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Also, the matters contained in the following were written in accordance with the law, rules, and jurisprudence prevailing at the time of writing and posting, and do not include any future developments on the subject matter under discussion.
AT A GLANCE:
“A mark cannot be registered if it 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; xxx” (Section 123.1 (e), Intellectual Property Code)
A well-known mark is a mark which a competent authority of the Philippines has designated to be well-known internationally and in the Philippines. (Section 123.1 (e), Intellectual Property Code)
Republic Act No. 8293, or the Intellectual Property Code provides 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 the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of a mark.
Under the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2017 (Trademark Regulations of 2017), in determining whether a mark is well-known, the following criteria or any combination thereof may be considered:
(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 the mark is a well-known mark. (Rule 103)
The owner of a well-known mark has the right to be protected, whether or not the mark is registered in the Philippines.
The law says:
“A mark cannot be registered if it 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; xxx” (Section 123.1 (e), Intellectual Property Code)
Regardless of whether a well-known mark is registered or not in the Philippines, a mark cannot be registered if it is identical with, confusingly similar to, or constitutes a translation of an internationally well-known mark if used for identical or similar goods or services.
If the well-known mark is registered in the Philippines, a mark cannot be registered if it is identical with, or confusingly similar to, or constitutes a translation of an internationally well-known mark even if it is used for goods or services which are not similar to those with respect to which a registration is applied. (Section 123.1 (f), Intellectual Property Code)
Read also: What is the difference between trademark infringement and unfair competition?
Alburo Alburo and Associates Law Offices specializes in business law and labor law consulting. For inquiries regarding taxation and taxpayer’s remedies, you may reach us at info@alburolaw.com, or dial us at (02)7745-4391/0917-5772207.
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