PATENT - OVERVIEW

WHAT IS A PATENT?
ANSWER: A Patent is a grant given by the government to inventors/applicants in
return for disclosing an Invention. It is a legal right to exclusively exploit the
invention for the life of the patent. The term of protection for a Patent is (20) years
from the date of filing in the Philippines, with no possibility of renewal.
 
CAN YOU PATENT AN IDEA OF A NEW INVENTION?
ANSWER: No, an idea of a new invention alone cannot be patented. To qualify for
patent protection, an invention has to be applied to a product or process. For an
invention to be patentable, it should meet the three criteria: it must be new, involves
an inventive step and is industrially applicable.
 
WHAT IS A PATENTABLE INVENTION?
ANSWER: A Patentable Invention is any technical solution to a problem in any field
of human activity which is new, inventive, and useful. An Invention may relate to a
product (e.g. machine, device, an article of manufacture, a composition of matter, a
microorganism), process or method, (e.g. a method of use, method of manufacturing,
a non-biological process, a microbiological process), computer-related inventions,
and improvement of any of the foregoing.
 
CAN I OBTAIN A PATENT FOR A PRODUCT DESIGN?
ANSWER: It is not possible to obtain patent protection for the mere outward
appearance of an article, that is, a shape configuration, pattern or ornamentation
because a patent protects the functional application of a product. Instead, an
Industrial Design registration may be a more appropriate option.
However, if the outward appearance has a functional application as opposed to
a mere visual purpose, it may be possible to obtain patent protection, subject to the
patentability requirements of novelty, inventive step and industrial application.
 
WHY IS IT IMPORTANT TO APPLY FOR A GRANT OF PATENT?
ANSWER: A patent is an exclusive right that gives the inventor the right to exclude
others from making, using, or selling the product of his invention during the life of the
patent. Patent owners may also give permission to, or license, other parties to use
their inventions on mutually agreed terms. Owners may also sell their invention rights
to someone else, who then becomes the new owner of the patent.
 

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CAN YOU STILL COMMERCIALIZE OR USE YOUR INVENTION EVEN
WITHOUT A PATENT?
ANSWER: Yes, you can commercialize or use your invention without patent
protection. However, once your invention is made known to the public, you may not
be able to obtain a patent if you decide to apply for protection later because your
invention can no longer be considered as "new".
Credit: Intellectual Property Office of the Philippines Website (Patent FAQs)

CRITERIA AND LIMITATIONS OF PATENT

WHAT ARE THE CRITERIA FOR PATENTABLE WORK?
ANSWER: The Intellectual Property Code of the Philippines sets three conditions for
an invention to be deemed patentable: it has to be:
(1) New (if should not yet form part of the domain of prior art. Prior art is any
evidence that your invention is already known to the anyone. Prior art does not need
to exist physically or be commercially available. It is enough that someone,
somewhere, sometime previously has described or shown or made something that
contains a use of technology that is very similar to your
invention.  (Examples: Vendo Machines; Drones; coffee maker; color and shape
shorter, cooling and heating devices)
(2) Involves an inventive step (An invention involves an inventive step if, having
regard to prior art, it is not obvious to a person skilled in the art at the time of the
filing date or priority date of the application claiming the invention.) (Example: If A
is applying for patent of his medicinal solution that will generate hair grow within
24 hours, but UNILAB already had registered a similar product a week before that,
no Patent shall be granted.)
(3) Industrially applicable (An invention that can be produced and used in any
industry is considered industrially applicable.)
 
WHAT MAY NOT BE PATENTED?
ANSWER: The following are considered non-patentable: 

1. Discoveries, scientific theories and mathematical methods;

2. Schemes, rules and methods of performing mental acts, playing games or doing
business, and programs for computers;
3. Methods for treatment of the human or animal body by surgery or therapy and
diagnostic methods practiced on the human or animal body. This provision shall
not apply to products and composition for use in any of these methods;
4. Plant varieties or animal breeds or essentially biological process for the
production of plants or animals. This provision shall not apply to micro-
organisms and non-biological and microbiological processes.
5. Aesthetic creations; and

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6. Anything which is contrary to public order or morality. (Example: Chemicals
that would kill any form of human or other significant life; any tools or device
that would aid in creation of  harmful bacteria or virus; etc.)
Credit: Intellectual Property Office of the Philippines Website (Patent FAQs)

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 TRADEMARK - OVERVIEW
WHAT IS A TRADEMARK?
ANSWER: A trademark is a word, a group of words, sign, symbol, or a  logo that
identifies and differentiates the source of the goods or services of one entity from
those of others. Thus, a mark (1) must be a visible sign and (2) must be capable of
distinguishing one’s goods and services from those of another.
 
