|
PART III
THE LAW ON
TRADEMARKS,
SERVICE MARKS
AND TRADE NAMES
Sec. 121. Definitions.
- As used in Part III, the following terms have the following meanings:
121.1. "Mark"
means any visible sign capable of distinguishing the goods (trademark)
or services (service mark) of an enterprise and shall include a stamped
or marked container of goods; (Sec. 38, R. A. No. 166a)
121.2. "Collective
mark" means any visible sign designated as such in the application
for registration and capable of distinguishing the origin or any other
common characteristic, including the quality of goods or services of
different
enterprises which use the sign under the control of the registered
owner
of the collective mark; (Sec. 40, R. A. No. 166a)
121.3. "Trade
name" means the name or designation identifying or distinguishing
an
enterprise; (Sec. 38, R. A. No. 166a)
121.4. "Bureau"
means
the Bureau of Trademarks;
121.5. "Director"
means the Director of Trademarks;
121.6. "Regulations"
means the Rules of Practice in Trademarks and Service Marks formulated
by the Director of Trademarks and approved by the Director General; and
121.7.
"Examiner"
means the trademark examiner. (Sec. 38, R. A. No. 166a)
Sec. 122. How Marks
are Acquired. - The rights in a mark
shall
be acquired through registration made validly in accordance with the
provisions
of this law. (Sec. 2-A, R. A. No. 166a)
Sec. 123. Registrability.
-
123.1. A mark
cannot
be registered if it:
(a) Consists of
immoral, deceptive or scandalous matter, or matter which may disparage
or falsely suggest a connection with persons, living or dead,
institutions,
beliefs, or national symbols, or bring them into contempt or disrepute;
(b) Consists of
the flag or coat of arms or other insignia of the Philippines or any of
its political subdivisions, or of any foreign nation, or any simulation
thereof;
(c) Consists of
a name, portrait or signature identifying a particular living
individual
except by his written consent, or the name, signature, or portrait of a
deceased President of the Philippines, during the life of his widow, if
any, except by written consent of the widow;
(d) Is identical
with a registered mark belonging to a different proprietor or a mark
with
an earlier filing or priority date, in respect of:
(i) The same
goods
or services, or
(ii) Closely
related
goods or services, or
(iii) If it
nearly
resembles such a mark as to be likely to deceive or cause confusion;
(e) Is identical
with, or confusingly similar to, or constitutes a translation of a mark
which is considered by the competent authority of the Philippines to be
well-known internationally and in the Philippines, whether or not it is
registered here, as being already the mark of a person other than the
applicant
for registration, and used for identical or similar goods or services:
Provided,
That in determining whether a mark is well-known, account shall
be
taken of the knowledge of the relevant sector of the public, rather
than
of the public at large, including knowledge in the Philippines which
has
been obtained as a result of the promotion of the mark;
(f) Is identical
with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which
is registered in the Philippines with respect to goods or services
which
are not similar to those with respect to which registration is applied
for: Provided, That use of the mark in relation to those goods
or
services would indicate a connection between those goods or services,
and
the owner of the registered mark: Provided further, That the
interests
of the owner of the registered mark are likely to be damaged by such
use;
(g) Is likely to
mislead the public, particularly as to the nature, quality,
characteristics
or geographical origin of the goods or services;
(h) Consists
exclusively
of signs that are generic for the goods or services that they seek to
identify;
(i) Consists
exclusively
of signs or of indications that have become customary or usual to
designate
the goods or services in everyday language or in bona fide and
established
trade practice;
(j) Consists
exclusively
of signs or of indications that may serve in trade to designate the
kind,
quality, quantity, intended purpose, value, geographical origin, time
or
production of the goods or rendering of the services, or other
characteristics
of the goods or services;
(k) Consists of
shapes that may be necessitated by technical factors or by the nature
of
the goods themselves or factors that affect their intrinsic value;
(l) Consists of
color alone, unless defined by a given form; or
(m) Is contrary
to public order or morality.
123.2. As regards
signs or devices mentioned in paragraphs (j), (k), and (l), nothing
shall
prevent the registration of any such sign or device which has become
distinctive
in relation to the goods for which registration is requested as a
result
of the use that have been made of it in commerce in the Philippines.
The
Office may accept as prima facie evidence that the mark has become
distinctive,
as used in connection with the applicant’s goods or services in
commerce,
proof of substantially exclusive and continuous use thereof by the
applicant
in commerce in the Philippines for five (5) years before the date on
which
the claim of distinctiveness is made.
