Intellectual Property for Business Series Number 1

MAKING A MARKAn Introduction to Trademarks for Small and Medium-sized Enterprises

Intellectual Property Philippines

Publications in the Intellectual Property for Business series:

1. Making a Mark: An Introduction to Trademarks for Small and Medium-sizedEnterprises. IP Philippines publication

2. Looking Good: An Introduction to Industrial Designs for Small and Medium-sized Enterprises. IP Philippines publication

3. Inventing the Future: An Introduction to Patents for Small and Medium-sizedEnterprises. IP Philippines publication

4. Creative Expression: An Introduction to Copyright for Small and Medium-sizedEnterprises. IP Philippines publication

All publications are available at the Intellectual Property Office of the Philippines orwww.ipophil.gov.ph.

Disclaimer: This publication has been customized and reproduced with the priorexpress permission of the World Intellectual Property Organization (WIPO), thecopyright owner of the orginal English version, which is available at www.wipo.int/sme/en/documents/guides/. As such, WIPO is not liable or responsible for theaccuracy or correctness of the customized version of the publication, as that liabilityor responsibility rests solely with the Intellectual Property Office of the Philippines.

IP Philippines Copyright (2009). WIPO owns copyright in the original Englishlanguage version (2003).

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Preface

Making A Mark is the first in a series of guides on IntellectualProperty for Business. It is devoted to trademarks, a centralelement in the marketing and branding strategy of any com-pany.

This guide explains trademarks from a business perspective. Itspractical approach and explanations utilize examples andpictures to enhance the reader’s understanding. Small andMedium-sized Enterprises (SMEs) are encouraged to use theguide to integrate their trademark strategy into their overallbusiness strategy.

Intellectual Property Philippines welcomes feedback to furtherrefine the guide to ensure that it adequately meets the needs ofSMEs worldwide.

ADRIAN S. CRISTOBAL, JR.Director General, IP Philippines

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Table of Contents

Page

1. Trademarks 3

2. Protecting Trademarks 6

3. Types of Trademark 18

4. Using Trademarks 20

5. Enforcing Trademarks 24

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1. Trademarks

What is a Trademark?

A trademark is any visible sign capableof distinguishing the goods or servicesproduced or provided by one enterprisefrom those of other enterprises.

Any distinctive words, letters,numerals, drawings, pictures,shapes, colors, logotypes, labels orcombinations used to distinguishgoods or services may be considered atrademark. In some countries, advertis-ing slogans are also consideredtrademarks and may be registered assuch at national trademark offices. Anincreasing number of countries alsoallow for the registration of less tradi-tional forms of trademarks, such assingle colors, three-dimensional signs(shapes of products or packaging),audible signs (sounds) or olfactory signs(smells). However, many countriesincluding the Philippines have set limitson what can be registered as a trade-mark, generally only allowing for signsthat are visually perceptible or that canbe represented graphically.

Examples

Word:

Courtesy: Toby’s Sports

Courtesy: Goldilocks Bakeshop, Inc.

Courtesy: National Book Store

Combination of letters withlogotype:

Courtesy: Andok’s Litson Manok

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contributing to the definition of theimage, and reputation of the company’sproducts in the eyes of consumers. Theimage and reputation of a companycreate trust which is the basis forestablishing a loyal clientele andenhancing a company’s goodwill.Consumers often develop an emotionalattachment to certain trademarks, basedon a set of desired qualities or featuresembodied in the products bearing suchtrademarks.

Trademarks also provide an incentive forcompanies to invest in maintaining orimproving the quality of their productsin order to ensure that products bearingtheir trademark have a positive reputa-tion.

What are trademarks for?

The main function of a trademark is toenable consumers to identify a product(whether a good or a service) of aparticular company so as to distinguishit from other identical or similarproducts provided by competitors.Consumers who are satisfied with agiven product are likely to buy or usethe product again in the future. For this,they need to be able to distinguish easilybetween identical or similar products.

By enabling companies to differentiatethemselves and their products fromthose of the competition, trademarksplay a pivotal role in the branding andmarketing strategies of companies,

The Value of Trademarks

A carefully selected and nurturedtrademark is a valuable business assetfor most companies. For some, it maybe the most valuable asset they own.Estimates of the value of some of theworld’s most famous trademarks suchas Coca- Cola or IBM exceed 50billion dollars each. This is becauseconsumers value trademarks, theirreputation, their image and a set of

desired qualities they associate withthe mark, and are willing to pay morefor a product bearing a trademarkthat they recognize and which meetstheir expectations. Therefore, the veryownership of a trademark with a goodimage and reputation provides acompany with a competitive edge.

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The Right to a Trademark

The right to a trademark is grantedwhen its owner registers it with theIntellectual Property Philippines office(IP Philippines). In return, the trademarkenjoys a 10-year term of protection,which can be renewed for succeedingperiods of 10 years. A trademark ownerhas the right to prohibit any unautho-rized person or entity from using hismark.

Why should your companyprotect its trademark(s)?

While most businesses realize theimportance of using trademarks todifferentiate their products from those oftheir competitors, not all realize theimportance of protecting them throughregistration.

Registration, under the relevant trade-mark law, gives your company theexclusive right to prevent others frommarketing identical or similar productsunder the same or a confusingly similarmark.

Without trademark registration, yourinvestments in marketing a product may

become wasteful as rival companies mayuse the same or a confusingly similartrademark for identical or similarproducts. If a competitor adopts asimilar or identical trademark, customerscould be misled into buying thecompetitor’s product thinking it is yourcompany’s product. This could not onlydecrease your company’s profits andconfuse your customers, but may alsodamage the reputation and image ofyour company, particularly if the rivalproduct is of inferior quality.

Given the value of trademarks and theimportance that a trademark may havein determining the success of a productin the marketplace, it is critical to makesure that it is registered in the relevantmarket(s).

