Based on the legal framework for intellectual property, here is a comprehensive overview of the key concepts surrounding trademarks:
A trademark is any distinctive word, name, symbol, emblem, sign, or device (or any combination thereof) adopted and used by a manufacturer or merchant to identify and distinguish their goods from those manufactured or sold by others. It includes a stamped or marked container of goods.
Importance of Trademark
“Trademarks have several functions: they indicate the origin or ownership of the articles or services in which they are used; they guarantee that the articles or services come up to a certain standard of quality; and they advertise the articles and services they symbolize. Indeed, the goodwill of a business, as symbolized and distinguished by its trademarks, helps ensure that the enterprise stands out, stays afloat, and possibly flourish amidst the sea of commercial activity where the consumers’ continued patronage is a lifebuoy that may determine life or death.” – Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, 08 September 2020
Functions of a Trademark
Trademarks serve several distinct functions:
- To indicate the origin or ownership of the articles.
- To guarantee that the articles come up to a certain standard of quality.
- To advertise the articles they symbolize.
- To protect the public from being deceived by misleading claims.
How Ownership of a Trademark is Acquired
Under the Intellectual Property Code (IPC), ownership of a trademark is acquired solely through valid registration made in good faith.
- First-to-File Rule: The law prioritizes the first filer of a trademark application and prevents subsequent applicants from registering an identical or confusingly similar mark. The Supreme Court has clarified that prior use in the Philippines is no longer required before registration, nor does it automatically defeat the rights of a first-to-file registrant in good faith.
- Declaration of Actual Use (DAU): While prior use is not a prerequisite to register, actual use is required to maintain the trademark. To keep the registration alive, the owner must file a DAU with evidence of actual commercial use at specific intervals: within three (3) years from the application filing date, and within one (1) year from the fifth anniversary of the registration (and subsequent renewals). Failure to file the DAU results in the automatic cancellation of the trademark.
Spectrum of Distinctiveness and Registrability
For a mark to be registrable, it must be distinctive. Marks are classified from strongest to weakest:
- Top 1: Fanciful or Coined Marks: These are invented words with no real meaning (e.g., Kodak). They are the strongest marks and enjoy the broadest protection.
- Top 2: Arbitrary Marks: These are common words that bear no logical relationship to the products they represent (e.g., Apple for computers, Camel for cigarettes).
- Top 3: Suggestive Marks: These hint at the nature or quality of the product but require imagination, thought, or perception to link the trademark with the goods. They are valid and registrable.
- Top 4: Descriptive Marks: These describe the character, quality, or geographical origin of the article. They are generally non-registrable because they belong to the public domain. Exception: Under the Doctrine of Secondary Meaning, a descriptive mark can be registered if it has been used so exclusively and continuously for at least five (5) years that the purchasing public now strictly associates it with a specific producer rather than its original descriptive meaning.
- Generic Marks: These are the common names of the class or species of the product (e.g., “thermos” for vacuum flasks). Generic marks are the weakest and can never be registered.
Test for Trademark Infringement
When deciding if a competing mark is infringing, the Supreme Court has officially abandoned the “Holistic Test” (which looked at the entirety of the marks) and now strictly applies the Dominancy Test. The Dominancy Test focuses solely on the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, or deception in the mind of the purchasing public. Exact duplication or imitation is not required; if the competing mark contains the main or essential features of the registered mark, infringement takes place.
Trademark Infringement vs. Unfair Competition
While closely related, these are distinct legal concepts:
- Trademark Infringement is the unauthorized use of a registered trademark. In this action, prior registration of the mark is a strict prerequisite, but fraudulent intent to deceive the public is not required.
- Unfair Competition is the passing off (or palming off) of one’s goods or business as those of another. Here, the prior registration of the trademark is not necessary, but proving the offender’s fraudulent intent to deceive the public and defraud a competitor is essential.
FAQ
If a business name is registered with DTI, can the owner claim a trademark?
No, registering a business name with the Department of Trade and Industry (DTI) does not automatically grant you a trademark, nor is it the same as claiming a trademark. The rights to a trademark are acquired solely through valid registration with the Intellectual Property Office (IPO). If a competitor attempts to register your DTI-registered business name as their trademark with the IPO, you can oppose their application or file for its cancellation because the law prohibits the registration of a mark that resembles a protected trade name if it will likely deceive trade circles or the public.