Philippines

Philippines
Philippinen

Report Q191

in the name of the Philippine Group

by Bienvenido I. SOMERA, Jr.

Relationship between trademarks and geographical indications

Questions

I) Analysis of current legislation and case law

1) Do your country’s laws have enactments or systems dealing specifically with GIs, e.g. a
registration system for GIs? If so, what are the criteria of registrability? To which national
authority must an application for protection be made? Does the applicant have the right to
appeal against the refusal of the national authority to register a GI? If so, to which entity?
To date, there is no registration system for GIs under Philippine law. However, GIs are
expressly recognized as an intellectual property (see No. 2 below).

2) What is the status of a GI in your country? Does the registration of a GI confer a property
right? Who would be the rightholder of a GI? Can GIs be the subject of dealings such as
assignment, mortgage and licensing?
A GI is one of the intellectual property rights protected under Republic Act No. 8293,
otherwise known as the Intellectual Property Code of the Philippines (the “IP Code”). Section
4 of the IP Code states:
“Sec. 4. Definitions. 4.1. The term intellectual property rights consist of:
a) Copyright and Related Rights;
b) Trademarks and Service Marks;
c) Geographic Indications;
d) Industrial Designs;
e) Patents;
f) Lay–out Designs (Topographies) of Integrated Circuits; and
g) Protection of Undisclosed Information. “
As a recognized intellectual property right, it may therefore be subject of dealings such as
assignment, mortgage and licensing. In fact, Section 169 of the IP Code protects GIs against
unfair competition:
“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:

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 b) In commercial advertising or promotion, misrepresents the
nature, characteristics, quantities, 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.”

3) Is the application for or registration of a GI made public in your country? Is it possible to

oppose such application or registration or cancel such registration of a GI? If so, by whom
and on what (absolute or relative) grounds (e.g. generic or descriptive term or prior
trademark)?
As previously stated, the Philippines does not have a system of registration for GIs. However,
in the event that a GI is applied for registration as a mark, the true owner of the said GI may
oppose the application on the ground that it is likely to mislead the public as to the
geographical origin, or consists exclusively of signs that serve in trade to designate the
geographical origin, of the goods or services of the applicant. Section 123.1 of the IP Code
provides:
“Sec. 123. Registrability
123.1. A mark cannot be registered if it:
g) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services;
j) Consist 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;”
A registered trademark may also be cancelled on the ground that the registration therefor was
obtained fraudulently or contrary to the provisions of the IP Code [cf. Section 151 of the IP
Code].
However, under Section 123.2 of the IP Code, the marks mentioned in paragraph j) may still
be registered, e.g., by the true owner of the GI, if the applicant can show that the mark 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:
“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.”

4) Must use requirements be satisfied in order to maintain GI protection? If so, is there any
definition of what constitutes use? Are the legal rules established for appraising the
maintenance of a trademark registration applicable to the appraising of the maintenance of
GI protection?

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 There are no use requirements before GIs can enjoy protection against fraudulent/misleading
registrations and unfair competition. However, as discussed, a mark which consists
exclusively of signs that serve in trade to designate the geographical origin of the goods or
services of the applicant may be registered as a trademark if it has become distinctive, i.e., it
has been in exclusive and continuous use by the applicant in the Philippines for five (5) years
before the date on which the claim of distinctiveness is made.

5) What is the scope of protection of a GI? Is it only protected against use of the name or also
against use of elements of the specification of the GI (e.g. slicing, grating) or any other
practice liable to mislead the public as to the origin of the product (e.g. use of same trade
dress)? Are the legal rules established for determining the scope of trademark protection
applicable to determining the scope of GI protection (e.g. in relation to reputed or
well–known GIs, likelihood of confusion, infringing and non–infringing acts)? May rights in a
GI be enforced even where a product which allegedly infringes those rights has been made
purely for export?
The definition of unfair competition under the IP Code is broad:
“SECTION 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

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 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.”
In Alhambra Cigar vs. Mojica, 27 Phil 266 (1914), the Philippine Supreme Court defined
unfair competition as “passing off or attempting to pass off upon the public the goods or
business of one person as and for the goods or business of another. It consists essentially in
the conduct of a trade or business in such a manner that there is either an express or implied
representation to that effect.”
In view thereof, it appears that the scope of protection of GIs is not just against the use of the
name but also against the use of elements of the specification of the GI or any other practice
liable to mislead the public as to the origin of the product.
Similarly, it also appears that the rules established for determining the scope of trademark
protection are applicable to determining the scope of GI protection, e.g., in relation to
reputed or well–known GIs, likelihood of confusion, infringing and non–infringing acts, and
may be enforced even in cases where a product which allegedly infringes those rights has
been made purely for export.

6) Can a GI be registered as individual trademark? If so, under what conditions?

As discussed in No. 3, GIs may be conditionally registrable as individual trademarks subject
to the condition that the applicant can show that the mark 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.

7) Do your country’s laws provide for collective or certification marks? If so, under what
conditions can a GI be registered as a collective mark or a certification mark?
Yes. Sections 167 and 121.2 of the IP Code provides:
“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”.
“Sec. 121. Definitions.
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;”

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 Hence, GIs may be registered as a collective mark if applied for by duly accredited
organizations or associations in the place of origin.

