Published — March 27, 2019
The following post does not create a lawyer-client relationship between Alburo Alburo and Associates Law Offices (or any of its lawyers) and the reader. It is still best for you to engage the services of your own lawyer to address your legal concerns, if any.
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.
Related Article: Give Your Business Its Own Identity: The Essentials of Trademark for SMEs
Importance of Trademark
When starting a business, it is imperative to have a trade name to distinguish one’s business from the other. The trade name becomes your intellectual property which you take care of, and protect so that when the time comes that the business starts to grow, becomes a hit on the market, and earn goodwill, no one will be able to ride on the success of your business. The goods to be sold must also have a mark, called trademark, which means any visible sign capable of distinguishing the goods (Section 121.1. of the Intellectual Property Code of the Philippines). The trademark is the symbol of ownership of the property.
When a businessman starts to sell goods that has trademark, his goods can be distinguished from the others. It is a sign that the product is reputable, and of good quality. When consumers are to buy a product, they will look for the trademark of the company that they know is the leading brand for the product that they want to buy. The mark has become the “silent salesman,” the conduit through which direct contact between the trademark owner, and the consumer is assured. It has invaded popular culture in ways never anticipated that it has become a more convincing selling point than even the quality of the article to which it refers (Funa, Dennis B., Trademark Law of the Philippines, 2012 Ed., citing Kozinski, supra, at 965-966; Callman, supra, vol. 2, at 881-882 [1945], citing Schechter, The Historical Foundations of the Law Relating to Trademarks [1925], Note 15, p.64.) Indeed, trademark is also a powerful tool for marketing.
The trademark becomes the symbol of the reputation, and goodwill of the company or owner of the product that even when time has passed by, people will buy products solely by reason of the trademark on it, even if they have not yet tried or purchased the product before. It is because they can rely that said product has an established trademark.
It is then important to have a trademark on goods sold because of its power, and effect on the consuming public. Especially when the brand is already established and famous, some may have ulterior motive to steal the goodwill of said mark. The trademark served as a warning against the imitation or faking of products to prevent the imposition of fraud upon the public (Funa, Dennis B., Trademark Law of the Philippines, 2012 Ed., citing Dissenting Opinion of Justice Feliciano in Philip Morris, supra, at 624-625). It is then important to register your trademark.
Trademark Registration
An applicant for trademark registration can file the application in the Intellectual Property Office of the Philippines. As provided for in Section 147.1. of the Intellectual Property Code of the Philippines, the owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in likelihood of confusion. In case of the use of an identical goods or services, a likelihood of confusion shall be presumed. The registered owner has the right to exclude all others from using his trademark. This gives him the right to pursue an action against anyone who will use his trademark without his consent. Registering a trademark gives a sense of protection to the registered owner, that if and when another person uses his registered trademark, he can prevent the latter from using it and reaping the benefits the registered owner is entitled to.
How to Protect Trademark (Remedies of Trademark Owner)
There are different instances wherein one person may violate the right of a trademark owner.
One, when the mark to be registered is identical with, or confusingly similar to, a mark that is already registered and is likely to mislead the public as to the nature, quality and origin of the goods. This results to Infringement or the unauthorized use of a registered mark. In this case, the registered owner may file an Opposition to the application of said mark by a person, other than the registered owner or file a Petition for Cancellation of the registered mark in violation of the rights of the registered owner. Further, the registered owner may also file a civil action for damages against any person who infringes his rights.
Second, is Unfair Competition or the passing off (or palming off) or attempting to pass off upon the public of the goods or business of one person as the goods or business of another with the end and probable effect of deceiving the public. Passing off (or palming off) takes place where the defendant, by imitative devices on the general appearance of the goods, misleads prospective purchasers into buying his merchandise under the impression that they are buying that of his competitors (Republic Gas Corporation et.al v. Petron Corporation et.al, G.R. No.194062, June 17,2013). In the afore-cited case, REGASCO was engaged in refilling and sale of LPG cylinders bearing the registered marks GASUL and SHELLANE, owned by Petron and Shell respectively, without the latter’s consent. The Supreme Court ruled that REGASCO committed Unfair Competition to wit:
“xxx respondents pertinently observed that by refilling and selling LPG cylinders bearing their registered marks, petitioners are selling goods by giving them the general appearance of goods of another manufacturer. What’s more, the CA correctly pointed out that there is a showing that the consumers may be misled into believing that the LPGs contained in the cylinders bearing the marks “GASUL” and “SHELLANE” are those goods or products of the petitioners when, in fact, they are not.”
REGASCO made it appear that the LPGs they are selling are that of Petron or Shell is clearly an act of Unfair Competition, deceiving the public who the true manufacturer is thereof.
Hence, it is important to have a trademark and register it so that one can avail of the rights and protection given by law. A trademark is a power tool in business since it represents the reputation and goodwill of a company, and sometimes, people buy goods depending on the trademark placed on it.
Alburo Alburo and Associates Law Offices specializes in business law and labor law consulting. For inquiries, you may reach us at info@alburolaw.com, or dial us at (02)7745-4391/0917-5772207.
All rights reserved.
SUBSCRIBE NOW FOR MORE LEGAL UPDATES!
[email-subscribers-form id=”4″]