In addition, it is much easier to license aregistered trademark to other compa-nies, thus providing an additional sourceof revenue for your company, or may bethe basis for a franchising agreement.

On occasion, a registered trademarkwith a good reputation among consum-ers may also be used to obtain fundingfrom financial institutions that areincreasingly aware of the importance ofbrands for business success.

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2. ProtectingTrademarks

How can a company register atrademark?

Any person, whether an individual or alegal entity, can apply for registration ofa trademark with the IP Philippines bysubmitting a duly completed Trademark

Application Form and paying the properfees. The form will require informationon the contact details of the applicant, agraphic illustration of the mark, adescription of the goods and servicesand/or class(es) for which the companywishes to trademark registration, amongothers.

How can your company protectits trademark(s)?

Trademark protection can be obtainedthrough registration or, in some coun-tries, also through use. Even wheretrademarks can be protected throughuse, you are well advised to register thetrademark by filing the appropriateapplication form at the IP Philippines.Registering a trademark will providestronger protection, particularly in caseof conflict with an identical or confus-ingly similar trademark. The services of atrademark agent are often very useful(and sometimes compulsory) for theregistration of a trademark.

Is the registration of the tradename of your companysufficient?

Many people believe that by registeringtheir business and its trade name at the

Trademarks

ensure that consumers candistinguish between products;enable companies to differenti-ate their products;are a marketing tool and thebasis for building a brandimage and reputation;may be licensed to provide adirect source of revenuethrough royalties;are a crucial component offranchising agreements;may be a valuable businessasset;encourage companies to investin maintaining or improvingproduct quality;may be useful for obtainingfinancing.

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business registry, this name would alsobe automatically protected as a trade-mark. This is a rather common miscon-ception. It is important to understandthe difference between trade names andtrade marks.

A trade name is the full name of yourbusiness. Example, “Blackmark Philip-pines, Inc.” and it identifies yourcompany. It often ends with Inc. or othersimilar abbreviations that denote thelegal character of the company.

A trademark, however, is the sign thatdistinguishes the product(s) of yourcompany. A company may have varioustrademarks. For instance, BlackmarkPhilippines, Inc. may sell one of itsproducts as BLACKMARK but anotheras REDMARK. Companies may use aspecific trademark to identify all theirproducts, a particular range of productsor one specific type of product. Somecompanies may also use their tradename, or a part of it, as a trademark.They should, in that case, register it as atrademark.

Who is authorized to apply fortrademark registration?

In general, any person who intends touse a trademark or to have it used by

third parties can apply for registration. Itcan be either an individual or a legalentity.

Is it compulsory to register acompany’s trademarks?

While it is not compulsory, it is highlyadvisable, as registration provides theexclusive right to prevent unauthorizeduse of the trademark.

What are the main reasons forrejecting an application?

While selecting a trademark it is helpfulto know which categories of signs areusually not acceptable for registration.Applications for trademark registrationare usually rejected on what arecommonly referred to as “absolutegrounds” in the following cases:

Generic terms. For example, ifyour company intends to registerthe trademark CHAIR to sellchairs, the mark would be rejectedsince “chair” is the generic termfor the product.

Descriptive terms. These arewords that are usually used in

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trade to describe the product inquestion. For example, the markSWEET is likely to be rejected formarketing chocolates as beingdescriptive. In fact, it would beconsidered unfair to give anysingle chocolate manufacturerexclusivity over the word “sweet”for marketing its products.Similarly, qualitative or laudatoryterms such as RAPID, BEST,CLASSIC or INNOVATIVE arelikely to give rise to similarobjections unless they are part ofan otherwise distinctive mark. Insuch cases, it may be necessary toinclude a disclaimer clarifying thatno exclusivity is sought for thatparticular part of the mark.

Deceptive trademarks. Theseare trademarks that are likely todeceive or mislead consumers asto the nature, quality or geographi-cal origin of the product. Forexample, marketing margarineunder a trademark featuring aCOW would probably be rejected,as it would be considered mislead-ing for consumers, who are likelyto associate the mark with dairyproducts (i.e. butter).

Marks considered to becontrary to public order ormorality. Words and illustrationsthat are considered to violatecommonly-accepted norms ofmorality and religion are generallynot allowed to be registered astrademarks.

Flags, armorial bearings,official hallmarks and em-blems of states and interna-tional organizations which havebeen communicated to theInternational Bureau of WIPO areusually excluded from registration.

Applications are rejected on “relativegrounds” when the trademark conflictswith prior trademark rights. Having twoidentical (or very similar) trademarks forthe same type of product could causeconfusion among consumers. Sometrademark offices check for conflict withexisting marks, including unregisteredwell-known marks, as a regular part ofthe registration process, while manyothers only do so when the trademark ischallenged by a third party afterpublication of the trademark. In eithercase, if the trademark is considered tobe identical or confusingly similar to anexisting one for identical or similar

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products, it will be rejected or cancelled,as the case may be.

It would, therefore, be wise to avoidusing trademarks that risk beingconsidered confusingly similar toexisting marks.

What should be kept in mindwhen selecting or creating atrademark?

Selecting or creating an appropriatetrademark is a critical step, as it is animportant element of the marketingstrategy of your business. So what is anappropriate trademark for yourproduct(s)? Evidently, there are no hard

and fast rules. But the following five-point checklist may be useful.

While selecting one or morewords as your trademark youshould also take into considerationthe implications of selecting certaintypes of words.

Coined or “fanciful” words. Theseare invented words without anyintrinsic or real meaning. Coinedwords have the advantage of beingeasy to protect, as they are morelikely to be considered inherentlydistinctive. On the negative side,

Five Point Checklist forSelecting Your Trademark

Check that your trademark ofchoice meets all the legal require-ments for registration (seereasons for rejecting applicationson page 7).Do a trademark search to makesure that it is not identical orconfusingly similar to existingtrademarks (see page 14).Make sure the trademark is easyto read, write, spell and remem-

ber and is suitable to all typesof advertising media.Make sure the mark does nothave any undesired connota-tions in your own language orin any of the languages ofpotential export markets.Check that the correspondingdomain name (i.e. Internetaddress) is available forregistration (for more on therelationship between trade-marks and domain names seepage 21).

