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:

DESCRIPTIVE

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).

MISLEADING

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.