123.3. The nature
of the goods to which the mark is applied will not constitute an
obstacle
to registration. (Sec. 4, R. A. No. 166a)
Sec. 124. Requirements
of Application. -
124.1. The
application
for the registration of the mark shall be in Filipino or in English and
shall contain the following:
(a) A request
for
registration;
(b) The name and
address of the applicant;
(c) The name of
a State of which the applicant is a national or where he has domicile;
and the name of a State in which the applicant has a real and effective
industrial or commercial establishment, if any;
(d) Where the
applicant
is a juridical entity, the law under which it is organized and existing;
(e) The
appointment
of an agent or representative, if the applicant is not domiciled in the
Philippines;
(f) Where the
applicant
claims the priority of an earlier application, an indication of:
(i) The name
of
the State with whose national office the earlier application was filed
or it filed with an office other than a national office, the name of
that
office,
(ii) The date
on
which the earlier application was filed, and
(iii) Where
available,
the application number of the earlier application;
(g) Where the
applicant
claims color as a distinctive feature of the mark, a statement to that
effect as well as the name or names of the color or colors claimed and
an indication, in respect of each color, of the principal parts of the
mark which are in that color;
(h) Where the
mark
is a three-dimensional mark, a statement to that effect;
(i) One or more
reproductions of the mark, as prescribed in the Regulations;
(j) A
transliteration
or translation of the mark or of some parts of the mark, as prescribed
in the Regulations;
(k) The names of
the goods or services for which the registration is sought, grouped
according
to the classes of the Nice Classification, together with the number of
the class of the said Classification to which each group of goods or
services
belongs; and
(l) A signature
by, or other self-identification of, the applicant or his
representative.
124.2. The
applicant
or the registrant shall file a declaration of actual use of the mark
with
evidence to that effect, as prescribed by the Regulations within three
(3) years from the filing date of the application. Otherwise, the
application
shall be refused or the mark shall be removed from the Register by the
Director.
124.3. One (1)
application
may relate to several goods and/or services, whether they belong to one
(1) class or to several classes of the Nice Classification.
124.4. If during
the examination of the application, the Office finds factual basis to
reasonably
doubt the veracity of any indication or element in the application, it
may require the applicant to submit sufficient evidence to remove the
doubt.
(Sec.
5, R. A. No. 166a)
Sec. 125. Representation;
Address for Service. - If the
applicant
is not domiciled or has no real and effective commercial establishment
in the Philippines, he shall designate by a written document filed in
the
office, the name and address of a Philippine resident who may be served
notices or process in proceedings affecting the mark. Such notices or
services
may be served upon the person so designated by leaving a copy thereof
at
the address specified in the last designation filed. If the person so
designated
cannot be found at the address given in the last designation, such
notice
or process may be served upon the Director. (Sec. 3,
R. A.
No. 166a)
Sec. 126. Disclaimers.-
The Office may allow or require the applicant to disclaim an
unregistrable
component of an otherwise registrable mark but such disclaimer shall
not
prejudice or affect the applicant’s or owner’s rights then existing or
thereafter arising in the disclaimed matter, nor such shall disclaimer
prejudice or affect the applicant’s or owner’s right on another
application
of later date if the disclaimed matter became distinctive of the
applicant’s
or owner’s goods, business or services. (Sec. 13, R. A.
No.
166a)
Sec. 127. Filing
Date. -
127.1. Requirements.
- The filing date of an application shall be the date on which the
Office
received the following indications and elements in English or Filipino:
(a) An express
or
implicit indication that the registration of a mark is sought;
(b) The identity
of the applicant;
(c) Indications
sufficient to contact the applicant or his representative, if any;
(d) A
reproduction
of the mark whose registration is sought; and
(e) The list of
the goods or services for which the registration is sought.
127.2 No filing
date shall be accorded until the required fee is paid. (n)
Sec. 128. Single
Registration for Goods and/or Services. -
Where goods and/or services belonging to several classes of the Nice
Classification
have been included in one (1) application, such an application shall
result
in one registration. (n)
Sec. 129. Division
of Application. - Any application
referring
to several goods or services, hereafter referred to as the "initial
application,"
may be divided by the applicant into two (2) or more applications,
hereafter
referred to as the "divisional applications," by distributing
among
the latter the goods or services referred to in the initial
application.
The divisional applications shall preserve the filing date of the
initial
application or the benefit of the right of priority. (n)
Sec. 130. Signature
and Other Means of Self-Identification. -
130.1. Where a
signature
is required, the Office shall accept:
(a) A
hand-written
signature; or
(b) The use of
other
forms of signature, such as a printed or stamped signature, or the use
of a seal, instead of a hand-written signature: Provided, That where a
seal is used, it should be accompanied by an indication in letters of
the
name of the signatory.
130.2. The Office
shall accept communications to it by telecopier, or by electronic means
subject to the conditions or requirements that will be prescribed by
the
Regulations. When communications are made by telefacsimile, the
reproduction
of the signature, or the reproduction of the seal together with, where
required, the indication in letters of the name of the natural person
whose
seal is used, appears. The original communications must be received by
the Office within thirty (30) days from date of receipt of the
telefacsimile.
130.3. No
attestation,
notarization, authentication, legalization or other certification of
any
signature or other means of self-identification referred to in the
preceding
paragraphs, will be required, except, where the signature concerns the
surrender of a registration. (n)
Sec. 131. Priority
Right. -
131.1. An
application
for registration of a mark filed in the Philippines by a person
referred
to in Section 3, and who previously duly filed an application for
registration
of the same mark in one of those countries, shall be considered as
filed
as of the day the application was first filed in the foreign country.
131.2. No
registration
of a mark in the Philippines by a person described in this section
shall
be granted until such mark has been registered in the country of origin
of the applicant.
131.3. Nothing in
this section shall entitle the owner of a registration granted under
this
section to sue for acts committed prior to the date on which his mark
was
registered in this country: Provided, That, notwithstanding the
foregoing, the owner of a well-known mark as defined in Section
123.1(e)
of this Act, that is not registered in the Philippines, may, against an
identical or confusingly similar mark, oppose its registration, or
petition
the cancellation of its registration or sue for unfair competition,
without
prejudice to availing himself of other remedies provided for under the
law.