8) Does inclusion of a protected GI as part of a trademark qualify as legal bar to the registration
of such trademark?
Yes, if it is likely to mislead the public as to the origin of the goods of the applicant applying
for such trademark.

9) Do your country’s laws, e.g. trade or merchandise legislation, require the application of
correct designations of origin/source on agricultural products and food–stuffs?
Yes. Section 77 of Republic Act No. 7394, otherwise known as The Consumer Act of the
Philippines, requires consumer products sold domestically to be properly labeled:
“ARTICLE 77.
Minimum Labeling Requirements for Consumer Products. – All consumer
products domestically sold whether manufactured locally or imported shall
indicate the following in their respective labels of packaging:
a) its correct and registered trade name or brand name;
b) its duly registered trademark;
c) its duly registered business name;
d) the address of the manufacturer, importer, repacker of the consumer
product in the Philippines;
e) its general make or active ingredients;
f) the net quality of contents, in terms of weight, measure or numerical
count rounded of to at least the nearest tenths in the metric system;
g) country of manufacture, if imported; and
h) if a consumer product is manufactured, refilled or repacked under license
from a principal, the label shall so state the fact.”

10) How are conflicts between trademarks and GIs resolved under your country’s laws? Do they
co–exist or does either the trademark or GI prevail? Is there a rule for determining whether the
trademark or GI should prevail, and what are the criteria to take into account (e.g. the “first
in time, first in right”–rule, the reputation of the geographic region or the reputation of the
trademark, the length of time that the name has been used to indicate the geographic region
and the extent of such usage, the length of time that the trademark has been used and the
extent of such usage)?
Since the Philippines still has no system of registration for GIs, there is no jurisprudence yet on
how conflicts between trademarks and GIs, which has been recognized and registered as
such, are resolved. However, it appears from the provisions of the IP Code that GIs prevail
over trademarks since, as discussed, marks which mislead the public as to the origin of the
goods of the applicant or consist exclusively of geographically descriptive words are not
registrable.
Nevertheless, it is clear from jurisprudence that the owners of registered trademarks which
contain geographically descriptive words cannot claim exclusive use of such words. For
example, in Asia Brewery, Inc. vs. The Hon. Court of Appeals and San Miguel Corporation,
224 SCRA 437 (1993), the Philippine Supreme Court held that the use of the words “pale
pilsen” by petitioner Asia Brewery, Inc. does not constitute an infringement of respondent’s
registered trademark “SAN MIGUEL PALE PILSEN” since “pale pilsen” are generic words

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 descriptive of the color (“pale”) of a type of beer (“pilsen”), which is a “light bohemian beer
with a strong hops flavor that originated in the city of Pilsen in Czechoslovakia and became
famous in the Middle Ages.” It must be pointed out that in the aforementioned case, the
Supreme Court considered the geographical term “pilsen” as generic. It thus appears that the
word “pilsen” may no longer be protected as a GI in the Philippines.

II) Proposals for adoption of uniform rules

The Groups are invited to put forward any proposals for adoption of uniform rules regarding
the relationship between trademarks and GIs. More specifically, the Groups are invited to
respond to the following questions:
11) Should countries provide for registration systems dealing specifically with GIs? If so, what
should the key features of such system be? Should a multilateral system of registration of GIs
be established? If so, what should the key features of such multilateral system be? Specifically,
which international body should be tasked with establishing such system? How should the
application for or registration of a GI be notified/made public (either in your country or at a
multilateral level) in order to avoid that a trademark may conflict with a GI previously
unknown to the trademark owner?
Countries should provide for a system of registration dealing with GIs for certain products,
e.g., wines, spirits and food–stuffs. Such system of registration may be akin to a Patent
Cooperation Treaty, with an international publication and with an international and a
national phase as well to be administered respectively by the World Intellectual Property
Office and the local Intellectual Property Office of the countries where the GIs are sought to
be registered. The rights accorded to registered owners may be similar to those of trademark
owners.

12) Do you have any suggestions as to the acquisition, maintenance, scope and enforcement of
GI protection? What should the scope of protection of a GI be? Should the legal rules
established for appraising the acquisition, maintenance, scope and enforcement of trademark
protection apply to the appraising of the acquisition, maintenance, scope and enforcement of
GI protection?
Acquisition, maintenance, scope and enforcement of GI protection may, in most respects, be
similar to those of trademarks.

13) Should a protection of GIs by individual and/or collective or certification marks be possible?
Protection of GIs by individual and/or collective or certification marks should be made
possible.

14) How should conflicts between trademarks and GIs be resolved? Please propose a specific rule
for determining whether trademark or GI should prevail, which is likely to be broadly
accepted. If co–existence is contemplated, should such co–existence be limited to the country
of origin or relate to the relevant markets?
Resolution of conflicts between trademarks and GIs should remain as it is. Hence, if a mark
consists exclusively of signs that would serve in trade to designate the geographical origin of
the mark, the same should not be registered as a trademark. Further, if a mark is likely to
mislead the public, particularly as to geographical origin of the goods or service, the same
should also not be registered as a trademark.
On the other hand, if the same marks are not misleading as to the geographical origin of the
goods and services – and if the same marks are still not considered generic in the Philippines
despite its long use in Philippine trade (see Asia Brewery Asia Brewery, Inc. vs. The Hon.
Court of Appeals and San Miguel Corporatio, supra) – then the said marks may be protected
and registered as GIs.