A distinctive-tasting pastillas is well-known throughout the country as having been developed within a close-knit women’s group in Barangay San Ysmael which is located along a very busy national highway. Its popularity has encouraged the setting up of several shops selling similar delicacies, with the most famous product being the pastillas of “Barangay San Ysmael.” Eventually, the pastillas of Aling Voling under the brand name “Ysmaellas” began to attract national distinction. Aling Voling therefore registered it as a copyright with the National Library. Her neighbor, Aling Yasmin, realizing the commercial value of the brand, started using the term “Ysmaellas” for her pastillas but used different colors. Aling Yasmin registered the brand name “Ysmaellas” with the Intellectual Property Office (IPO).
(a) Can Aling Voling successfully obtain court relief to prohibit Aling Yasmin from using the brand name “Ysmaellas” in her products on the basis of her (Aling Yoling’s) copyright? What is the difference between registration as a copyright and registration as a trade or brand name? (2.5%)
(b) Can Aling Yasmin seek injunctive relief against Aling Voling from using the brand name “Ysmaellas,” the latter relying on the doctrine of “prior use” as evidenced by her prior copyright registration? (2.5%)
(c) Can Aling Voling seek the cancellation of Aling Yasmin’s trademark registration of the brand name “Ysmaellas” on the ground of “Well Known Brand” clearly evidenced by her (Aling Yoling’s) prior copyright registration, actual use of the brand, and several magazine articles? (2.5%)
Suggested answer only. Not an official answer and not legal advice.
(a) No, Aling Voling cannot prohibit Aling Yasmin based on copyright. (b) Yes, Aling Yasmin can seek injunctive relief. (c) No, Aling Voling cannot cancel registration under the well-known mark rule. Under the Intellectual Property Code, a
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Quick check
Which intellectual property right protects brand names and commercial marks used to identify goods?
Brand names and commercial marks are protected through trademark registration under the Intellectual Property Code.
How are exclusive rights over a trademark or brand name acquired under Philippine law?
Under Section 122 of R.A. No. 8293, rights in a mark are acquired through valid registration.
Can a prior copyright registration over a brand name prevent a registered trademark owner from obtaining injunctive relief?
Copyright registration over a brand name does not grant trademark rights or prevent injunctive relief by a registered owner.
What requirement must be satisfied for a brand name to qualify for protection under the well-known mark doctrine?
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Which primary statute governs copyrights, trademarks, and well-known mark doctrines in the Philippines?
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Learn more about these topics
1. Trademark vs Copyright
Under the Intellectual Property Code of the Philippines (Republic Act Number 8293), a copyright protects original literary and artistic works, whereas a trademark protects brand names, logos, and marks used to distinguish goods or services. Copyright registration with the National Library does not grant exclusive ownership over a brand name or trade mark. Consequently, registering a word or brand name as a copyright affords no legal protection against another person who subsequently registers the same name as a trademark with the Intellectual Property Office.
2. Trademark Registration Rights
Under Section 122 of Republic Act Number 8293, rights in a mark are acquired through valid registration made in accordance with the provisions of the Intellectual Property Code. The prior user of an unregistered brand name cannot defeat the statutory rights of a registered trademark owner, nor can prior copyright registration serve as a defense of prior use in a trademark infringement suit. As the registered owner of the trademark, the registrant possesses the exclusive right to prevent third parties from using the mark and may obtain injunctive relief.
3. Well-Known Mark Doctrine
Under Section 123(1)(e) of the Intellectual Property Code, a mark cannot be registered if it is considered by the competent authority to be well-known internationally and in the Philippines. To qualify under the well-known mark doctrine and seek cancellation of a registered trademark, the mark must be recognized as famous both internationally and locally. Mere local popularity, actual commercial use within the country, or feature articles in domestic magazines do not suffice to establish that an unregistered brand name qualifies as an internationally well-known mark.