AN ACT TO PROVIDE FOR THE REGISTRATION AND PROTECTION OF TRADE-MARKS

Case Overview and Summary

Summary of Republic Act No. 166 (Trade-Mark Law)

Powers, Duties and Functions of Patent Office
- The administration of the Act devolves upon the Patent Office. (Section 1)
- All records and personnel related to trade-marks, trade-names, and other marks are transferred from the Bureau of Commerce to the Patent Office. (Section 1)

Registration of Marks and Trade-Names
- Trade-marks, trade-names, and service-marks may be registered under the Act. (Section 2)
- Non-residents must appoint an agent or representative in the Philippines for service of notices. (Section 3)
- Marks or trade-names cannot be registered if they:
    - Consist of immoral, deceptive, scandalous, or disparaging matter. (Section 4(a))
    - Consist of insignia of the Philippines or any foreign nation. (Section 4(b))
    - Identify a living individual without consent or a deceased President during the widow's life. (Section 4(c))
    - Resemble a registered or previously used mark likely to cause confusion. (Section 4(d))
    - Are merely descriptive or primarily a surname. (Section 4(e))
- Distinctive marks or trade-names may be registered if used substantially and continuously for 5 years. (Section 4(f))
- Application requirements include a sworn statement, specimens, power of attorney, appointment of agent (if non-resident), and the required fee. (Section 5)
- The Director shall establish a classification of goods and services. (Section 6)
- The Director shall examine applications and publish allowable marks in the Official Gazette. (Section 7)
- Any person may file an opposition within 30 days after publication, extendable for another 30 days. (Section 8)
- The Director shall serve notice of opposition and hold a hearing. (Section 9)
- Upon expiration of the opposition period or denial of opposition, the Director shall issue the certificate of registration and publish notice in the Official Gazette. (Section 10)
- The certificate shall contain details about the mark, registration number, term, and affidavit of use requirements. (Section 11)
- Registrations are valid for 20 years, renewable upon filing affidavits of use and paying fees on the 5th, 10th, and 15th anniversaries. (Section 12)
- The Director may require unregistrable matter to be disclaimed before issue. (Section 13)
- Registrations may be surrendered, cancelled, amended, or disclaimed after registration upon application and payment of fees. (Section 14)

Renewals of Certificate of Registration
- Registrations may be renewed for 20-year periods upon filing an application, sworn statement, and paying the required fee within 6 months before expiration or 3 months after with a surcharge. (Section 15)
- Failure to renew does not affect the right to apply for a new registration. (Section 16)

Cancellation of Registration
- Any person may apply for cancellation of a registration on grounds such as the mark becoming a common descriptive name, abandonment, fraudulent registration, or assignment leading to misrepresentation of source. (Section 17)
- The petition for cancellation shall follow the same form and procedure as an opposition. (Section 18)
- If cancellation is ordered, the registration shall be cancelled, and notice shall be published in the Official Gazette. (Section 19)

Rights and Remedies
- A certificate of registration is prima facie evidence of the validity of the registration, ownership, and exclusive right to use the mark. (Section 20)
- Registrants must give notice of registration by displaying "Registered in the Philippines Patent Office" or "Reg. Phil. Pat. Off." to recover damages for infringement. (Section 21)
- Infringement constitutes unauthorized use of a registered mark likely to cause confusion or deception. (Section 22)
- Registrants may recover damages equal to the reasonable profit lost, the defendant's profit from infringement, or a reasonable percentage of the defendant's gross sales. Damages may be doubled for intent to mislead or defraud. (Section 23)
- Courts may order the destruction of infringing materials. (Section 24)
- Courts may determine the right to registration, order cancellation or restoration of registrations, and rectify the register. (Section 25)
- Any person who procures registration by false or fraudulent means is liable for damages. (Section 26)
- Actions under the Act shall be brought before the Court of First Instance, with the right to appeal. (Sections 27-28)

Unfair Competition
- Persons who have identified their goods, business, or services in the public mind have a property right in the goodwill, which shall be protected. (Section 29)
- Unfair competition includes passing off goods or services as those of another, giving goods the appearance of another's goods, making false statements to discredit another's goods or services, or any other means contrary to good faith. (Section 29)

False Designation of Origin and False Description
- Any person who uses a false designation of origin or false description on goods or services entering commerce is liable for damages and injunction. (Section 30)

Assignment and Transmission of Rights
- Registered marks or trade-names, or applications, may be assigned with the goodwill of the business or part thereof. (Section 31)
- Assignments must be in writing, acknowledged, and recorded in the Patent Office within 3 months or before a subsequent purchase. (Section 31)
- A new certificate of registration may be issued to the assignee upon request and payment of fees. (Section 32)

Review of Orders or Decisions of Director
- Any party denied registration, renewal, or cancellation may appeal to the Supreme Court from the Director's final order or decision. (Section 33)
- The appeal procedure shall follow Sections 63-73 of the Patent Law. (Section 34)

Importations Prohibited
- Imported goods bearing infringing marks, trade-names, or false designations of origin shall not be admitted into the Philippines. (Sections 35-36)

Provisions in Reference to Foreign Industrial Property
- Nationals, domiciliaries, or those with a bona fide business establishment in countries party to relevant international conventions shall be entitled to the benefits of the Act, subject to certain conditions. (Section 37)
- Registration in the country of origin is generally required before registration in the Philippines, unless use in commerce is alleged. (Section 37)
- Applications filed within 6 months of the first foreign filing may be accorded the same force and effect as if filed in the Philippines on the same date, subject to certain conditions. (Section 37)
- Trade-names of foreign entities shall be protected without registration. (Section 37)
- Foreign entities shall be entitled to protection against unfair competition. (Section 37)
- Philippine citizens or residents shall have the same benefits as foreign entities. (Section 37)

Construction and Definitions
- Definitions of "trade-name", "trade-mark", "service-mark", "business", "mark", and "registrant" are provided. (Section 38)
- A schedule of fees for various actions related to registration is provided. (Section 39)
- Provisions for collective marks and collective trade-names are included. (Section 40)

Miscellaneous Provisions
- Owners of marks or trade-names registered under prior laws may surrender their certificates and obtain new ones under the Act within 1 year, or renew their registrations before expiration. (Section 41)
- Registrations that expired after December 8, 1941, due to war circumstances may be renewed within 1 year after the Act takes effect. (Section 42)
- Pending applications may be amended to conform to the Act without additional fees. (Section 43)
- Prior laws inconsistent with the Act are repealed. (Section 44)
- The Act shall take effect upon approval. (Section 45)