131.4. In like
manner
and subject to the same conditions and requirements, the right provided
in this section may be based upon a subsequent regularly filed
application
in the same foreign country: Provided, That any foreign application
filed
prior to such subsequent application has been withdrawn, abandoned, or
otherwise disposed of, without having been laid open to public
inspection
and without leaving any rights outstanding, and has not served, nor
thereafter
shall serve, as a basis for claiming a right of priority.
(Sec. 37, R. A. No. 166a)
Sec. 132. Application
Number and Filing Date.-
132.1. The Office
shall examine whether the application satisfies the requirements for
the
grant of a filing date as provided in Section 127 and Regulations
relating
thereto. If the application does not satisfy the filing requirements,
the
Office shall notify the applicant who shall within a period fixed by
the
Regulations complete or correct the application as required, otherwise,
the application shall be considered withdrawn.
132.2 Once an
application
meets the filing requirements of Section 127, it shall be numbered in
the
sequential order, and the applicant shall be informed of the
application
number and the filing date of the application will be deemed to have
been
abandoned. (n)
Sec. 133. Examination
and Publication. -
133.1. Once the
application meets the filing requirements of Section 127, the Office
shall
examine whether the application meets the requirements of Section 124
and
the mark as defined in Section 121 is registrable under Section 123.
133.2. Where the
Office finds that the conditions referred to in Subsection 133.1 are
fulfilled,
it shall, upon payment of the prescribed fee. Forthwith cause the
application,
as filed, to be published in the prescribed manner.
133.3. If after
the examination, the applicant is not entitled to registration for any
reason, the Office shall advise the applicant thereof and the reasons
therefor.
The applicant shall have a period of four (4) months in which to reply
or amend his application, which shall then be re-examined. The
Regulations
shall determine the procedure for the re-examination or revival of an
application
as well as the appeal to the Director of Trademarks from any final
action
by the Examiner.
133.4. An
abandoned
application may be revived as a pending application within three (3)
months
from the date of abandonment, upon good cause shown and the payment of
the required fee.
133.5. The final
decision of refusal of the Director of Trademarks shall be appealable
to
the Director General in accordance with the procedure fixed by the
Regulations.
(Sec. 7, R. A. No. 166a)
Sec. 134. Opposition.
-
Any person who believes that he would be damaged by the registration of
a mark may, upon payment of the required fee and within thirty (30)
days
after the publication referred to in Subsection 133.2, file with the
Office
an opposition to the application. Such opposition shall be in writing
and
verified by the oppositor or by any person on his behalf who knows the
facts, and shall specify the grounds on which it is based and include a
statement of the facts relied upon. Copies of certificates of
registration
of marks registered in other countries or other supporting documents
mentioned
in the opposition shall be filed therewith, together with the
translation
in English, if not in the English language. For good cause shown and
upon
payment of the required surcharge, the time for filing an opposition
may
be extended by the Director of Legal Affairs, who shall notify the
applicant
of such extension. The Regulations shall fix the maximum period of time
within which to file the opposition. (Sec. 8, R. A.
No. 165a)
Sec. 135. Notice
and Hearing. - Upon the filing of an
opposition,
the Office shall serve notice of the filing on the applicant, and of
the
date of the hearing thereof upon the applicant and the oppositor and
all
other persons having any right, title or interest in the mark covered
by
the application, as appear of record in the Office.
(Sec.
9 R. A. No. 165)
Sec. 136. Issuance
and Publication of Certificate. -
When
the period for filing the opposition has expired, or when the Director
of Legal Affairs shall have denied the opposition, the Office upon
payment
of the required fee, shall issue the certificate of registration. Upon
issuance of a certificate of registration, notice thereof making
reference
to the publication of the application shall be published in the IPO
Gazette.
(Sec.
10, R. A. No. 165)
Sec. 137. Registration
of Mark and Issuance of a Certificate to the Owner or his Assignee. -
137.1. The Office
shall maintain a Register in which shall be registered marks, numbered
in the order of their registration, and all transactions in respect of
each mark, required to be recorded by virtue of this law.
137.2. The
registration
of a mark shall include a reproduction of the mark and shall mention:
its
number; the name and address of the registered owner and, if the
registered
owner’s address is outside the country, his address for service within
the country; the dates of application and registration; if priority is
claimed, an indication of this fact, and the number, date and country
of
the application, basis of the priority claims; the list of goods or
services
in respect of which registration has been granted, with the indication
of the corresponding class or classes; and such other data as the
Regulations
may prescribe from time to time.
137.3. A
certificate
of registration of a mark may be issued to the assignee of the
applicant:
Provided,
That the assignment is recorded in the Office. In case of a change of
ownership,
the Office shall at the written request signed by the owner, or his
representative,
or by the new owner, or his representative and upon a proper showing
and
the payment of the prescribed fee, issue to such assignee a new
certificate
of registration of the said mark in the name of such assignee, and for
the unexpired part of the original period.
137.4. The Office
shall record any change of address, or address for service, which shall
be notified to it by the registered owner.