WHY IS TRADEMARK REGISTRATION IMPORTANT?
ANSWER: A trademark protects a business’ brand identity in the marketplace.
Registration of it gives the owner the exclusive rights to prevent others from using or
exploiting the mark in any way.
Aside from functioning as a ‘source-identifier’, the mark may be a source of revenue
for the owner in the form of royalties obtained through franchising or licensing of the
registered TM for use by others.
 
WHY SHOULD YOU REGISTER YOUR TRADEMARK IMMEDIATELY?
ANSWER: The Philippine trademark system follows a first-to-file rule, meaning the
rights to the trademark is given to the party who first filed for registration of the
mark.
Credit: Intellectual Property Office of the Philippines Website (Trademark FAQs)

HISTORICAL BACKGROUND OF TRADEMARK

BRIEF HISTORY - TRADEMARK
A "trademark" is defined under R.A. 166, the Trademark Law, as including "any
word, name, symbol, emblem, sign or device or any combination thereof adopted and
used by a manufacturer or merchant to identify his goods and distinguish them from
those manufactured, sold or dealt in by others.  This definition has been simplified in
R.A. No. 8293, the Intellectual Property Code of the Philippines, which defines a
"trademark" as "any visible sign capable of distinguishing goods."  In Philippine
jurisprudence, the function of a trademark is to point out distinctly the origin or
ownership of the goods to which it is affixed; to secure to him, who has been
instrumental in bringing into the market a superior article of merchandise, the fruit of
his industry and skill; to assure the public that they are procuring the genuine article;
to prevent fraud and imposition; and to protect the manufacturer against substitution
and sale of an inferior and different article as his product.
Modern authorities on trademark law view trademarks as performing three distinct
functions: (1) they indicate origin or ownership of the articles to which they are
attached; (2) they guarantee that those articles come up to a certain standard of
quality; and (3) they advertise the articles they symbolize. 

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Symbols have been used to identify the ownership or origin of articles for several
centuries.  As early as 5,000 B.C., markings on pottery have been found by
archaeologists. Cave drawings in southwestern Europe show bison with symbols on
their flanks.  Archaeological discoveries of ancient Greek and Roman inscriptions on
sculptural works, paintings, vases, precious stones, glassworks, bricks, etc. reveal
some features which are thought to be marks or symbols. These marks were affixed
by the creator or maker of the article, or by public authorities as indicators for the
payment of tax, for disclosing state monopoly, or devices for the settlement of
accounts between an entrepreneur and his workmen. 
In the Middle Ages, the use of many kinds of marks on a variety of goods was
commonplace. Fifteenth century England saw the compulsory use of identifying
marks in certain trades. There were the baker's mark on bread, bottlemaker's marks,
smith's marks, tanner's marks, watermarks on paper, etc.  Every guild had its own
mark and every master belonging to it had a special mark of his own. The marks were
not trademarks but police marks compulsorily imposed by the sovereign to let the
public know that the goods were not "foreign" goods smuggled into an area where the
guild had a monopoly, as well as to aid in tracing defective work or poor
craftsmanship to the artisan. For a similar reason, merchants also used merchants'
marks. Merchants dealt in goods acquired from many sources and the marks enabled
them to identify and reclaim their goods upon recovery after shipwreck or piracy. 
With constant use, the mark acquired popularity and became voluntarily adopted. It
was not intended to create or continue monopoly but to give the customer an index or
guarantee of quality.  It was in the late 18th century when the industrial revolution
gave rise to mass production and distribution of consumer goods that the mark
became an important instrumentality of trade and commerce.  By this time,
trademarks did not merely identify the goods; they also indicated the goods to be of
satisfactory quality, and thereby stimulated further purchases by the consuming
public.  Eventually, they came to symbolize the goodwill and business reputation of
the owner of the product and became a property right protected by law.  The common
law developed the doctrine of trademarks and tradenames "to prevent a person from
palming off his goods as another's, from getting another's business or injuring his
reputation by unfair means, and, from defrauding the public."  Subsequently, England
and the United States enacted national legislation on trademarks as part of the law
regulating unfair trade.  It became the right of the trademark owner to exclude others
from the use of his mark, or of a confusingly similar mark where confusion resulted in
diversion of trade or financial injury. At the same time, the trademark served as a
warning against the imitation or faking of products to prevent the imposition of fraud
upon the public. 
Today, the trademark is not merely a symbol of origin and goodwill; it is often the
most effective agent for the actual creation and protection of goodwill. It imprints
upon the public mind an anonymous and impersonal guaranty of satisfaction, creating
a desire for further satisfaction. In other words, the mark actually sells the goods.  The
mark has become the "silent salesman," the conduit through which direct contact
between the trademark owner and the consumer is assured. It has invaded popular
culture in ways never anticipated that it has become a more convincing selling point
than even the quality of the article to which it refers.  In the last half century, the
unparalleled growth of industry and the rapid development of communications
technology have enabled trademarks, tradenames and other distinctive signs of a