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however, they may be moredifficult to remember for consum-ers, requiring greater effort toadvertise the products.

Arbitrary marks: These are wordsthat have a meaning that has norelation to the product theyadvertise. While these types ofmarks will also be easy to protect,they may also require heavyadvertising to create the associa-tion between the mark and theproduct in the minds of consum-ers.

Example: The trademark EL-EPHANT for marketing mobilephones.

Suggestive marks. These are marksthat hint at one or some of theattributes of the product. Theappeal of suggestive marks is that

they act as a form of advertising. Aslight risk, however, is that IPPhilippines may consider asuggestive mark to be too descrip-tive of the product.

Example: The trademark SUNNYfor marketing electric heaterswould hint at the fact that theproduct is meant to radiate heatand keep your house warm.However, some trademark regis-tries may find the mark toodescriptive and thus may notregister it.

Irrespective of the type of markyou choose, it is important toavoid imitating existing trademarks.A slightly altered competitor’strademark or a misspelled well-known or famous mark is unlikelyto be registered.

Example: EASY WEAR is a regis-tered trademark for teenageclothing. It would be unwise to tryto sell the same or similar prod-ucts using the trademarkEEZYWARE as it would probablybe considered confusingly similarto the existing mark and is unlikelyto be registered.

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What are the steps involved inregistering a trademark?

The steps involved in registering atrademark are:1. Filing of Application. Applications

must be filed with the Bureau ofTrademarks of the IP Philippines.A duty officer is assigned toreceive the request for registration.Once the application is submittedto the duty officer, a formalityexamination takes place. In aformality examination, the dutyofficer checks if the applicationcomplies with the followingrequirements needed for the grantof a filing date:a. An express or implicit indica-

tion that the registration of amark is sought;

b. The identity of the applicant;c. Indications sufficient to contact

the applicant or his representa-tive, if any;

d. A reproduction of the markwhose registration is sought;and

e. The list of goods or services forwhich the registration issought.

The duty officer then issues anorder of payment to the applicant.An application number is issuedafter payment of the filing fee.

2. Search. The application undergoesa search process. Through search,it will be known whether thetrademark applied for has similaror identical marks.

3. Substantive Examination. Anexaminer will be assigned to assessthe registrability of the applicationpursuant to the laws and the rules.The examiner communicates withthe applicants through mail. Whenall requirements are complied with,the mark is allowed. Otherwise, theapplication is rejected.

4. Publication for Purposes ofOpposition. After allowance bythe examiner, the application ispublished in the IP PhilippinesGazette to give a chance to thosewho might be damaged by theregistration of the mark to opposethe registration.

5. Registration. Upon certification bythe Director of the Bureau of LegalAffairs that no notice of opposi-

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tion, whether or not verified andwhether or not by means of theoriginal copy, has been filed withinthirty (30) days from the date ofrelease for circulation of the IPPhilippines Gazette publishing theapplication for opposition, andupon payment of the required fee,the office shall issue the certificateof registration. The issuance of thecertificate of registration shall bepublished in the IP PhilippinesGazette and shall be entered onthe records of the IP Philippines.

The certificate of registration isvalid for ten (10) years from thedate of registration.

6. Renewal. The mark may berenewed for succeeding periods often (10) years by filing a requestfor renewal and paying therequired renewal fees. However,the registration may be canceled ifthe trademark is not used. The lawrequires that a declaration ofactual use and evidence to thateffect be filed within three (3)years from the application dateand within one (1) year from thefifth anniversary of the date ofregistration of the mark.

Trademark applicationrequirements*

a. A request for registrationb. The name and address of the

applicantc. The name of a State of which the

applicant is a national or where hehas domicile, and the name of aState in which the applicant has areal and effective industrial orcommercial establishment, if any

d. Where the applicant is a juridicalentity, the law under which it isorganized and existing

e. The appointment of an agent orrepresentative, if the applicant isnot domiciled in the Philippines

f. Where the applicant claims thepriority of an earlier application,an indication of:

i. The name of the state whichwhose national office the earlierapplication was filed or if filedwith an office, the name of thatoffice

ii. The date on which the earlierapplication was filed

iii. Where available, the applica-tion number of the earlierapplication

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g. Where the applicant claims coloras a distinctive feature of the mark,a statement to that effect as well asthe names of the color or colorsclaimed and an indication, inrespect of each other, of theprincipal parts of the mark whichare in that color

h. Where the mark is a three-dimensional mark, a statement tothat effect

i. One or more reproductions of themark or some parts of the mark, asprescribed in the Regulations

j. A transliteration or translation ofthe mark or of some parts of themark, as prescribed in the Regula-tions

k. The names of the goods orservices for which the registrationis sought, grouped according tothe classes of the Nice Classifica-tion, together with the number ofthe class of the said Classificationto which each group of goods orservices belongs

l. A signature by, or other self-identification of, the applicant orhis representative

*Sec. 124, Intellectual Property Code

How long does it take toregister a trademark?

On the average, it takes ten (10) monthsto register a trademark. This turn-around-time includes the time of filing toissuance of certificate of registration.Make sure that you apply for registra-tion of a trademark well in advance sothat its registration is secured in time forits use in the advertising and marketingof the relevant products.

What are the costs associatedwith trademark creation,protection and use?

