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Basic Trademarks

What is a Trademark? What is a Tradename?
A trademark is a visible sign used to identify the goods or services of an enterprise. It can be a word, phrase, logo or design that distinguishes the products or services of one business from another.

On the other hand, a tradename is the name or designation identifying or distinguishing an enterprise.

Why is a Trademark important for business?
A trademark is the identity of a product or service and represents the good will of a business as well as its reputation for providing quality goods and services to the public. An established trademark is an enormous competitive edge for businesses especially when introducing itself to an untapped market.

Why should a trademark be registered and how long is the term of the registration of a mark?
Although registration is not required for the use of a trademark, it is necessary in order for protective rights to a trademark to arise. Without registration of the trademark, anyone can reproduce it and utilize it in their business. If the trademark is one that is well-known and is trusted in the market, unauthorized and improper use and reproduction of the mark or one that is similar to the trademark by strangers may diminish the public’s confidence in the product or service on which the mark is found, therefore, negating the good will and reputation of the former established business. The certificate of registration of a mark remains in force for ten (10) years and is renewable for periods of ten (10) years at its expiration.

Where is the application for the registration of a trademark filed?
The application for registration of a trademark is filed with the Bureau of Trademarks of the Intellectual Property Office. The application must have a request for the registration of the mark, the name and address of the applicant, a list of the goods and/or services on which the mark shall be used as well as other information that may be required.

What are the grounds for the refusal of an application for registration of a trademark?
Not all words or combinations of words can be registered as a trademark. A trademark cannot be a generic term for goods, nor can it designate a quality, quantity, value, geographic origin or other characteristic of goods. A color alone is not allowed to be registered as a trademark. Customary signs in everyday language and established trade practice will also be denied registration.

In addition, the trademark sought to be registered must not be in violation of the rights of other people such that registration of the trademark will cause confusion or mistake due to its similarity to existing and/or registered trademarks.

When is there trademark infringement? What is the remedy of the owner of the trademark?
There is infringement of trademark when a registered mark or a colorable imitation of it is reproduced, counterfeited or copied for commercial purposes likely to cause confusion or to deceive and mislead the consumer regarding the relation of the products or goods on which it is placed to the original owner of the trademark.

Once infringement has been duly proven, the owner of the trademark may claim damages from the infringer based either on the profit which the infringer actually made, the reasonable profit which the owner of the trademark would have made had there been no infringement of his rights or the gross amount of sales of the infringer utilizing the trademark subject of the infringement. Other remedies such as an injunction against the infringer are also available.

What is the significance of a “well known mark”?
If a certain trade mark not registered in the Philippines is considered by the competent Philippine authority as a well known mark, the owner of such mark has the capacity to sue in the appropriate Philippine courts in case of unauthorized use of its trademark in the country and take other necessary steps to protect its interests over the mark by opposing registration of confusingly similar marks or moving for the cancellation of the registration of the said marks. In an Octoer 15, 2007 decision, the Supreme Court held that an internationally well-known mark is protected against unauthorized users even if it has not been registered nor used in the Philippines.