2. Registrable and Non-Registrable Marks

NON-REGISTRABLE MARKS

A mark cannot be registered if it:

• Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
• 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;
• 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;
• Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
• The same goods or services, or
• Closely related goods or services, or
• If it nearly resembles such a mark as to be likely to deceive or cause confusion;
• Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be wellknown internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
• 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;
• Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
• Consists exclusively of signs that are generic for the goods or services that they seek to identify;
• 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;
• Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or rendering of the services, or other characteristics of the goods or services;
• 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;
• Consists of color alone, unless defined by a given form; or
• Is contrary to public order or morality [Sec. 123.1, RA 8293]¹.

Note: As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines.

The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant’s goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made [Sec. 123.2, RA 8293]².

Spectrum of Distinctiveness of Trademark

(Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983))³ (from weakest to strongest)

• Generic – refers to a particular genus or class of which an individual article or service is a member (e.g. escalator, cellophane, etc.)
• It can never attain trademark protection.
• If a registered trademark becomes generic as to a particular product or service, the mark’s registration is subject to cancellation.
• Descriptive – identifies a characteristic or quality of an article or service such as its color, odor, function, dimensions, or ingredients

General Rule: It is not ordinarily protectable as a trademark because, like a generic term, it belongs to the public domain. (Ong Ai Gui v. Director of Patents, G.R. No. L-6235)⁴

Exception: When the doctrine of secondary meaning applies in such a way that it has acquired a secondary meaning in the minds of the consumers. (Sec. 123.2⁵)

• Suggestive – requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the goods or services
• Arbitrary or Fanciful – bear no relationship to the products or services to which they are applied; protectable without proof of secondary meaning (e.g. Adidas, Rolex, etc.)

Doctrine of Secondary Meaning

A word or phrase originally incapable of exclusive appropriation with reference to an article in the market (because it is geographically or otherwise descriptive) might nevertheless have been used for so long and so exclusively by one producer with reference to his article that, in the trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his property. (Dean v. Shoemart, G.R. No. 148222, 15 August 2003)⁶

Secondary meaning is established when a descriptive mark no longer causes the public to associate the goods with a particular place but to associate the goods with a particular source. (Shang Properties Realty Corporation v. St. Francis Development Corporation, G.R. No. 190706, 21 July 2014)⁷

Requirements for a Geographically descriptive Mark to Acquire Secondary Meaning

• The secondary meaning must have arisen as a result of substantial commercial use of a mark in the Philippines; and
• Such use must result in the distinctiveness of the mark insofar as the goods or the products are concerned.

NOTE: Proof of substantially exclusive and continuous commercial use in the Philippines for five (5) years before the date on which the claim of distinctiveness is made is prima facie evidence of distinctiveness. (Sec. 123.2, IP Code)⁸