137.5. In the
absence
of any provision to the contrary in this Act, communications to be made
to the registered owner by virtue of this Act shall be sent to him at
his
last recorded address and, at the same, at his last recorded address
for
service. (Sec. 19, R. A. No. 166a)
Sec. 138. Certificates
of Registration. - A certificate of
registration
of a mark shall be prima facie evidence of the validity of the
registration,
the registrant’s ownership of the mark, and of the registrant’s
exclusive
right to use the same in connection with the goods or services and
those
that are related thereto specified in the certificate. (Sec.
20, R. A. No. 165)
Sec. 139. Publication
of Registered Marks; Inspection of Register.
-
139.1. The Office
shall publish, in the form and within the period fixed by the
Regulations,
the mark registered, in the order of their registration, reproducing
all
the particulars referred to in Subsection 137.2.
139.2. Marks
registered
at the Office may be inspected free of charge and any person may obtain
copies thereof at his own expense. This provision shall also be
applicable
to transactions recorded in respect of any registered mark. (n)
Sec. 140. Cancellation
upon Application by Registrant; Amendment or Disclaimer of Registration.
- Upon application of the registrant, the Office may permit any
registration
to be surrendered for cancellation, and upon cancellation the
appropriate
entry shall be made in the records of the Office. Upon application of
the
registrant and payment of the prescribed fee, the Office for good cause
may permit any registration to be amended or to be disclaimed in part:
Provided,
That the amendment or disclaimer does not alter materially the
character
of the mark. Appropriate entry shall be made in the records of the
Office
upon the certificate of registration or, if said certificates is lost
or
destroyed, upon a certified copy thereof. (Sec. 14, R.
A.
No. 166)
Sec. 141. Sealed
and Certified Copies as Evidence. -
Copies
of any records, books, papers, or drawings belonging to the Office
relating
to marks, and copies of registrations, when authenticated by the seal
of
the Office and certified by the Director of the Administrative,
Financial
and Human Resource Development Service Bureau or in his name by an
employee
of the Office duly authorized by said Director, shall be evidence in
all
cases wherein the originals would be evidence; and any person who
applies
and pays the prescribed fee shall secure such copies. (n)
Sec. 142. Correction
of Mistakes Made by the Office. -
Whenever
a material mistake in a registration incurred through the fault of the
Office is clearly disclosed by the records of the Office, a certificate
stating the fact and nature of such mistake shall be issued without
charge,
recorded and a printed copy thereof shall be attached to each printed
copy
of the registration. Such corrected registration shall thereafter have
the same effect as the original certificate; or in the discretion of
the
Director of the Administrative, Financial and Human Resource
Development
Service Bureau a new certificate of registration may be issued without
charge. All certificates of correction heretofore issued in accordance
with the Regulations and the registration to which they are attached
shall
have the same force and effect as if such certificates and their
issuance
had been authorized by this Act. (n)
Sec. 143. Correction
of Mistakes Made by Applicant. -
Whenever
a mistake is made in a registration and such mistake occurred in good
faith
through the fault of the applicant, the Office may issue a certificate
upon the payment of the prescribed fee: Provided, That the correction
does
not involve any change in the registration that requires republication
of the mark. (n)
Sec. 144. Classification
of Goods and Services. -
144.1. Each
registration,
and any publication of the Office which concerns an application or
registration
effected by the Office shall indicate the goods or services by their
names,
grouped according to the classes of the Nice Classification, and each
group
shall be preceded by the number of the class of that Classification to
which that group of goods or services belongs, presented in the order
of
the classes of the said Classification.
144.2. Goods or
services may not be considered as being similar or dissimilar to each
other
on the ground that, in any registration or publication by the Office,
they
appear in different classes of the Nice Classification. (Sec.
6, R. A. No. 166a)
Sec. 145. Duration.-
A certificate of registration shall remain in force for ten (10) years:
Provided, That the registrant shall file a declaration of
actual
use and evidence to that effect, or shall show valid reasons based on
the
existence of obstacles to such use, as prescribed by the Regulations,
within
one (1) year from the fifth anniversary of the date of the registration
of the mark. Otherwise, the mark shall be removed from the Register by
the Office. (Sec. 12, R. A. No. 166a)
Sec. 146. Renewal.
-
146.1. A
certificate
of registration may be renewed for periods of ten (10) years at its
expiration
upon payment of the prescribed fee and upon filing of a request. The
request
shall contain the following indications:
(a) An
indication
that renewal is sought;
(b) The name and
address of the registrant or his successor-in-interest, hereafter
referred
to as the "right holder";
(c) The
registration
number of the registration concerned;
(d) The filing
date
of the application which resulted in the registration concerned to be
renewed;
(e) Where the
right
holder has a representative, the name and address of that
representative;
(f) The names of
the recorded goods or services for which the renewal is requested or
the
names of the recorded goods or services for which the renewal is not
requested,
grouped according to the classes of the Nice Classification to which
that
group of goods or services belongs and presented in the order of the
classes
of the said Classification; and
(g) A signature
by the right holder or his representative.
146.2. Such
request
shall be in Filipino or English and may be made at any time within six
(6) months before the expiration of the period for which the
registration
was issued or renewed, or it may be made within six (6) months after
such
expiration on payment of the additional fee herein prescribed.
