Jinggy went to Kluwer University(KU) in Germany for his doctorate degree (Ph.D.). He completed his degree with the highest honors in the shortest time. When he came back, he decided to set-up his own graduate school in his hometown in Zamboanga. After seeking free legal advice from his high-flying lawyer-friends, he learned that the Philippines follows the territoriality principle in trademark law, i.e., trademark rights are acquired through valid registration in accordance with the law. Forth with, Jinggy named his school the Kluwer Graduate School of Business of Mindanao and immediately secured registration with the Bureau of Trademarks. KU did not like the unauthorized use of its name by its top alumnus no less. KU sought your help. What advice can you give KU? (4%)
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KU should file a petition for cancellation of Jinggy's trademark registration with the Bureau of Legal Affairs of the IPO. Under Section 151 of RA 8293 and the Paris Convention, trademark registration
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Quick check
Under Section 151 of Republic Act Number 8293, when may a petition to cancel a trademark registered in bad faith be filed?
A petition for cancellation of a trademark registered in bad faith may be filed at any time under RA 8293.
Are foreign trade names protected in the Philippines without the requirement of prior local registration?
Foreign trade names are protected against unauthorized use without requiring prior local registration in the Philippines.
What constitutes bad faith in trademark registration under Philippine intellectual property jurisprudence?
Bad faith involves registering a mark knowing it belongs to another to exploit its goodwill.
Which administrative body has jurisdiction to hear petitions for cancellation of trademark registration?
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Which primary statute governs trademark registration, cancellation grounds, and trade name protection in the Philippines?
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Learn more about these topics
1. Bad Faith Registration
Under Section 151 of the Intellectual Property Code of the Philippines (Republic Act Number 8293) and the Paris Convention for the Protection of Industrial Property, a trademark registration obtained in bad faith is void and subject to cancellation at any time. Bad faith exists when an applicant registers a mark knowing that it belongs to another entity or appropriates a well-known name to take unfair advantage of its established global reputation. The territoriality principle does not protect registrations procured in bad faith.
2. Foreign Trade Names
Under Section 165 of Republic Act Number 8293 and Article 8 of the Paris Convention, trade names and business names of foreign entities are protected against unlawful use, imitation, or misleading adoption in the Philippines without the necessity of prior local registration. A foreign entity can enjoin the unauthorized commercial adoption of its trade name if such adoption falsely suggests an affiliation, sponsorship, or connection between the local enterprise and the foreign institution.
3. Trademark Cancellation Grounds
Under Section 151.1(b) of Republic Act Number 8293, a petition to cancel a trademark registration may be filed at any time if the registered mark misleads the public as to the origin, nature, or characteristics of the goods or services. Where a former alumnus registers a famous foreign university's name to operate a local graduate school, the registration deceives the public regarding corporate origin and academic affiliation, establishing clear statutory grounds for cancellation before the Bureau of Legal Affairs.