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product to penetrate regions where the owner does not actually manufacture or sell the
product itself. Goodwill is no longer confined to the territory of actual market
penetration; it extends to zones where the marked article has been fixed in the public
mind through advertising. Whether in the print, broadcast or electronic
communications medium, particularly on the Internet,  advertising has paved the way
for growth and expansion of the product by creating and earning a reputation that
crosses over borders, virtually turning the whole world into one vast marketplace.
SOURCE: Ong Ai Gui alias Tan Ai Gui vs. Director of Phil. Patent Office (G.R.
No. L-6235; March 28, 1955)

FIRST TO FILE RULE - AND - CONVENTION PRIORITY

WHAT IS FIRST-TO-FILE RULE?
ANSWER: First-to-file rule means that whoever was first to file for registration of
the mark, the rights to the trademark is given to that party.
In relation to this, the minimum requirements to secure a filing date for a trademark
application are:

1. An express or implicit indication that the registration of a mark is sought;

2. The identity of the applicant;
3. Contact details of the applicant or its agent/representative;
4. A reproduction of the mark; and
5. The list of the goods or service
Subject to the provisions on priority right, the filing date of an application shall be
the date on which the Office received the indications above (either in English or
Filipino) and the filing fee.
In other words, a dutifully accomplished application form and promptly paid fees is a
must.
====================
CASE: In 2014, x developed a butterfly design that he uses as remarkable logo of
his brand of RTWs. The said logo was made known and became popular to the
public for the next 5 years but did not register it for TM protection. In January
2020, Y copied the same logo and have it registered as TM for his own brand of
shoes. Alarmed, X objected and filed his own application arguing that he has been
using the same logo since 2014. Q: Who has a better right between X and Y?
ANSWER: Y has the better right than X over the said logo because he is the first-to-
file for its TM registration. Whoever was first to file for registration of the mark, the
rights to the trademark is given to that party.
=========================
WHAT IS A PRIORITY RIGHT OR A CONVENTION PRIORITY?

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ANSWER: A priority right in TM application is a time-limited right arising from a
first filing in another country. The subsequent applications will be regarded as if they
had been filed on the same day as the first application; that is, they have priority over
applications for the same mark filed by others during the six-month period of priority
claim. When filing the subsequent application, the applicant must claim the priority of
the first application in order to make use of the right of priority.