It is important to keep in mind, andproperly budget, the costs related totrademark creation and registration:

There may be costs associatedwith the creation of a logo orword to be used as a trademark, asmany companies outsource thistask.There may be costs for conductinga trademark search.There are costs associated withthe registration process, whichvary depending on the categoriesof products (or trademark classes,see page 31). The BoT will provide

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you with the detailed costs oftrademark registration in yourcountry.Companies choosing to use aprofessional trademark agent to

assist in the registration processwould face additional costs butwould probably save significanttime and energy in following theregistration process.

A Well-classified System

While filling in your trademarkapplication form you are requiredto indicate the goods and/orservices for which you wish toregister your trademark and togroup them according to classes.These refer to the classes in thetrademark classification system. Thetrademark classification systemallows for the storage of data onregistered trademarks in an orderlymanner in relation to the types ofgoods or services. This makes iteasier to retrieve information fromtrademark databases. It is critical toregister your trademark in allclasses in which you intend to useyour trademark.

The most widely used classificationsystem is the International Trade-mark Classification system (the so-

called Nice system for classificationof word marks), which has 34classes for goods and a further 11for services. More information onthe Nice classification system isavailable in Annex III. See also:www.wipo.int/classifications/en/nice/about/.

Example:How are products classified? Let ustake an example. If your company isproducing knives and forks, thenyour trademark application shouldbe made for the correspondinggoods in class 8. If, however, youwish to market other kitchenutensils (such as containers, pans orpots) using the same trademark youwill also have to register the markfor the corresponding goods in class21. In the Philippines, the applicantmay file a multi-class application forthe product/s.

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How can you find out if yourchosen trademark mightconflict with other registeredtrademarks? What is atrademark search?

Before submitting an application forregistering a trademark, you shouldensure that a proper trademark searchhas been carried out. This is done tomake sure that the trademark youintend to use, or a similar one, is notalready registered by another companyfor identical or similar products.You can either make a trademark searchyourself or hire the services of atrademark agent. Either of you can dothe search through the IP Philippines(which may be free or require paymentof a fee) or through a commerciallyoperated trademark database. Inwhatever manner it is done, bear inmind that any such trademark search isonly preliminary. It may be difficult tomake sure that your trademark ofchoice is not “confusingly similar” toexisting validly-registered trademarks.This is why the guidance of an experi-enced trademark agent, who is familiarwith the practice of the trademark officeand court decisions, may be very helpful.

Before going to an agent you may wishto check the IP Philippines onlinetrademark database which you may useto conduct a preliminary search. A listof trademark databases is available atwww.ipophil.gov.ph or http://ipophil.gov.ph/tmsearch2/.

Trademarks are grouped into “classes”according to the goods or services theyserve to identify (see the internationalclassification system in Annex III). Youmay therefore begin by familiarizingyourself with the 45 different trademarkclasses.

Outsourcing TrademarkCreation

Designing a trademark is a creativeprocess. Usually, a creator automaticallyowns the copyright over creative orartistic works, such as the artwork of atrademark. Therefore, when the creationof a trademark is outsourced, it is bestto clarify issues of copyright ownershipin the original agreement and/or tomake sure the copyright over thetrademark is formally assigned to yourcompany.

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Do you need a trademark agentto file a trademark application?

IP Philippines does not require you tohire a trademark agent to file anapplication; you may file the applicationyourself. However, IP Philippinesrequires an applicant who is notdomiciled in the Philippines to engagethe services of a Philippine residenttrademark agent skilled in conductingtrademark searches and familiar with thedetailed procedure for trademarkregistration. If you apply for trademarkregistration abroad you may be requiredto have a trademark agent who isresident in the relevant country.

The BoT (see Annex II) will be able toadvise you on the need, if any, to berepresented by an agent and provideyou with a list of officially approvedtrademark agents.

For how long is yourregistered trademarkprotected?

Registered trademarks in the Philippinesare protected for 10 years. Registrationmay be renewed provided renewal feesare paid in time. Make sure that some-one in your company is made respon-sible for ensuring timely renewal oftrademark registrations in all countriesof continuing interest to your business.

Is trademark registration in thePhilippines validinternationally?

The legal rights arising out of a trade-mark registration are normally limited tothe territory to which they pertain; so,ordinarily, valid registration of a trade-mark in the Philippines gives you rightsonly in the Philippines unless your markis considered to be a well-known mark.(For information on well-known markssee page 19).

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Should you considerprotecting your trademarkabroad?

All the main reasons for registering yourtrademark in the Philippines also applyto the commercialization of yourproducts in foreign markets. It is,therefore, highly advisable to registeryour trademark abroad if you wish togrant a license to use in other countries.Exporting goods bearing a distinctivetrademark will enable your products tobe recognized in foreign markets,allowing your company to build areputation and image among foreignconsumers, which may result in higherprofits.

How can you register thetrademark of your companyabroad?

Once you have registered the trademarkof your company in the Philippinesthere are two main ways to register thetrademark in other countries:

The National Route: Your businessmay apply to the trademark office ofeach country in which it is seeking

protection by filing the correspondingapplication in the required language andpaying the required fees. As indicatedearlier, a country may require you to usethe services of a locally-based trademarkagent for this purpose.

The Regional Route: If you wish toapply for protection in countries whichare members of a regional trademarksystem you may apply for registration,with effect in the territories of allMember countries, by filing an applica-tion at the relevant regional office. Theregional trademark offices are:

The African Regional IndustrialProperty OfficeThe Benelux Trademark OfficeThe Office for the Harmonizationof the Internal Market of theEuropean UnionThe Organisation Africaine de laPropriété Intellectuelle.

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What are service marks?

A service mark is very similar innature to a trademark. Both are distinc-tive signs; trademarks distinguish thegoods of one enterprise from those ofothers, while service marks fulfil thesame function in relation to services.Services may be of any kind, such asfinancial, banking, travel, advertising orcatering, to name a few. Service markscan be registered, renewed, cancelled,assigned and licensed under the sameconditions as trademarks.Example of service mark:

Courtesy: Smart Communications, Phils

What are collective marks?

