Trademark

The Law on Trademarks, Service Marks and Trade Names

(Excerpts)
Definitions.

“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;
“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;
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:
(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:
(g) Is likely to mislead the public, particularly as to
the nature, quality, characteristics or geographical
origin of the goods or services;
(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 for which registration
is requested as a result of the use that have 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.
 Division of Application. ‑ Any application referring to
several goods or services, hereafter referred to as the
“initial application,” may be divided by the applicant into
two (2) or more applications, hereafter referred to as the
“divisional applications,” by distributing among the latter
the goods or services referred to in the initial application.
The divisional applications shall preserve the filing date of
the initial application or the benefit of the right of priority.
(n)
Priority Right. ‑

An application for registration of a mark filed in the

Philippines by a person, and who previously duly filed an
application for registration of the same mark in one of those
countries, shall be considered as filed as of the day the
application was first filed in the foreign country.
No registration of a mark in the Philippines by
a person described in this section shall be
granted until such mark has been registered in
the country of origin of the applicant.
Opposition. ‑ Any person who believes that he would
be damaged by the registration of a mark may, upon
payment of the required fee and within thirty (30)
days after the publication referred to in Subsection
133.2, file with the Office an opposition to the
application.
A certificate of registration of a mark may be issued to the
assignee of the applicant: Provided, That the assignment is
recorded in the Office. In case of a change of ownership, the
Office shall at the written request signed by the owner, or his
representative, or by the new owner, or his representative and
upon a proper showing and the payment of the prescribed fee,
issue to such assignee a new certificate of registration of the said
mark in the name of such assignee, and for the unexpired part of
the original period.
Certificates of Registration. ‑ A certificate of
registration of a mark shall be 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.
Reproduce, counterfeit, copy or colorably imitate a registered mark
or a dominant feature thereof and apply such reproduction,
counterfeit, copy or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be
used in commerce upon or in connection with the sale, offering for
sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to
cause mistake, or to deceive, shall be liable in a civil action for
infringement by the registrant for the remedies hereinafter set
 In particular, and without in any way limiting the
scope of protection against unfair competition, the
following shall be deemed guilty of unfair
competition:
(a) Any person, who is selling his goods and gives them the general
appearance of goods of another manufacturer or dealer, either as to the
goods themselves or in the wrapping of the packages in which they are
contained, or the devices or words thereon, or in any other feature of their
appearance, which would be likely to influence purchasers to believe that the
goods offered are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such
appearance as shall deceive the public and defraud another of his legitimate
trade, or any subsequent vendor of such goods or any agent of any vendor
engaged in selling such goods with a like purpose;