the following trademark registration-related cases have been compiled and summarized:
Republic Cement & Building Materials, Inc. vs. Director of the Bureau of Trademarks (DOBT), Appeal No. 04-2023-0004, 2023-12-19. The case involved the application for trademark of the Republic Cement “with Iwas-CRACK ENHANCERS & Device” (“iwascrack”) for use on cement in Class 19 and the refusal of the registration by the Examiner and later on by the Director of the Bureau of Trademarks (DOBT) on the grounds that it was descriptive or consisting exclusively of signs or of indications that may serve in trade to designate the kind, nature, quality, intended purpose, or other characteristics of the goods or services. The Office of the Director General (ODG), however, held that the trademark “iwascrack” did not consist exclusively of signs and indications, hence the mark enclosed in an oval-shaped figure with yellow background.
Amity Global Integrated Ventures Inc. vs. Director of the Bureau of Trademarks (DOBT), Appeal No. 04-2021-0026, 2023-07-21. The case involved Amity Global Integrated Ventures Inc’s trademark application for the registration of “Monster Milkshake” and the Examiner’s and DBOT’s refusal on the grounds that it nearly resembled a registered mark belonging to a different proprietor and that the resemblance would likely deceive or case public confusion. The ODG also ruled that although the products were not related enough, there was a confusion of business, the public might be deceived that there was a connection between the two companies.
Households & Toiletries Manufacturing Co., Ltd. vs. Director of Bureau of Trademarks (DBOT), Appeal No. 04-2021-0021, 2023-07-21. The case revolved around the trademark application for “HiGeen.” and its refusal as it almost resembled other registered trademarks belonging to other companies. Such resemblance, accordingly, might cause public deceit or confusion. On appeal, the ODG ruled that the appellant cannot register a mark with dominant features similar to existing and registered marks, and later on dismissed the appeal.
Chua Che vs. Philippine Patent Office, G.R. L-18337, 1965-01-30. The case involved Chua Che, a Chinese citizen conducting business in the Philippines, who applied for trademark registration “T.T. X-7” for soap, but was denied by the Director of Patents, who sustained Sy Tuo’s opposition after arguing that the registration would mislead the public and cause confusion and asserting prior use of the “X-7” make on perfume, lipstick, and nail polish. The opposition was sustained by the Supreme Court (SC), providing that while it is no longer necessary to establish that the goods of the parties possess the same descriptive properties, registration of a trademark should be refused in cases where there is a likelihood of confusion, mistake, or deception, even though the goods fall into different categories.
Fredco Manufacturing Corporation vs. President and Fellows of Harvard College, G.R. 185917, 2011-06-01. The case involved Fredco Manufacturing Corporation (Fredco), a Philippine manufacturing corporation, and Harvard University, where the former filed before the Bureau of Legal Affairs of the Philippine Intellectual Property Office a petition for cancellation of the trademark registration issued to the President and Fellows of the latter. The Supreme Court (SC) ruled that the petition had no merit on the grounds that before a trademark can be registered, it must have been actually used in commerce for not less than two months prior to the application, and the mark “Harvard” has been used since its adoption in 1639. The SC further ruled that Harvard is entitled to protection in the Philippines of its trade name even without registration of such in the Philippines.
McDonald’s Corporation and McGeorge Food Industries, Inc. vs. L.C. Big Mak Burger, Inc., et al, G.R. 143993, 2004-08-18. In a trademark dispute, McDonald’s Corporation sued L.C. Big Mak Burger, Inc. for trademark infringement and unfair competition between their “Big Mac” and “Big Mak” marks. The Supreme Court (SC) ruled in favor of McDonald’s, applying a dominancy test instead of the holistic test and finding a likelihood of confusion between the two marks. It also found that the respondent had the intent to deceive the public and defraud the petitioner by adopting a similar mark.
Need further information and assistance regarding Trademark Registration? Talk to our team at Duran & Duran-Schulze Law to know more about the requirements and process. Call us today at (+632) 8478 5826 or +63 917 194 0482, or send an email to info@duranschulze.com for more information.