A collective mark is generally ownedby an association or cooperative whosemembers may use the collective mark tomarket their products. The associationgenerally establishes a set of criteria forusing the collective mark (e.g., qualitystandards) and permits individualcompanies to use the mark if theycomply with such standards. Collectivemarks may be an effective way of jointly

Trademarks are marks used to distinguish certain goods as those producedby a specific enterprise.

Service marks are used to distinguish certain services as those provided by aspecific enterprise.

Collective marks are used to distinguish goods or services produced orprovided by members of an association.

Well-known marks are considered to be well-known in the market and as aresult benefit from stronger protection.

3. Types of Trademarks

Courtesy: Philippine National Bank

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marketing the products of a group ofenterprises which may find it moredifficult for their individual marks to berecognized by consumers and/orhandled by the main distributors.

An application for registration of acollective mark shall designate that theapplication is for a collective mark andshall be accompanied by a copy of theagreement governing the use of thecollective mark, if one is available.

What are well-known marks?

Well-known marks are marks that areconsidered to be well-known interna-tionally and in the Philippines bycompetent authority. In determiningwhether a mark is well-known, accountshall be taken of the relevant sector ofthe public, rather than of the public atlarge, including knowledge in thePhilippines which has been obtained asa result of the promotion of the mark.

Well-known marks generally benefitfrom stronger protection. For example,well-known marks may be protectedeven if they are not registered in thePhilippines. In addition, while marks aregenerally protected against confusinglysimilar marks only if used for identicalor similar products, well-known marks

that are registered in the Philippinesare protected against confusinglysimilar marks for even dissimilarproducts. The main purpose of thisstronger protection is to preventcompanies from free-riding on thereputation of a well-known mark and/or causing damage to its reputation orgoodwill.

Example:

Jollibee is a trademark of a leading fast-food chain in the Philippines. Jollibeewould then benefit from automaticprotection in countries where well-known marks enjoy stronger protec-tion. The protection would also beavailable for unrelated goods andservices. That is to say that if anothercompany decides to market otherproducts, ranging from T-shirts tosunglasses, using the Jollibee mark, itwill have to seek the authorization ofJollibee Food Corporation or risk beingsued for infringement of trademarkrights.

Courtesy: Jollibee Food Corporation

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4. Using Trademarks

Can you register a trademarkin the Philippines withouthaving used it?

You may apply for registration beforeyou have used the trademark in thePhilippines. But in most cases, a trade-mark that has not been used for a givenperiod of time (generally three to fiveyears) following registration may betaken off the trademark register. Thismeans you could lose your rights inyour trademark.

How should you usetrademarks in advertising?

If your mark is registered with a specificdesign or font, make sure that thetrademark is used exactly as it isregistered. Monitor its use closely as it iscrucial for the image of your company’sproducts. It is also important to avoidusing the trademark as a verb or nounso that it does not come to be perceivedby consumers as a generic term.

Can your company use thesame trademark for differentproducts?

Different trademarks may be used forthe different products lines of a com-pany. Depending on its brandingstrategy, each company will decidewhether to use the same trademark forits products, extending the brand everytime a new product is released, or touse a different mark for each productline.

Extending an existing brand to newproducts enables the new product tobenefit from the image and reputation ofthe mark. However, the use of a newmark, more specific and relevant to thenew product, may also prove advanta-geous and enable the company to target

TM or ®?

The use of ®, TM, SM or equivalentsymbols next to a trademark is nota requirement and generallyprovides no further legal protection.Nevertheless, it may be a conve-nient way of informing others that agiven sign is a trademark, thuswarning possible infringers andcounterfeiters. The ® symbol isused once the trademark has beenregistered, whereas TM denotes thata given sign is a trademark; SM issometimes used for service marks.

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the new product to a specific customergroup (e.g. children, teenagers, etc.) orto create a specific image for the newproduct line.

Different companies adopt differentstrategies. Whatever your choice, youshould make sure that your trademark isregistered for all categories of goodsand/or services for which it is, or will be,used.

What should be kept in mindwhen using trademarks on theInternet?

The use of trademarks on the Internethas raised a number of controversiallegal problems with no easy or uniformsolution. One important problem stemsfrom the fact that trademark rights areterritorial (that is, they are only pro-tected in the country or region wherethe mark has been registered or used),whereas the reach of the Internet isglobal. This creates problems when itcomes to settling disputes betweenpersons or companies legitimatelyowning identical or confusingly similartrademarks for identical or similar goodsor services in different countries.Legislation in this area is still developingand treatment may differ from onecountry to another.

What is a domain name andhow does it relate totrademarks?

An important problem concerns theconflict between trademarks and domainnames. Domain names are Internetaddresses, and are commonly used tofind websites. For example, the domainname ‘wipo.int’ is used to locate the

Courtesy: Splash Corporation

Splash Corporation is a formidablemarketing company in the beauty,personal and healthcare industries.From its humble beginnings, it is nowknown for its strong brand manage-ment of extensively researched,pioneering and innovative products.Splash grew to a multi-billion pesocompany fueled by its sharpestunderstanding of its consumers.

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WIPO website at www.wipo.int.Over time, domain names have come toconstitute business identifiers thus oftencoming into conflict with trademarks.Often national laws, or courts, treat theregistration of the trademark of anothercompany or person as a domain nameas trademark infringement, popularlyknown as cybersquatting. If this happens,then, your business may not only haveto transfer or cancel the domain name,but it may also have to pay damages ora heavy fine. Therefore, it is importantthat you choose a domain name whichis not the trademark of another com-pany, particularly a well-known trade-mark.

In order to find out whether a particulartrademark is already protected, you candirectly contact the BoT which operateInternet searchable trademark databases.A list of such databases is available onhttp://www.ipophil.gov.ph/.