146.3. If the
Office
refuses to renew the registration, it shall notify the registrant of
his
refusal and the reasons therefor.
146.4. An
applicant
for renewal not domiciled in the Philippines shall be subject to and
comply
with the requirements of this Act. (Sec. 15, R. A. No.
166a)
Sec. 147. Rights
Conferred. -
147.1. The owner
of a registered mark shall have the exclusive right to prevent all
third
parties not having the owner’s consent from using in the course of
trade
identical or similar signs or containers for goods or services which
are
identical or similar to those in respect of which the trademark is
registered
where such use would result in a likelihood of confusion. In case of
the
use, of an identical sign for identical goods or services, a likelihood
of confusion shall be presumed.
147.2. The
exclusive
right of the owner of a well-known mark defined in Subsection 123.1(e)
which is registered in the Philippines, shall extend to goods and
services
which are not similar to those in respect of which the mark is
registered:
Provided, That use of that mark in relation to those goods or
services
would indicate a connection between those goods or services and the
owner
of the registered mark: Provided, further, That the interests
of
the owner of the registered mark are likely to be damaged by such use.
(n)
Sec. 148. Use of
Indications by Third Parties for Purposes Other than those for which
the
Mark is Used. - Registration of the
mark
shall not confer on the registered owner the right to preclude third
parties
from using bona fide their names, addresses, pseudonyms, a geographical
name, or exact indications concerning the kind, quality, quantity,
destination,
value, place of origin, or time of production or of supply, of their
goods
or services: Provided, That such use is confined to the
purposes
of mere identification or information and cannot mislead the public as
to the source of the goods or services. (n)
Sec. 149. Assignment
and Transfer of Application and Registration.
-
149.1. An
application
for registration of a mark, or its registration, may be assigned or
transferred
with or without the transfer of the business using the mark. (n)
149.2. Such
assignment
or transfer shall, however, be null and void if it is liable to mislead
the public, particularly as regards the nature, source, manufacturing
process,
characteristics, or suitability for their purpose, of the goods or
services
to which the mark is applied.
149.3. The
assignment
of the application for registration of a mark, or of its registration,
shall be in writing and require the signatures of the contracting
parties.
Transfers by mergers or other forms of succession may be made by any
document
supporting such transfer.
149.4. Assignments
and transfers of registration of marks shall be recorded at the Office
on payment of the prescribed fee; assignment and transfers of
applications
for registration shall, on payment of the same fee, be provisionally
recorded,
and the mark, when registered, shall be in the name of the assignee or
transferee.
149.5. Assignments
and transfers shall have no effect against third parties until they are
recorded at the Office. (Sec. 31, R. A. No. 166a)
Sec. 150. License
Contracts. -
150.1. Any license
contract concerning the registration of a mark, or an application
therefor,
shall provide for effective control by the licensor of the quality of
the
goods or services of the licensee in connection with which the mark is
used. If the license contract does not provide for such quality
control,
or if such quality control is not effectively carried out, the license
contract shall not be valid.
150.2. A license
contract shall be submitted to the Office which shall keep its contents
confidential but shall record it and publish a reference thereto. A
license
contract shall have no effect against third parties until such
recording
is effected. The Regulations shall fix the procedure for the recording
of the license contract. (n)
Sec. 151. Cancellation.
-
151.1. A petition
to cancel a registration of a mark under this Act may be filed with the
Bureau of Legal Affairs by any person who believes that he is or will
be
damaged by the registration of a mark under this Act as follows:
(a) Within five
(5) years from the date of the registration of the mark under this Act.
(b) At any time,
if the registered mark becomes the generic name for the goods or
services,
or a portion thereof, for which it is registered, or has been
abandoned,
or its registration was obtained fraudulently or contrary to the
provisions
of this Act, or if the registered mark is being used by, or with the
permission
of, the registrant so as to misrepresent the source of the goods or
services
on or in connection with which the mark is used. If the registered mark
becomes the generic name for less than all of the goods or services for
which it is registered, a petition to cancel the registration for only
those goods or services may be filed. A registered mark shall not be
deemed
to be the generic name of goods or services solely because such mark is
also used as a name of or to identify a unique product or service. The
primary significance of the registered mark to the relevant public
rather
than purchaser motivation shall be the test for determining whether the
registered mark has become the generic name of goods or services on or
in connection with which it has been used. (n)
(c) At any time,
if the registered owner of the mark without legitimate reason fails to
use the mark within the Philippines, or to cause it to be used in the
Philippines
by virtue of a license during an uninterrupted period of three (3)
years
or longer.
151.2.
Notwithstanding
the foregoing provisions, the court or the administrative agency vested
with jurisdiction to hear and adjudicate any action to enforce the
rights
to a registered mark shall likewise exercise jurisdiction to determine
whether the registration of said mark may be cancelled in accordance
with
this Act. The filing of a suit to enforce the registered mark with the
proper court or agency shall exclude any other court or agency from
assuming
jurisdiction over a subsequently filed petition to cancel the same
mark.
On the other hand, the earlier filing of petition to cancel the mark
with
the Bureau of Legal Affairs shall not constitute a prejudicial question
that must be resolved before an action to enforce the rights to same
registered
mark may be decided. (Sec. 17, R. A. No. 166a)
Sec. 152. Non-use
of a Mark When Excused. -
152.1. Non-use of
a mark may be excused if caused by circumstances arising independently
of the will of the trademark owner. Lack of funds shall not excuse
non-use
of a mark.