The Paris Convention, provides the basis for this "Priority Right", hence likewise
called "Convention Priority."
====================
EX: Johnny is a Filipino businessman in California, USA. He started selling a
unique brand of apparels using the trademark “HB” with the logo of a hawkbill as
its symbol. He had it registered in the IPO-USA on June 05, 2000. Counting 6-
months from June 05, 2000, which means until December 05, 2000, is the so-
called “convention priority” in favor of Johnny if in case he will also have his TM
registered in the IPO-Philippines. It is as if he filed the same application here on
June 05, 2000.
=========================
Credit: Intellectual Property Office of the Philippines Website (Trademark FAQs)

CRITERIA, REMEDIES AND LIMITATIONS OF TRADEMARK

WHAT TYPES OF MARK MAY BE REGISTERED AS A TRADEMARK IN
THE PHILIPPINES?
ANSWER: In the Philippines, the following are types of marks that may be registered
as a TM:

 Word mark
 Figurative mark
 Figurative mark with words
 3D mark
 Stamped or marked container of goods
In any of the above types, generally, the distinctiveness of the mark is the key point of
consideration for grant of registration. Note that under the present IP Code (RA
8293), other forms of marks such as sound marks and scent marks are not yet
registrable with the IPOPHL.
 
WHAT MARKS CANNOT BE REGISTERED AS TRADEMARK?
ANSWER: A mark cannot be registered if it:
 (a) Consists of immoral, deceptive or scandalous matter, or matter which may
disparage or falsely suggest a connection with persons, living or dead, institutions,

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beliefs, or national symbols, or bring them into contempt or disrepute;   Ex. Those
depicting vagina, penis or similar scandalous appearance.
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of
its political subdivisions, or of any foreign nation, or any simulation thereof;   
Ex. Philippine Flag, symbol of any gov’t. agency or instrumentality, emblem of the
Philippine army, or symbol of the United Nations.
(c) Consists of a name, portrait or signature identifying a particular living individual
except by his written consent, or the name, signature, or portrait of a deceased
President of the Philippines, during the life of his widow, if any, except by written
consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or a mark
with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark
which is considered to be well-known internationally and in the Philippines;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark
considered well-known in accordance with the preceding paragraph, which is
registered in the Philippines with respect to goods or services which are not similar to
those with respect to which registration is applied for: Provided, That use of the mark
in relation to those goods or services would indicate a connection between those
goods or services, and the owner of the registered mark: Provided further, That the
interests of the owner of the registered mark are likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services that they
seek to identify;
(i) Consists exclusively of signs or of indications that have become customary or
usual to designate the goods or services in everyday language or in bona fide and
established trade practice;
(j) Consists 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;
(k) Consists of shapes that may be necessitated by technical factors or by the nature
of the goods themselves or factors that affect their intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
 

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WHAT REMEDIES ARE AVAILABLE FOR INFRINGEMENT OF
INTELLECTUAL PROPERTY RIGHT?
ANSWER: There are remedies available to owners of registered marks from
infringers such as Civil and criminal actions for infringement, unfair competition,
false or fraudulent declaration and false designation of origin. 
There are also Administrative Actions before the Bureau of Legal Affairs of the IPO
for violation of IP (infringement, unfair competition, false designation of origin)
under Section 10.2 of the IP Code and Inter Partes Cases (opposition, cancellation)
and/ or Border Measure before the Bureau of Customs.
 
WHAT IS THE PERIOD OF PROTECTION OF A TRADEMARK
REGISTRATION?
ANSWER: The period of protection is ten (10) years from the date of issuance and is
renewable for a period of ten (10) years at a time.
 
IS IT REQUIRED THAT MY TRADEMARK COVER GOODS OR SERVICES
THAT I AM PRESENTLY SELLING?
ANSWER: No. An application for registration may be based on actual use or
intended use of a mark in Philippine commerce.
 
WHAT IF I AM NOT YET USING MY TRADEMARK? CAN I FILE AN
APPLICATION ALREADY?
ANSWER: Yes. Prior use of a mark in the Philippines is not necessary to file an
application. The use of mark becomes necessary only after the application for its
registration has been filed because a Declaration of Actual Use (“DAU”) in
Philippine commerce is required to be submitted within 3 years from filing date.
Hence, you may already file an application for registration.
Credit: Intellectual Property Office of the Philippines Website (Trademark FAQs)

CASES AND APPLICATIONS - CONFUSION IN TRADEMARK

CASE 1: In 2002, Refractories Corp. of the Philippines was patented. In 2003,
Industrial Refractories Corp. of the Philippines was formed on the same line of
business. Is the latter confusingly similar with the former?
ANSWER: YES BEC. THE WORD “INDUSTRIAL” IS JUST A MERE
DESCRIPTION OF THE NATURE OF THE BUSINESS. WITH OR WITHOUT IT, IT
CREATES A DAMAGING SENSE OF DOUBT OR CONFUSION TO A
CORPORATE NAME THAT HAS ALREADY BEEN EXISTING.
 

