4. Ownership, Registration, and Duration

PRIOR USE OF MARK AS REQUIREMENT

Under Trademark Law (old rule): The rights to a trademark were acquired through a “first-to-use” system. (Sec. 2-A, Republic Act No. 166)¹

Under the IP Code (new rule): The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Sec. 122, IP Code)²

Prior use no longer determines the acquisition of ownership of a mark in light of the adoption of the rule that ownership of a mark is acquired through registration made validly in accordance with the provisions of the IP Code. (Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, 8 September 2020)³

ACQUISITION OF OWNERSHIP OF A MARK

The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. (Pharmaceutical)⁴

Any person who shall procure registration in the Office of a mark by a false or fraudulent declaration or representation, whether oral or in writing, or by any false means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof. (Sec. 162, IP Code)⁵

The registration of trademark under the law is required to give notice to the entire world that a mark has already been registered. The failure to display notice of registration does not bar recovery of profits or damages for trademark infringement if the defendant otherwise had actual notice of the registration and the knowledge requirement under Sec. 158, IP Code, is met. (Sec. 158, IP Code)⁶

The owner of the registered mark shall not be entitled to recover profits or damages in any suit for infringement, unless the acts have been committed with knowledge that such imitation is likely to cause confusion, to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words “Registered Mark” or the letter R within a circle or if the defendant had otherwise actual notice of the registration. (Sec. 158, IP Code)⁷

Duration and Renewal

A certificate of registration shall remain in force for 10 years: Provided, That the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by the Regulations, within 1 year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Register by the Office.

A certificate of registration may be renewed for periods of 10 years at its expiration upon payment of the prescribed fee and upon filing of a request.

ACQUISITION OF OWNERSHIP OF TRADE NAME

Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties. (Sec. 165.2.a, IP Code)⁸

In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful. (Sec. 165.2.b, IP Code)⁹