ABC Appliances Corporation (ABC) is a domestic corporation engaged in the production and sale of televisions and other appliances. YYY Engineers, a Taiwanese company, is the manufacturer of televisions and other appliances from whom ABC actually purchases appliances. From 2000, when ABC started doing business with YYY, it has been using the mark “TTubes” in the Philippines for the television units that were bought from YYY. In 2015, YYY filed a trademark application for “TTubes.” Later, ABC also filed its application. Both claim the right over the trademark “TTubes” for television products. YYY relies on the principle of “first to file” while ABC involves the “doctrine of prior use.”
[a] Does the fact that YYY filed its application ahead of ABC mean that YYY has the prior right over the trademark? Explain briefly. (2.5%)
[b] Does the prior registration also mean a conclusive assumption that YYY Engineers is in fact the owner of the trademark “TTubes?” Briefly explain your answer. (2.5%)
Suggested answer only. Not an official answer and not legal advice.
For Question [a], YYY's prior application does not grant prior right if filed in bad faith. For Question [b], prior registration creates only a rebuttable presumption of ownership, not a conclusive one.
Under Section 122 and Section 138 of RA 8293, trademark ownership is acquired through registration in good faith, generating a prima facie, rebuttable presumption of ownership. Registration obtained in bad faith confers no property rights.
Here, if YYY filed its application in bad faith knowing of ABC's prior commercial use, its application cannot grant superior rights. Moreover, any presumption of ownership from prior registration yields to proof of bad faith.
Therefore, prior filing in bad faith confers no prior right, and prior registration creates merely a prima facie presumption.
This is not an official scoring system and carries no weight with the Supreme Court or any bar review provider. It measures how much of the suggested answer's wording your response covers, not whether your reasoning is correct. For practice only.
Quick check
Under Section 122 of the Intellectual Property Code (R.A. No. 8293), how are rights in a trademark acquired in the Philippines?
Rights in a mark are acquired through valid registration in accordance with law.
What is the legal effect of a trademark application filed in bad faith under Philippine trademark law?
A trademark application filed in bad faith confers no valid property rights.
Under Section 138 of R.A. No. 8293, what kind of evidence does a certificate of trademark registration constitute regarding ownership?
A certificate of registration constitutes prima facie evidence of ownership.
Why does YYY Engineers' prior trademark application not automatically guarantee superior rights over 'TTubes'?
Prior filing in bad faith with knowledge of prior use confers no superior rights.
Which primary statute governs trademark registration, first-to-file rule, and ownership presumptions in the Philippines?
Republic Act Number 8293 is the Intellectual Property Code governing trademarks.
Learn more about these topics
1. First to File
Under Section 122 of the Intellectual Property Code of the Philippines (Republic Act Number 8293), rights in a mark are acquired through registration validly done in accordance with the provisions of the law. While the Philippines adopts the first-to-file system, prior filing or registration does not automatically confer trademark ownership if the application was filed in bad faith. A foreign entity or distributor that applies for registration of a mark with prior knowledge of another's established commercial use in the Philippines acts in bad faith, rendering its application or registration void and incapable of vesting superior trademark rights.
2. Rebuttable Ownership Presumption
Under Section 138 of Republic Act Number 8293, a certificate of registration of a mark 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. However, this statutory presumption of ownership is merely rebuttable and not conclusive. It can be overcome by clear evidence showing prior adoption, continuous commercial use, or bad faith on the part of the applicant. Registration obtained fraudulently or in bad faith confers no property rights and may be canceled upon proper petition.
3. Bad Faith Exception
Under Philippine trademark jurisprudence and Section 151 of the Intellectual Property Code, registration of a trademark in bad faith is a recognized ground for opposition or cancellation. Bad faith exists when an applicant registers a mark knowing that another person has prior commercial adoption and goodwill attached to the same or confusingly similar mark. An exclusive distributor or commercial buyer cannot register in its own name a foreign manufacturer's trademark without authorization, nor can a foreign manufacturer register a mark to usurp the goodwill established by a local user in bad faith.