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CASE 2: PHILLIPS INC. has been in the industry of lights for many years.
Phillips Sy came up with his own lighting products and he wants to call it
STANDARD PHILLIPS INC., the latter from his very own name. PHILLIPS
contended that it was confusingly similar but Phillips Sy argued that he is
entitled to use his very own name. Is the latter confusingly similar with the
former?
ANSWER: YES BEC. ONE COULD NOT HAVE AN EXCLUSIVE USE OF HIS
NAME ESPECIALLY SO IF THAT NAME IS SO COMMON THAT IT WAS
ALREADY LONG EXISTING FOR BUSINESS USE. FURTHER, THE USE OF THE
ADDED WORD “STANDARD” IS OBVIOUSLY RESORTED TO MERELY SET OUT
A VERY SLIM DIFFERENCE YET THE EFFECT OF WHICH STILL CONFUSES
THE PUBLIC CONSUMERS.
 
CASE 3: CROCOS is a well-known mark in the industry as a registered popular
brand of clothing owned by Crocos Fashion Inc. X, a veteran chef on the other
hand applied for registration of mark “CROCOS” at the Intellectual Property
Office for the burger that he is planning to sell to the public. He plans to
introduce it as “CROCOS BURGER”. Crocos Fashion is opposing X’s
application. Q: Should the application for registration of X be allowed?
ANSWER: NO. because it violates the Confusion of Business Test. The goods of the
contending parties are actually different although claiming under the same trademark
but the one with prior registration has the better right and should prevail. The danger
if registration will be allowed is that the defendant’s product may be falsely assumed
to originate from the plaintiff who is the owner of the similar trademark. Since the
trademark is well-known and identified to one person, the buying public may
patronize it under a false belief that it belongs to the same owner.
(Societe Des Prod Nestle vs. Dy citing Sterling Products vs. Farbenfabriken Bayer,
2010)
 
2 TYPES OF CONFUSION IN TRADEMARK INFRINGEMENT:
(1) Confusion of Goods – provides that the ordinarily prudent purchaser will be
induced to buy the similarly marked product under false belief that he is buying the
one which he thought is.  Here, the products are similar.
Ex. Cadbury is a well-known registered mark of chocolates. If another person will
apply for registration of “Cadburry” Chocolates, it will not be allowed because the
public may be confused as to which one is he buying for good to the prejudice of the
authentic owner.
The danger of CONFUSION OF GOODS  is that the poorer quality of the
product one bought adversely reflects on the reputation of the original
trademark owner.
 

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(2) Confusion of Business – provides that the products are different but are selling
under the same trademark. This is likewise not allowed. The one who owns the
registered well-known mark has the right to debunk the use of it by the other person
even if a totally different product is involved.
(Societe Des Prod Nestle vs. Dy citing Sterling Products vs. Farbenfabriken Bayer,
2010)
 
The danger of CONFUSION OF BUSINESS is that the defendant’s product may
be falsely assumed to originate from the plaintiff who is the owner of the similar
trademark. Also, the public may falsely assume that there is a personal or
business connection between the original trademark owner and the other
claimant, which connection does not actually exist. Therefore, the likelihood of
deprivation of potential profit is similarly high even if the products are different
but being registered under the same well-known mark.
The evil brought by the CONFUSION OF BUSINESS is actually similar with the
evil of CONFUSION OF GOODS.
 
Ex. Jollibee is of course a well-known registered mark of fast food. If another person
will apply for registration of “Jollibee Shoes”, it will not be allowed because the
public may falsely assume that the shoes are also product of Jollibee Fast Food or at
least there is a connection between them when in fact there is none. Hence, Jollibee
food lovers may tend to also buy the shoes under that false belief.

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