152.2. The use of
the mark in a form different from the form in which it is registered,
which
does not alter its distinctive character, shall not be ground for
cancellation
or removal of the mark and shall not diminish the protection granted to
the mark.
152.3. The use of
a mark in connection with one or more of the goods or services
belonging
to the class in respect of which the mark is registered shall prevent
its
cancellation or removal in respect of all other goods or services of
the
same class.
152.4. The use of
a mark by a company related with the registrant or applicant shall
inure
to the latter’s benefit, and such use shall not affect the validity of
such mark or of its registration: Provided, That such mark is not used
in such manner as to deceive the public. If use of a mark by a person
is
controlled by the registrant or applicant with respect to the nature
and
quality of the goods or services, such use shall inure to the benefit
of
the registrant or applicant. (n)
Sec. 153. Requirements
of Petition; Notice and Hearing. -
Insofar
as applicable, the petition for cancellation shall be in the same form
as that provided in Section 134 hereof, and notice and hearing shall be
as provided in Section 135 hereof.
Sec. 154. Cancellation
of Registration. - If the Bureau of
Legal
Affairs finds that a case for cancellation has been made out, it shall
order the cancellation of the registration. When the order or judgment
becomes final, any right conferred by such registration upon the
registrant
or any person in interest of record shall terminate. Notice of
cancellation
shall be published in the IPO Gazette. (Sec. 19. R. A.
No.
166a)
Sec. 155. Remedies;
Infringement. - Any person who shall,
without the consent of the owner of the registered mark:
155.1. Use in
commerce
any reproduction, counterfeit, copy, or colorable imitation of a
registered
mark or the same container or a dominant feature thereof in connection
with the sale, offering for sale, distribution, advertising of any
goods
or services including other preparatory steps necessary to carry out
the
sale of any goods or services on or in connection with which such use
is
likely to cause confusion, or to cause mistake, or to deceive; or
155.2. Reproduce,
counterfeit, copy or colorably imitate a registered mark or a dominant
feature thereof and apply such reproduction, counterfeit, copy or
colorable
imitation to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in connection
with
the sale, offering for sale, distribution, or advertising of goods or
services
on or in connection with which such use is likely to cause confusion,
or
to cause mistake, or to deceive, shall be liable in a civil action for
infringement by the registrant for the remedies hereinafter set forth:
Provided, That the infringement takes place at the moment any of the
acts
stated in Subsection
155.1 or this
subsection
are committed regardless of whether there is actual sale of goods or
services
using the infringing material. (Sec. 22, R. A. No 166a)
Sec. 156. Actions,
and Damages and Injunction for Infringement.
-
156.1. The owner
of a registered mark may recover damages from any person who infringes
his rights, and the measure of the damages suffered shall be either the
reasonable profit which the complaining party would have made, had the
defendant not infringed his rights, or the profit which the defendant
actually
made out of the infringement, or in the event such measure of damages
cannot
be readily ascertained with reasonable certainty, then the court may
award
as damages a reasonable percentage based upon the amount of gross sales
of the defendant or the value of the services in connection with which
the mark or trade name was used in the infringement of the rights of
the
complaining party. (Sec. 23, First Par., R. A. No.
166a)
156.2. On
application
of the complainant, the court may impound during the pendency of the
action,
sales invoices and other documents evidencing sales. (n)
156.3. In cases
where actual intent to mislead the public or to defraud the complainant
is shown, in the discretion of the court, the damages may be doubled.
(Sec. 23, First Par., R. A. No. 166)
156.4. The
complainant,
upon proper showing, may also be granted injunction. (Sec.
23, Second Par., R. A. No. 166a)
Sec. 157. Power of
Court to Order Infringing Material Destroyed. -
157.1. In any
action
arising under this Act, in which a violation of any right of the owner
of the registered mark is established, the court may order that goods
found
to be infringing be, without compensation of any sort, disposed of
outside
the channels of commerce in such a manner as to avoid any harm caused
to
the right holder, or destroyed; and all labels, signs, prints,
packages,
wrappers, receptacles and advertisements in the possession of the
defendant,
bearing the registered mark or trade name or any reproduction,
counterfeit,
copy or colorable imitation thereof, all plates, molds, matrices and
other
means of making the same, shall be delivered up and destroyed.
157.2. In regard
to counterfeit goods, the simple removal of the trademark affixed shall
not be sufficient other than in exceptional cases which shall be
determined
by the Regulations, to permit the release of the goods into the
channels
of commerce. (Sec. 24, R. A. No. 166a).
Sec. 158. Damages;
Requirement of Notice. - In
any
suit for infringement, the owner of the registered mark shall not be
entitled
to recover profits or damages unless the acts have been committed with
knowledge that such imitation is likely to cause confusion, or to cause
mistake, or to deceive. Such knowledge is presumed if the registrant
gives
notice that his mark is registered by displaying with the mark the
words
"Registered Mark" or the letter R within a circle or if the defendant
had
otherwise actual notice of the registration. (Sec. 21,
R.