If the trademark of your company isbeing used in a domain name or is beingcybersquatted by another individual orcompany, you may take action to stopsuch misuse/infringement of the rights ofyour company. In such a case, oneoption would be to use IP Philippinesvery popular online administrative

procedure for domain name disputeresolution at http://www.ipophil.gov.ph/.This website includes a model complaintas well as a legal index to domain namecases that have already been decided.

Can you license yourtrademark to other companies?

Trademarks can be licensed to othercompanies. In such cases, the trademarkowner retains ownership and merelyagrees to the use of the trademark byone or more other companies. This isusually done on payment of royaltiesand involves the consent of the trade-mark owner, which is usually specified ina formal licensing agreement. Dependingon the nature of the agreement, thelicensor often retains some degree ofcontrol over the licensee to guaranteethat a certain quality is maintained.

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In practice, trademark licenses arefrequently granted within broaderlicensing agreements, for example,franchising agreements or agreementsincluding the licensing of other intellec-tual property rights such as patents,know-how and some degree of technicalassistance for the production of a givenproduct.

What does a franchisingagreement have to do withtrademarks?

The licensing of a trademark is centralto a franchising agreement. In franchis-ing agreements the degree of control ofthe trademark owner over the franchi-see is generally greater than is the casefor standard trademark licensingagreements. In the case of franchising,the franchiser allows another person(the franchisee) to use his way of doingbusiness (including trademarks, know-how, customer service, software, shopdecoration, etc.) in accordance with aset of prescriptions and in exchange forcompensation or royalty.

Example:

A restaurant selling the best, affordablepizza operates under the trademarkLots’ a Pizza. It has developed a systemfor preparing and selling these products,which are sold in large volumes and in auniform manner. The system includesvarious factors that contribute to thesuccess of Lots’ a Pizza restaurants,including recipes and methods ofpreparing meals that result in a productof consistent quality, the design ofemployees’ uniforms, the design of thebuildings, the design of packaging, andmanagement and accounting systems.Lots’ a Pizza imparts its knowledge andexperience to its franchisees and retainsthe right to supervise and control localfranchises. As a crucial component ofthe franchising agreement the franchi-sees will also be authorized and obligedto use the Lots’ a Pizza trademark.

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Is there any restriction inselling or assigning thetrademark of your company toanother company?

It is increasingly possible to sell orassign a trademark independently fromthe business that currently owns it. Inthe case of sale or assignment of atrademark, it may be required to deposita copy of the agreement, or parts of it,at the trademark office.

Do you need to register allsmall modifications to yourtrademark?

Many trademarks, including some of themost famous, have slightly changed orevolved over the years in order tomodernize the image of a company oradapt to new advertising media. Marksmay be changed or adapted, but yourcompany will have to be careful andconsult with the Bureau of Trademark asto whether a specific change will requirethe submission of a new application andpayment of relevant fees.

5. EnforcingTrademarks

What should your business doif its trademark is being usedby others withoutauthorization?

The burden of enforcing a trademark ismainly on the trademark owner. It is upto your company as a trademark ownerto identify any infringement and todecide what measures should be takento enforce trademark rights.

It is always useful to seek expert adviceif you believe that someone is infringingyour trademark. An intellectual propertylawyer would be the right person to giveyou information on the existing optionsin the Philippines and, presumably, alsoin neighboring countries to initiateaction against counterfeiting andinfringement and will provide you withadvice on how to enforce your rights.

If you are faced with infringement ofyour trademark rights, then you maychoose to begin by sending a letter(commonly known as a “cease anddesist letter”) to the alleged infringerinforming him/her of the possible

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existence of a conflict. In writing such aletter, the assistance of a trademarklawyer is recommended.

If your business considers the infringe-ment to be willful and knows thelocation of the infringing activity, then itmay wish to take surprise action byobtaining, with the help of a trademarklawyer, a search and seize order (usually,from a competent court or the police)to conduct a raid without prior noticeto the allegedly offending company/person.

The infringer may be compelled by thejudicial authorities to inform you of theidentity of persons involved in theproduction and distribution of theinfringing goods or services and theirchannels of distribution. As an effectivedeterrent to infringement, the judicialauthorities may order, upon yourrequest, that infringing goods andmaterials be destroyed or disposed ofoutside the channels of commercewithout compensation of any sort.

In order to prevent the importation ofcounterfeit trademark goods, measuresat the international border are availableto trademark owners in many countriesthrough the national customs authori-ties. As a trademark owner, your

company may seek the assistance of thecustoms authorities at the border, thatis, before the counterfeit goods havebeen distributed in the country con-cerned. The assistance of customs wouldgenerally require payment of prescribedfees, for which you will have to contactthe relevant customs authorities.

In some instances, an effective way ofdealing with infringement is througharbitration or mediation. Arbitrationgenerally has the advantage of being aless formal, shorter and cheaperprocedure than court proceedings, andan arbitral award is more easily enforce-able internationally. An advantage ofmediation is that the parties retaincontrol of the dispute resolutionprocess. As such, it can help to preservegood business relations with anotherenterprise with which your companymay like to collaborate in the future. Formore information on arbitration andmediation, see the website of the IPPhilippines at http://www.ipophil.gov.ph/.

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Annex I – Useful websites

For more information on:

Philippine IP laws and services www.ipophil.gov.ph

intellectual property issues from a business perspective www.wipo.int/sme

trademarks in general www.wipo.int/about-ip www.inta.org(InternationalTrademark Association)

the practical aspects relating to the registration of trademarks see Annex II orwww.wipo.int/directory/en/urls.jsp

Madrid system for the International Registration of Marks www.wipo.int/madrid

International Classification of Goods and Services for the Purposes of theRegistration of Marks under the Nice Agreement www.wipo.int/classifications(under Nice Agreement)

International Classification of the Figurative Elements of Marks under theVienna Agreement www.wipo.int/classifications(under Vienna Agreement)

the conflict between trademarks and domain names and on alternative disputeresolution procedures for domain names www.arbiter.wipo.int/domainswww.icann.org.

