Trademark registration is an important step for businesses and individuals looking to protect their brands and intellectual property. In the Philippines, the law on trademarks is primarily governed by the Intellectual Property Code (IPC), which provides the legal framework for the registration, protection, and enforcement of trademarks.
The IPC sets out both absolute and relative grounds for the refusal of trademark registration. Absolute grounds for refusal include marks that are generic, descriptive, or contrary to public policy or morality. Relative grounds for refusal, on the other hand, involve the likelihood of confusion with a prior registered mark or a well-known mark.
In this blog post, we will explore the absolute and relative grounds for the refusal of trademark registration in the Philippines and provide examples and case law to illustrate these concepts. We will also offer tips for increasing your chances of success in trademark registration, including conducting a comprehensive trademark search, ensuring your mark meets the criteria for distinctiveness, using your mark in commerce, filing the application promptly, and working with an experienced trademark attorney.
Finally, we will discuss the importance of protecting your brand and intellectual property in the Philippines and how partnering with an experienced IP law firm like Brealant can help you navigate the complex legal requirements and achieve your trademark registration goals.
Absolute Grounds for Refusal of Trademark Registration
In the Philippines, trademark registration can be refused on the basis of absolute grounds. These grounds refer to characteristics of the mark itself that make it unsuitable for registration, regardless of whether there is any likelihood of confusion with existing trademarks. Let’s take a closer look at some of the most common absolute grounds for refusal of trademark registration in the Philippines.
- Generic or Descriptive Marks
A trademark is considered generic when it is commonly used as the name for a particular type of product or service. For example, the word “apple” cannot be registered as a trademark for apples, as it is a generic term. Similarly, descriptive trademarks, which merely describe the product or service offered, are also not eligible for registration. For instance, “Sunny” cannot be registered as a trademark for sunglasses.
In the case of Wyeth vs. Director of Patents, the Supreme Court ruled that the trademark “Easymix” for powdered milk formula could not be registered because it is a mere descriptive term for the product. The court found that the word “Easymix” merely described the convenience and ease of use of the product and did not serve as a distinct identifier of the brand.
- Lack of Distinctiveness
A trademark must be distinctive to be eligible for registration. A distinctive trademark is one that is capable of identifying the source of the goods or services offered and distinguishing them from those of other businesses. For example, the Nike “swoosh” logo is a distinctive trademark because it is unique and easily recognizable.
On the other hand, marks that are too common, simple, or generic lack distinctiveness and may not be registered. In the case of Nestle vs. Court of Appeals, the Supreme Court held that the mark “FLAVORWAVE” for instant coffee was not distinctive enough to be registered because it was merely a combination of two generic terms that described the product.
- Scandalous or Contrary to Law or Morality
Trademarks that are scandalous or contrary to law or morality are also not eligible for registration. Such marks include those that are offensive, vulgar, or discriminatory. For example, a trademark that uses racial slurs or promotes illegal activities would not be allowed.
In the case of McDonald’s Corporation vs. L.C. Big Mak Burger, Inc., the Supreme Court held that the use of the mark “Big Mak” by a local fast-food chain was likely to cause confusion with the trademark “Big Mac” of McDonald’s. However, the court also found that the use of the mark “Big Mak” by the local chain was scandalous because it was an obvious play on the McDonald’s mark, which was registered and well-known in the Philippines.
Understanding these absolute grounds for refusal is crucial when applying for trademark registration in the Philippines. By ensuring that your mark is distinctive and not generic or descriptive, you can increase your chances of success.
Relative Grounds for Refusal of Trademark Registration
In the Philippines, trademark registration can also be refused on the basis of relative grounds. These grounds refer to the likelihood of confusion between the proposed mark and existing registered or pending trademarks. Let’s take a closer look at some of the most common relative grounds for refusal of trademark registration in the Philippines.
- Likelihood of Confusion with Similar Marks
A trademark that is likely to cause confusion with a similar mark that is already registered or pending may be refused registration. The test for the likelihood of confusion is whether the marks are similar enough that consumers are likely to be confused or misled into believing that the goods or services associated with the two marks are from the same source.
For example, the trademark “KODAK” for cameras and photographic equipment is well-known and registered in the Philippines. If a new company were to apply to register the mark “KODAKA” for similar goods, it would likely be refused registration because the marks are too similar and likely to cause confusion among consumers.
- Similarity in Sound, Appearance, or Meaning
In addition to similarity in spelling, trademarks that are similar in sound, appearance, or meaning may also be refused registration. For example, the trademark “McDONALD’S” for fast food is a well-known and registered mark in the Philippines. If a new company were to apply to register the mark “McDONNELL’S” for a similar type of business, it would likely be refused registration because the marks are too similar in sound and appearance.
- Prior Pending Application or Registration
Finally, if there is a prior pending application or registration for a similar mark, a new application for a similar mark may be refused registration. This is to prevent confusion between marks that are similar but not identical.
For example, if a company has a pending application for the mark “STARBUCKS COFFEE” for coffee and related goods, a new application for the mark “STARBUCKS CAFÉ” for similar goods may be refused registration because it is too similar to the prior pending application.
Understanding these relative grounds for refusal is important when applying for trademark registration in the Philippines. Conducting a comprehensive trademark search before filing an application can help identify potential conflicts and avoid refusal on relative grounds.
Tips for Increasing Your Chances of Success in Trademark Registration
Securing trademark registration is an important step in protecting your brand and business. However, the registration process can be complex and time-consuming, and it’s not uncommon for applications to be rejected. Here are some tips to increase your chances of success in trademark registration in the Philippines: