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Non-registrable

Industrial Designs
By: Mark Joseph M. Virgilio
2-Manresa
SUBSTANTIVE CONDITIONS
FOR PROTECTION
(SECTION 113, RULES OF COURT)

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SECTION 113.1,
RULES OF COURT
Only industrial designs that are
new or original shall benefit
from protection under this Act.
SECTION 113.2,
RULES OF COURT
Industrial designs dictated
essentially by technically by
technical or functional
considerations to obtain a
technical result or those that
are contrary to public order,
health or morals shall not be
protected.
What are Non-registrable Industrial
Designs? (Rule 1501, IRR)
a. Industrial designs that are dictated essentially by technical or
functional considerations to obtain a technical result;
b. Industrial designs which are mere schemes of surface ornamentations
existing separately from the industrial product or handicraft;
c. Industrial designs which are contrary to public order, health, or morals
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DICTATED ESSENTIALLY BY FUNCTIONAL CONSIDERATION

Power button

Simcard inlet

Earphone Jack

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CONTRARY TO PUBLIC POLICY, HEALTH, AND MORALS

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Allegations of Victorias Milling Company:

its trademark “Victorias” and diamond design has become


distinctive of its sugar long before Ong Su used its
trademark

that the registration of “Valentine” and diamond design has


caused and will cause great damage to the company by
reason of mistake, confusion, or deception among the
purchasers because it is similar to its “Victorias” trademark

that registration was fraudulently obtained by Ong Su

that “Valentine” falsely suggests a connection with Saint


Valentine or with an institution or belief connected therewith
The Director of Patents denied the petition to cancel the
certificate of registration of ONG Su covering the trademark
“Valentine” and design

“Herein Victorias Milling failed to establish that diamond design


component of its mark has acquired a secondary meaning and
that the literal portion of the marks have no similarity, there is
no reasonable likelihood of purchaser confusion resulting from
registrant’s use of VALENTINE within a diamond and Victoria
Milling’s use of VICTORIAS within
9 a diamond.”
ISSUE
Whether or not the Director of Patents erred in
holding that the design of Victorias Milling has
not attained secondary meaning.

NO!
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DOCTRINE OF SECONDARY
MEANING


a word or phrase originally incapable of exclusive appropriation with
reference to an article in the market has, through its long and exclusive use
by one entity has effectively been distinguished and identified as that
representing the user and its products.

mark has become so distinctive, as used in connection with the applicant's


goods in commerce.

mark comes to identify not only the goods but the source of those goods. To
establish secondary meaning, it must be shown that the primary significance
of the term in the minds of the consuming public is not the product but the
producer
RULING
No. The Director of Patents is correct. Victorias Millling's design has
not attained secondary meaning. The contention of Victoria that the
diamond design in its trademark is an index of origin has no merit. It
has not shown that the design portion of the mark has been so
used that purchasers recognize the design, standing alone, as
indicating goods coming from the registrant.

As correctly stated by the Director of Patents, common geometric


shapes such as diamonds ordinarily are not regarded as indicia
of origin for goods to which the marks are applied unless they
have acquired a secondary meaning.

And there is no evidence that the diamond design in the trademark of


Victoria has acquired a secondary meaning with respect to its sugar
business. The word “Victorias” is what identifies the sugar
contained in the bag as the product of Victorias Milling. Indeed, it
has advertised its sugar in bags marked “Victorias” with oval, hexagon
and other designs.
RULING
The evidence reveals that ONG Su has been using his trademark
since prior to the last World War and he obtained the registration
thereof on June 20, 1961.

Vijandre declared that the Victorias Milling started to use its trademark
only in 1947. Said trademark was registered on November 9, 1961. It
cannot be said, therefore, that the ONG Su imitated the trademark of
the Victorias Milling.

It seems clear that the words “Valentine” and “Victorias” and the
names and places of business of Victorias Milling Company, Inc. and
ONG Su are the dominant features of the trademarks in question.
Victorias Milling has not established such a substantial similarity
between the two trademarks in question as to warrant the cancellation
of the trademark ‘Valentine’ of ONG Su.