A. No. 166a)
Sec. 159. Limitations
to Actions for Infringement. -
Notwithstanding
any other provision of this Act, the remedies given to the owner of a
right
infringed under this Act shall be limited as follows:
159.1
Notwithstanding
the provisions of Section 155 hereof, a registered mark shall have no
effect
against any person who, in good faith, before the filing date or the
priority
date, was using the mark for the purposes of his business or
enterprise:
Provided, That his right may only be transferred or assigned together
with
his enterprise or business or with that part of his enterprise or
business
in which the mark is used.
159.2 Where an
infringer
who is engaged solely in the business of printing the mark or other
infringing
materials for others is an innocent infringer, the owner of the right
infringed
shall be entitled as against such infringer only to an injunction
against
future printing.
159.3. Where the
infringement complained of is contained in or is part of paid
advertisement
in a newspaper, magazine, or other similar periodical or in an
electronic
communication, the remedies of the owner of the right infringed as
against
the publisher or distributor of such newspaper, magazine, or other
similar
periodical or electronic communication shall be limited to an
injunction
against the presentation of such advertising matter in future issues of
such newspapers, magazines, or other similar periodicals or in future
transmissions
of such electronic communications. The limitations of this subparagraph
shall apply only to innocent infringers: Provided, That such injunctive
relief shall not be available to the owner of the right infringed with
respect to an issue of a newspaper, magazine, or other similar
periodical
or an electronic communication containing infringing matter where
restraining
the dissemination of such infringing matter in any particular issue of
such periodical or in an electronic communication would delay the
delivery
of such issue or transmission of such electronic communication is
customarily
conducted in accordance with the sound business practice, and not due
to
any method or device adopted to evade this section or to prevent or
delay
the issuance of an injunction or restraining order with respect to such
infringing matter. (n)
Sec. 160. Right of
Foreign Corporation to Sue in Trademark or Service Mark Enforcement
Action.-
Any foreign national or juridical person who meets the requirements of
Section 3 of this Act and does not engage in business in the
Philippines
may bring a civil or administrative action hereunder for opposition,
cancellation,
infringement, unfair competition, or false designation of origin and
false
description, whether or not it is licensed to do business in the
Philippines
under existing laws. (Sec. 21-A, R. A. No. 166a)
Sec. 161. Authority
to Determine Right to Registration. -
In any action involving a registered mark, the court may determine the
right to registration, order the cancellation of a registration, in
whole
or in part, and otherwise rectify the register with respect to the
registration
of any party to the action in the exercise of this. Judgment and orders
shall be certified by the court to the Director, who shall make
appropriate
entry upon the records of the Bureau, and shall be controlled thereby.
(Sec.
25, R. A. No. 166a)
Sec. 162. Action
for False or Fraudulent Declaration. -
Any person who shall procure registration in the Office of a mark by a
false or fraudulent declaration or representation, whether oral or in
writing,
or by any false means, shall be liable in a civil action by any person
injured thereby for any damages sustained in consequence thereof.
(Sec. 26, R. A. No. 166)
Sec. 163. Jurisdiction
of Court. - All actions under Sections
150, 155, 164, and 166 to 169 shall be brought before the proper courts
with appropriate jurisdiction under existing laws.
(Sec.
27, R. A. No. 166)
Sec. 164. Notice
of Filing Suit Given to the Director. -
It shall be the duty of the clerks of such courts within one (1) month
after the filing of any action, suit, or proceeding involving a mark
registered
under the provisions of this Act, to notify the Director in writing
setting
forth: the names and addresses of the litigants and designating the
number
of the registration or registrations and within one (1) month after the
judgment is entered or an appeal is taken, the clerk of court shall
give
notice thereof to the Office, and the latter shall endorse the same
upon
the filewrapper of the said registration or registrations and
incorporate
the same as a part of the contents of said filewrapper. (n)
Sec. 165. Trade
Names or Business Names. -
165.1. A name or
designation may not be used as a trade name if by its nature or the use
to which such name or designation may be put, it is contrary to public
order or morals and if, in particular, it is liable to deceive trade
circles
or the public as to the nature of the enterprise identified by that
name.
165.2. (a)
Notwithstanding
any laws or regulations providing for any obligation to register trade
names, such names shall be protected, even prior to or without
registration,
against any unlawful act committed by third parties.
(b) In
particular,
any subsequent use of the trade name by a third party, whether as a
trade
name or a mark or collective mark, or any such use of a similar trade
name
or mark, likely to mislead the public, shall be deemed unlawful.
165.3. The
remedies
provided for in Sections 153 to 156 and Sections 166 and 167 shall
apply
mutatis
mutandis.
165.4. Any change
in the ownership of a trade name shall be made with the transfer of the
enterprise or part thereof identified by that name. The provisions of
Subsections
149.2 to 149.4 shall apply mutatis mutandis.
