CHEN, Inc., a Taiwanese company, is a manufacturer of tires with the mark Light Year. From 2009 to 2014, Clark Enterprises, a Philippine registered corporation, imported tires from CHEN, Inc. under several sales contracts and sold them here in the Philippines. In 2015, CHEN, Inc. filed a trademark application with the Intellectual Property Office (IPO) for the mark Light Year to be used for tires. The IPO issued CHEN, Inc. a certificate of registration (COR) for said mark. Clark Enterprises sought the cancellation of the COR and claimed it had a better right to register the mark Light Year. CHEN, Inc. asserted that it was the owner of the mark and Clark Enterprises was a mere distributor. Clark Enterprises argued that there was no evidence on record that the tires it imported from CHEN, Inc. bore the mark Light Year and Clark Enterprises was able to prove that it was the first to use the mark here in the Philippines. Decide the case. (4%)
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Clark Enterprises' petition for cancellation should be dismissed, and CHEN, Inc.'s certificate of registration must be upheld. Under Section 122 of the Intellectual Property Code (RA 8293) and the Zuneca doctrine, trademark ownership is acquired through valid registration
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Quick check
Under Section 122 of Republic Act Number 8293, how is ownership of a trademark acquired in the Philippines?
Section 122 of RA 8293 establishes that trademark ownership is acquired through valid registration made in good faith.
What regime governs trademark acquisition in the Philippines under the Intellectual Property Code?
The Philippines follows the first-to-file regime for trademark registration under RA 8293.
Does a mere distributor or importer acquire proprietary ownership over a foreign manufacturer's trademark by selling the goods locally?
A distributor or importer does not acquire ownership over the foreign manufacturer's trademark through local sales.
What is the legal effect of a certificate of registration issued by the Intellectual Property Office under RA 8293?
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Which primary statute governs trademark registration, ownership acquisition, and cancellation in the Philippines?
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Learn more about these topics
1. First to File
Under Section 122 of the Intellectual Property Code of the Philippines (Republic Act Number 8293) and established jurisprudence, ownership of a trademark is acquired solely through valid registration made in good faith. The Philippines follows the first-to-file regime, discarding the prior actual use rule. An applicant who first files a trademark application in good faith acquires exclusive rights over the mark, and prior local commercial use by another party does not defeat a validly issued certificate of registration.
2. Distributor Trademark Limitations
Under Philippine intellectual property jurisprudence, a mere importer, distributor, or sales agent does not acquire proprietary rights over the manufacturer's trademark. Even if the distributor was the first entity to introduce, market, or sell the trademarked goods within the domestic Philippine market, such commercial activity inures to the benefit of the foreign manufacturer. Consequently, a distributor cannot register the manufacturer's mark in its own name or seek cancellation of the manufacturer's valid registration.
3. Trademark Registration Rights
Under Republic Act Number 8293, a certificate of registration serves as prima facie evidence of the registrant's ownership of the mark, the validity of the registration, and the registrant's exclusive right to use the mark. Cancellation of a registered trademark requires clear proof of bad faith or fraudulent registration. Where a foreign manufacturer registers its proprietary mark in good faith, local distributors lack legal standing to cancel the registration based on prior local distribution.