What’s In A Name: Basics of Trademark Registration
One way to make your goods and services standout from the rest is to give it a memorable name. For example, some product names that have stood the test of time include McDonald’s Big Mac to name their signature burger or Apple’s iPod.
The brands hailing those products similarly have become household names across the years.
When you’ve struck a name for your business that you believe can help you stand out from the rest, you would do well to keep it protected. To protect the names of goods and services, we rely on Trademark Law.
The Intellectual Property Code of the Philippines (IP Code) contains the rules to Trademark.
First, what is a trademark? Strictly speaking, “trademark” would refer only to the visible sign capable of distinguishing goods. A mark may consist of names, an artwork, print, including all shapes and colors that the owner has chosen to distinguish their goods or services from others.
There is also a subcategory in trademark registration that covers word marks. This protects only the word, and does not include the stylized logo that typical trademarks have.
Trademark protection might be particularly memorable for its signature “™” stamped beside the name of the goods.
How To Register Your Trademark
A mark is given protection upon registration. The Intellectual Property Office (IPO) is responsible for receiving applications for trademark protection.
The applicant must first conduct a search on the IPO library of trademarks on their website to check if there are any duplicates or similar names. If there are none, the applicant can then proceed to filing itself. Here, they will be asked what type of mark they will apply protection for and other pertinent details of the application.
After submission, the applicant will be asked to pay the filing fee that starts at Php 1,200. They can then wait for the result of their application.
Benefits of Trademark Registration
Rights under trademark law include the right of the owner of the mark to prevent third parties from using the mark for identical or similar goods, without the owner’s consent. Third parties who use the mark without the consent of the owner will be liable for trademark infringement.
An example would be an old case involving “Ang Tibay,” a registered trademark for footwear. Another manufacturer later used the phrase “Ang Tibay” to brand its jeans.
The Supreme Court ruled that since “Ang Tibay” footwear was registered first, then the jean manufacturer cannot use the same phrase for their own products as it would result in confusion.
Also prohibited is the unauthorized reproduction, counterfeiting, copying, and colorable imitation of the registered mark.
What Cannot Be Registered
However, not all proposed names for goods or services can be protected by Trademark.
Section 123 of the Intellectual Property Code (IP Code) proscribes what kinds of names cannot be registered. Among them are names that consist of immoral, deceptive, or scandalous matters. Marks also cannot be registered if they contain the flag of the Philippines, its political subdivisions, or flags of foreign nations.
A mark also cannot consist of a name, portrait, or signature of a particular living individual.
There are also important tests under jurisprudence that serve as guidelines for when a mark may or may not be registered.
Likelihood of Confusion Test
The first test is the “Likelihood of Confusion”. Under the law, a mark cannot be registered if it is identical with, or confusingly similar to, or constitutes a translation of a mark that is used for a similar set of goods or services in the Philippines, whether or not the mark has been registered.
Such marks also cannot be registered if they are confusingly similar to the mark and pertain to a product that is related to products of the registered mark. For example, a local rubber shoe brand cannot name itself Universal Converse and Device, when there is in existence a Converse Rubber Corporation. The dominant word “Converse” would cause confusion.
Previously, there were two tests to decide whether competing marks were confusingly similar. These are the Holistic Test and the Dominancy Test.
The Holistic Test provides that to decide if a mark was similarly confusing to another mark, it must be taken as a whole.
The Dominancy Test provides that what should be checked is whether dominant features of both marks are similar.
But in the recent case of Kolin vs. Kolin, the Supreme Court abandoned the Holistic Test and decided that the Dominancy Test was more proper.
Doctrine of Secondary Meaning
The second test is the Doctrine of Secondary Meaning.
As a general rule, generic or merely descriptive names cannot be registered. Examples would be “red” or “long.” These, by themselves, could not be protected by Trademark.
But under the Doctrine of Secondary Meaning, when a word or phrase is originally incapable of protection, but has been used so long and so exclusively by one producer in relation to his product, and it has come to mean that product, then it can be protected.
An example would be “Apple,” which has come to be understood to reference the technology and electronic company.
If you have a name for your business or product that you need registered for Trademark protection, contact us at digest.ph to help.