A list of the online trademark databases maintained by industrial property officesthroughout the world is available at www.arbiter.wipo.int/trademark

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ANNEX II – Internet Addresses

National and Regional Intellectual Property Offices

African Intellectual Property Organization www.oapi.wipo.netAlgeria www.inapi.orgAlbania www.alpto.gov.alAndorra www.ompa.adArgentina www.inpi.gov.arArmenia www.armpatent.orgAustralia www.ipaustralia.gov.auAustria www.patent.bmvit.gv.atBahrain www.gulf-patent-office.org.sa/

bahrainframe.htmBarbados www.caipo.orgBelarus www.belgospatent.org/english/about/

history.htmlBelgium www.mineco.fgov.beBelize www.belipo.bzBenelux www.boip.intBenin www.oapi.wipo.netBolivia www.senapi.gov.boBotswana www.aripo.orgBrazil www.inpi.gov.brBulgaria www.bpo.bgBurkina Faso www.oapi.wipo.netBurundi www.oapi.wipo.netCambodia www.moc.gov.khCameroon www.oapi.wipo.netCanada www.opic.gc.caCentral African Republic www.oapi.wipo.netChad www.oapi.wipo.netChile www.dpi.clChina www.sipo.gov.cnChina (Hong Kong -SAR) www.ipd.gov.hkChina (Macao) www.economia.gov.moChina (Marks) www.saic.gov.cnColombia www.sic.gov.coCongo www.oapi.wipo.netCosta Rica www.registronacional.go.cr

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Côte d’Ivoire www.oapi.wipo.netCroatia www.dziv.hrCuba www.ocpi.cuCyprus www.mcit.gov.cy/mcit/drcor/drcor.nsfCzech Republic www.upv.czDemocratic Republic of the Congo www.oapi.wipo.netDenmark www.dkpto.dkDominican Republic www.seic.gov.do/onapiEgypt www.egypo.gov.egEl Salvador www.cnr.gobs.svEstonia www.epa.eeEurasian Patent Office www.eapo.orgEuropean Union (Office for Harmonization in the InternalMarket – OHIM) www.oami.eu.intFinland www.prh.fiFrance www.inpi.frGabon www.oapi.wipo.netGambia www.aripo.orgGeorgia www.sakpatenti.org.geGermany www.dpma.deGhana www.aripo.orgGreece www.obi.grHonduras www.sic.gob.hn/pintelec/indice.htmHungary www.mszh.hu/english/index.htmlIceland www.patent.is/focal/webguard.nsf/key2/

indexeng.htmlIndia www.ipindia.nic.inIndonesia www.dgip.go.idIreland www.patentsoffice.ieIsrael www.justice.gov.ilItaly www.uibm.gov.itJamaica www.jipo.gov.jmJapan www.jpo.go.jpJordan www.mit.gov.joKazakhstan www.kazpatent.org/englishKenya www.aripo.orgKuwait www.gulf-patent-office.org.saLao People’s Democratic Republic www.stea.la.wipo.netLatvia www.lrpv.lvLebanon www.economy.gov.lb

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Lesotho www.aripo.orgLiechtenstein www.european-patent-office.orgLithuania www.vpb.ltLuxembourg www.etat.lu/ecMalawi www.aripo.orgMalaysia www.mipc.gov.myMali www.oapi.wipo.netMexico www.impi.gob.mxMonaco www.european-patent-office.org/patlib/

country/monacoMontenegro www.yupat.sv.gov.yuMorocco www.ompic.org.maMozambique www.aripo.orgNamibia www.aripo.orgNepal www.ip.np.wipo.netNetherlands www.octrooicentrum.nlNew Zealand www.iponz.govt.nzNiger www.oapi.wipo.netNorway www.patentstyret.noOman www.gulf-patent-office.org.saPanama www.digerpi.gob.paPeru www.indecopi.gob.pePhilippines www.ipophil.gov.phPoland www.business.gov.pl/

Intellectual,property,protection,90.htmlPortugal www.inpi.ptQatar www.gulf-patent-office.org.saRepublic of Korea www.kipo.go.krRepublic of Moldova www.agepi.mdRomania www.osim.roRussian Federation www.rupto.ruSaint Vincent and the Grenadines 196.1.161.62/govt/cipo/index.aspSaudi Arabia www.gulf-patent-office.org.saSenegal www.oapi.wipo.netSerbia www.yupat.sv.gov.yuSierra Leone www.aripo.orgSingapore www.ipos.gov.sgSlovak Republic www.indprop.gov.skSlovenia www.uil-sipo.si/Default.htmSomalia www.aripo.org

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South Africa www.cipro.gov.zaSpain www.oepm.esSudan www.aripo.orgSwaziland www.aripo.orgSweden www.prv.seSwitzerland www.ige.chSyrian Arab Republic www.himaya.netTajikistan www.tipat.orgThailand www.ipthailand.orgThe Former Yugoslav Republicof Macedonia www.ippo.gov.mkTogo www.oapi.wipo.netTrinidad and Tobago www.ipo.gov.tt/home.aspTunisia www.inorpi.ind.tnTurkey www.turkpatent.gov.trTurkmenistan www.eapo.orgUganda www.aripo.orgUkraine www.sdip.gov.uaUnited Arab Emirates www.gulf-patent-office.org.saUnited Kingdom www.patent.gov.ukUnited Republic of Tanzania www.aripo.orgUnited States www.uspto.govUruguay www.dnpi.gub.uyUzbekistan www.patent.uzVenezuela www.sapi.gov.veYemen www.most.org.yeZambia www.aripo.orgZimbabwe www.aripo.org

Note:

For up-to-date information visit website at the following urls: www.wipo.int/mem-bers/en/ and www.wipo.int/directory/en/urls.jsp

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Annex III – Nice Classification

International Classification of Goods and Services for the Purposes of the Registra-tion of Marks under the Nice Agreement

Goods

1. Chemicals used in industry, science and photography, as well as in agriculture,horticulture and forestry; unprocessed artificial resins, unprocessed plastics;manures; fire extinguishing compositions; tempering and soldering preparations;chemical substances for preserving foodstuffs; tanning substances; adhesivesused in industry.

