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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:
The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Section 122, Intellectual Property Code)
Businesses generally thrive or perish depending on their reputation among customers. Logically, consumers gravitate towards products and services they believe are of a certain quality and provide perceived benefits. Thus, entrepreneurs and businesses actively seek to set apart their reputation and goodwill from every other enterprise with the goal of being the top-of-mind choice for the consumers. As signs differentiating the wares or services offered by enterprises, trademarks serve this purpose of making the products and services of each business uniquely memorable. Trademarks have several functions: they indicate the origin or ownership of the articles or services in which they are used; they guarantee that the articles or services come up to a certain standard of quality; and they advertise the articles and services they symbolize. Indeed, the goodwill of a business, as symbolized and distinguished by its trademarks, helps ensure that the enterprise stands out, stays afloat, and possibly flourish amidst the sea of commercial activity where the consumers’ continued patronage is a lifebuoy that may determine life or death. (Zuneca Pharmaceutical vs. Natrapharm, Inc., G.R. No. 211850, September 8, 2020.)
When it comes to trademarks, understanding ownership is important to protect your brand. In the Philippines, the owner of a trademark is determined by who registered it first.
Acquiring Rights Through Registration
In the Philippines, trademarks are acquired through valid registration with the Intellectual Property Office (IPOPHL). The law states:
The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Section 122, Intellectual Property Code)
To legally own a trademark, you have to register it with IPOPHL. It’s not enough just to come up with a cool logo or slogan; you have to go through the formal process of getting it registered.
Your registration must be done correctly, following all the rules and regulations laid out in the Intellectual Property Code. This ensures that your ownership rights are legally recognized and protected. Once your trademark is registered, you have legal rights to it. This means that you can take legal action against anyone who tries to use your trademark without your permission. It also gives you the exclusive right to use the mark in connection with the goods or services it represents.
Therefore, since the owner of a trademark is determined by who registered it first, then it is important to know about the first-to-file rule and priority rights.
First-to-File Rule
The first-to-file principle is crucial in trademark ownership. This means that protection will be given to the mark that was filed first. Essentially, whoever files for trademark registration before others will have priority rights over it. That protection will be afforded to a mark in the country for those that filed it first.
To clarify, while it is the fact of registration which confers ownership of the mark and enables the owner thereof to exercise the rights under the IP Code, the first-to-file rule nevertheless prioritizes the first filer of the trademark application and operates to prevent any subsequent applicants from registering mark. Therefore, a registered mark or a mark with an earlier filing or priority date generally bars the future registration of- and the future acquisition of rights in – an identical or a confusingly similar mark, in respect of the same or closely-related goods or services, if the resemblance will likely deceive or cause confusion. (Zuneca Pharmaceutical vs. Natrapharm, Inc., G.R. No. 211850, September 8, 2020.)
Priority Rights
Under Section 131 of the Intellectual Property Code, there are provisions for priority rights. If someone previously filed an application for the same mark in a foreign country and then files in the Philippines within 6 months, they are afforded a priority right. This means that the date of registration in the foreign country also becomes the date of registration in the Philippines. The law says:
SECTION 131. Priority Right. ‑ 131.1. An application for registration of a mark filed in the Philippines by a person referred to in Section 3, 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.
131.2. 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.
131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law.
131.4. In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority. (Sec. 37, R.A. No. 166a)
This priority right is sometimes referred to as a convention right. It ensures that if a mark is registered in a foreign country first, it holds the same registration date in the Philippines. However, this doesn’t guarantee automatic approval. The IPOPHL still needs to examine if the mark can be protected locally. Priority rights are significant because they determine which application will be favored for protection. If a mark was registered in a foreign country before being filed in the Philippines, it will be prioritized over local applications filed at the same time. This emphasizes the importance of acting quickly to secure trademark registration, both domestically and internationally.
In conclusion, trademark ownership revolves around registration, with priority given to the first filer. Understanding these principles is necessary for protecting your brand and ensuring its exclusivity in the market.
Read also:
Copyright vs. Patent vs. Trademark
How is the ownership of trademark acquired?
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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