WHAT IS A TRADEMARK? WHY IS IT IMPORTANT?
A trademark is a tool used that differentiates goods and services from each other. It is a very important marketing tool that makes the public identify goods and services. A trademark can be one word, a group of words, sign, symbol, logo, or a combination of any of these. Generally, a trademark refers to both trademark and service mark, although a service mark is used to identify those marks used for services only.
Trademark is a very effective tool that makes the public remember the quality of goods and services. Once a trademark becomes known, the public will keep on patronizing the products and services.
Utilized properly, a trademark can become the most valuable business asset of an enterprise. In addition to making goods and services distinctive, the owner of a mark may earn revenues from the use of the mark by licensing its use by another or though franchising agreements.
HOW CAN YOU PROTECT YOUR MARK?
In the Philippines, a trademark can be protected through registration. Registration gives the trademark owner the exclusive right to use the mark and to prevent others from using the same or similar marks on identical or related goods and services.
The right to a trademark is granted to the one who first files a trademark application with the IP Philippines. Before applying for trademark registration, it would help if you conduct a search in the trademarks database to determine if there are identical or similar marks that would prevent the registration of your mark. This is to prevent future conflicts with marks that are already registered or with earlier filing dates.
The trademark protection granted by IP Philippines protects your mark only in the Philippines. If you want your mark protected outside the country, you will need to file applications in the countries where you want your mark registered.
What may be registered?
Your mark should be able to distinguish your goods or services from those of others. Your mark should also meet the requirements for registrability of marks under Sec. 123.1 of the Intellectual Property Code.
Your mark will not be registered if it is:
These are marks that describe the characteristics of the goods or services. Examples are “DURABLE” for shoes (describes the quality), “A LITER” for cooking oil (quantity), and so is “KITCHEN” for cooking utensils (intended purpose).
Marks that are likely to deceive or have the tendency to misinform the consumers about the actual characteristics of the goods or services like “BOLPENS” for pencils, “COLA” for alcoholic beverages, “BULAKAN” for sweets not originating from or produced in Bulacan.
GENERIC and customary to trade
Generic marks are names of products they seek to identify. For instance, “KAP KEYK” for cupcakes, ”CAFFE” for coffee and “MAKINAH” for machines.
Marks and indications that have become common in everyday language or usage can not be registered. They no longer distinguish the goods and services because they are used so often to refer to the goods and services. Example of this is “VCO” for virgin coconut oil, “DIAMOND PEEL” for services involving cosmetic procedure.
Contrary to Public Order or Morality
Marks that are against the common standard of morality. An example is “PRO-TERRORISM” for clothing.
CONSISTS OF NAMES, PORTRAITS OF PERSONS, MAPS, FLAGS AND OTHER POLITICAL SYMBOLS
Marks that contain names or portraits of living individuals may be rejected unless the individual gives written consent. For instance, no one can use the picture of Manny Pacquiao as a trademark unless he is Mr. Pacquiao himself or he was duly authorized by Mr. Pacquiao.
SHAPE AND COLOR
Shapes must be distinctive from the usual shape of goods or containers of the goods, in order to be considered a trademark. One classic example is the COKE BOTTLE.
Color alone is not accepted unless it is defined by a given form.
MARKS THAT MAY CAUSE CONFUSION
Your mark cannot be registered if it is identical with or similar to a registered mark or a mark with earlier filing date for goods and services that are exactly the same or for goods and services that are related. Consumers should not confuse your mark with the marks of others.
Identical with, or confusingly similar to WELL-KNOWN MARKS
Marks that are identical with or similar to marks that are known internationally and in the Philippines will be refused registration.
What are the requirements to apply for registration?
1. A duly filled out trademark application form
2. Drawing of the mark
3. Payment of fees