2. Paints, varnishes, lacquers; preservatives against rust and against deteriorationof wood; colorants; mordents; raw natural resins; metals in foil and powder formfor painters, decorators, printers and artists.

3. Bleaching preparations and other substances for laundry use; cleaning, polish-ing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmet-ics, hair lotions; dentifrice.

4. Industrial oils and greases; lubricants; dust absorbing, wetting and bindingcompositions; fuels (including motor spirit) and illuminants; candles and wicksfor lighting.

5. Pharmaceutical and veterinary preparations; sanitary preparations for medicalpurposes; dietetic substances adapted for medical use, food for babies; plasters,materials for dressings; material for stopping teeth, dental wax; disinfectants;preparations for destroying vermin; fungicides, herbicides.

6. Common metals and their alloys; metal building materials; transportablebuildings of metal; materials of metal for railway tracks; non-electric cables andwires of common metal; ironmongery, small items of metal hardware; pipes and

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tubes of metal; safes; goods of common metal not included in other classes;ores.

7. Machines and machine tools; motors and engines (except for land vehicles);machine coupling and transmission components (except for land vehicles);agricultural implements other than handoperated; incubators for eggs.

8. Hand tools and implements (hand-operated); cutlery; side arms; razors.

9. Scientific, nautical, surveying, photographic, cinematographic, optical, weighing,measuring, signaling, checking (supervision), life-saving and teaching apparatusand instruments; apparatus and instruments for conducting, switching, trans-forming, accumulating, regulating or controlling electricity; apparatus forrecording, transmission or reproduction of sound or images; magnetic datacarriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processingequipment and computers; fireextinguishing apparatus.

10. Surgical, medical, dental and veterinary apparatus and instruments, artificiallimbs, eyes and teeth; orthopedic articles; suture materials.

11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying,ventilating, water supply and sanitary purposes.

12. Vehicles; apparatus for locomotion by land, air or water.

13. Firearms; ammunition and projectiles; explosives; fireworks.

14. Precious metals and their alloys and goods in precious metals or coatedtherewith, not included in other classes; jewelry, precious stones; horologicaland chronometric instruments.

15. Musical instruments.

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16. Paper, cardboard and goods made from these materials, not included in otherclasses; printed matter; bookbinding material; photographs; stationery; adhesivesfor stationery or household purposes; artists’ materials; paint brushes; typewrit-ers and office requisites (except furniture); instructional and teaching material(except apparatus); plastic materials for packaging (not included in otherclasses); printers’ type; printing blocks.

17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these materialsand not included in other classes; plastics in extruded form for use in manufac-ture; packing, stopping and insulating materials; flexible pipes, not of metal.

18. Leather and imitations of leather, and goods made of these materials and notincluded in other classes; animal skins, hides; trunks and travelling bags;umbrellas, parasols and walking sticks; whips, harness and saddlery.

19. Building materials (non-metallic); non-metallic rigid pipes for building; asphalt,pitch and bitumen; non-metallic transportable buildings; monuments, not ofmetal.

20. Furniture, mirrors, picture frames; goods (not included in other classes) ofwood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber,mother-of-pearl, meerschaum and substitutes for all these materials, or ofplastics.

21. Household or kitchen utensils and containers (not of precious metal or coatedtherewith); combs and sponges; brushes (except paint brushes); brush-makingmaterials; articles for cleaning purposes; steelwool; unworked or semi-workedglass (except glass used in building); glassware, porcelain and earthenware notincluded in other classes.

22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not includedin other classes); padding and stuffing materials (except of rubber or plastics);raw fibrous textile materials.

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23. Yarns and threads, for textile use.

24. Textiles and textile goods, not included in other classes; bed and table covers.

25. Clothing, footwear, headgear.

26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins andneedles; artificial flowers.

27. Carpets, rugs, mats and matting, linoleum and other materials for coveringexisting floors; wall hangings (non-textile).

28. Games and playthings; gymnastic and sporting articles not included in otherclasses; decorations for Christmas trees.

29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruitsand vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oilsand fats.

30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and prepara-tions made from cereals, bread, pastry and confectionery, ices; honey, treacle;yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

31. Agricultural, horticultural and forestry products and grains not included inother classes; live animals; fresh fruits and vegetables; seeds, natural plants andflowers; foodstuffs for animals, malt.

32. Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinksand fruit juices; syrups and other preparations for making beverages.

33. Alcoholic beverages (except beers).

34. Tobacco; smokers’ articles; matches.

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Services

35. Advertising; business management; business administration; office functions.

36. Insurance; financial affairs; monetary affairs; real estate affairs.

37. Building construction; repair; installation services.

38. Telecommunications.

39. Transport; packaging and storage of goods; travel arrangement.

40. Treatment of materials.

41. Education; providing of training; entertainment; sporting and cultural activities.

42. Scientific and technological services and research and design relating thereto;industrial analysis and research services; design and development of computerhardware and software; legal services.

43. Services for providing food and drink; temporary accommodation.

44. Medical services; veterinary services; hygienic and beauty care for human beingsor animals; agriculture, horticulture and forestry services.

45. Personal and social services rendered by others to meet the needs of individu-als; security services for the protection of property and individuals.

In January 2006, 73 states were party to the Nice Agreement. They have adoptedand apply the Nice Classification for the purposes of the registration of marks.

Note:For up-to-date information, visit website at the following urls: www.wipo.int/classifications/fulltext/nice8/enmain.htm and www.wipo.int/madrid/en/contact.html

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