Sec. 166. Goods Bearing
Infringing Marks or Trade Names. - No
article of imported merchandise which shall copy or simulate the name
of
any domestic product, or manufacturer, or dealer, or which shall copy
or
simulate a mark registered in accordance with the provisions of this
Act,
or shall bear a mark or trade name calculated to induce the public to
believe
that the article is manufactured in the Philippines, or that it is
manufactured
in any foreign country or locality other than the country or locality
where
it is in fact manufactured, shall be admitted to entry at any
customhouse
of the Philippines. In order to aid the officers of the customs service
in enforcing this prohibition, any person who is entitled to the
benefits
of this Act, may require that his name and residence, and the name of
the
locality in which his goods are manufactured, a copy of the certificate
of registration of his mark or trade name, to be recorded in books
which
shall be kept for this purpose in the Bureau of Customs, under such
regulations
as the Collector of Customs with the approval of the Secretary of
Finance
shall prescribe, and may furnish to the said Bureau facsimiles of his
name,
the name of the locality in which his goods are manufactured, or his
registered
mark or trade name, and thereupon the Collector of Customs shall cause
one (1) or more copies of the same to be transmitted to each collector
or to other proper officer of the Bureau of Customs.
(Sec.
35, R. A. No. 166)
Sec. 167. Collective
Marks. -
167.1. Subject to
Subsections 167.2 and 167.3, Sections 122 to 164 and 166 shall apply to
collective marks, except that references therein to "mark" shall
be read as "collective mark."
167.2 (a) An
application
for registration of a collective mark shall designate the mark as a
collective
mark and shall be accompanied by a copy of the agreement, if any,
governing
the use of the collective mark.
(b) The
registered
owner of a collective mark shall notify the Director of any changes
made
in respect of the agreement referred to in paragraph (a).
167.3. In addition
to the grounds provided in Section 149, the Court shall cancel the
registration
of a collective mark if the person requesting the cancellation proves
that
only the registered owner uses the mark, or that he uses or permits its
use in contravention of the agreements referred to in Subsection 166.2
or that he uses or permits its use in a manner liable to deceive trade
circles or the public as to the origin or any other common
characteristics
of the goods or services concerned.
167.4. The
registration
of a collective mark, or an application therefor shall not be the
subject
of a license contract. (Sec. 40, R. A. No. 166a)
Sec. 168. Unfair
Competition, Rights, Regulation and Remedies.
-
168.1. A person
who has identified in the mind of the public the goods he manufactures
or deals in, his business or services from those of others, whether or
not a registered mark is employed, has a property right in the goodwill
of the said goods, business or services so identified, which will be
protected
in the same manner as other property rights.
168.2. Any person
who shall employ deception or any other means contrary to good faith by
which he shall pass off the goods manufactured by him or in which he
deals,
or his business, or services for those of the one having established
such
goodwill, or who shall commit any acts calculated to produce said
result,
shall be guilty of unfair competition, and shall be subject to an
action
therefor.
168.3. In
particular,
and without in any way limiting the scope of protection against unfair
competition, the following shall be deemed guilty of unfair competition:
(a) Any person,
who is selling his goods and gives them the general appearance of goods
of another manufacturer or dealer, either as to the goods themselves or
in the wrapping of the packages in which they are contained, or the
devices
or words thereon, or in any other feature of their appearance, which
would
be likely to influence purchasers to believe that the goods offered are
those of a manufacturer or dealer, other than the actual manufacturer
or
dealer, or who otherwise clothes the goods with such appearance as
shall
deceive the public and defraud another of his legitimate trade, or any
subsequent vendor of such goods or any agent of any vendor engaged in
selling
such goods with a like purpose;
(b) Any person
who
by any artifice, or device, or who employs any other means calculated
to
induce the false belief that such person is offering the services of
another
who has identified such services in the mind of the public; or
(c) Any person
who
shall make any false statement in the course of trade or who shall
commit
any other act contrary to good faith of a nature calculated to
discredit
the goods, business or services of another.
168.4. The
remedies
provided by Sections 156, 157 and 161 shall apply mutatis mutandis.
(Sec. 29, R. A. No. 166a)
Sec. 169. False Designations
of Origin; False Description or Representation. -
169.1. Any person
who, on or in connection with any goods or services, or any container
for
goods, uses in commerce any word, term, name, symbol, or device, or any
combination thereof, or any false designation of origin, false or
misleading
description of fact, or false or misleading representation of fact,
which:
(a) is likely to
cause confusion, or to cause mistake, or to deceive as to the
affiliation,
connection, or association of such person with another person, or as to
the origin, sponsorship, or approval of his or her goods, services, or
commercial activities by another person; or
(b) in
commercial
advertising or promotion, misrepresents the nature, characteristics,
qualities,
or geographic origin of his or her or another person’s goods, services,
or commercial activities, shall be liable to a civil action for damages
and injunction provided in Sections 156 and 157 of this Act by any
person
who believes that he or she is or likely to be damaged by such act.
169.2. Any goods
marked or labeled in contravention of the provisions of this Section
shall
not be imported into the Philippines or admitted entry at any
customhouse
of the Philippines. The owner, importer, or consignee of goods refused
entry at any customhouse under this section may have any recourse under
the customs revenue laws or may have the remedy given by this Act in
cases
involving goods refused entry or seized. (Sec. 30, R.
A.
No. 166a)
Sec. 170. Penalties.
-
Independent of the civil and administrative sanctions imposed by law, a
criminal penalty of imprisonment from two (2) years to five (5) years
and
a fine ranging from Fifty thousand pesos (P50,000) to Two hundred
thousand
pesos (P200,000), shall be imposed on any person who is found guilty of
committing any of the acts mentioned in Section 155, Section 168 and
Subsection
169.1. (Arts. 188 and 189, Revised Penal Code) |
