ALL ABOUT TRADEMARKS
By Atty. Nikko G. Lagmay
WHAT IS A TRADEMARK?
A trademark is any visible sign capable of distinguishing the goods or services of an enterprise. This could be a company logo, product or service logo, brand logo, or a slogan.
DOES THE DTI/SEC REGISTRATION PROTECT A TRADEMARK FROM COPYCATS AND FREE RIDERS?
No. As far as trademarks are concerned, protection is limited. DTI/SEC registration only allows the business owner to do business under the registered business name. Unless the mark is registered with the Intellectual Property Office (IPO), the mark is at risk of being infringed by imitators.
WHY SHOULD A BUSINESS OWNER REGISTER HIS TRADEMARK WITH THE INTELLECTUAL PROPERTY OFFICE (IPO)?
Valuable time, effort, and resources are invested by a business owner in developing the quality of his goods and/or services, as well as his company’s business image. If the trademark is not registered, anyone can take advantage of his company’s success and his hard work by offering similar products and/or services to the general public using his trademark. These free riders profit at the business owner’s expense. And what if the goods/services offered by these copycats are below par? The general public will be misled to believe that such goods or services actually originated from the owner’s company, in effect ruining his company’s reputation. Registering your trademark will avoid these situations. In addition:
1. The owner will have legal and exclusive right to use the trademark.
2. The owner can prohibit others from using his trademark or other marks identical or confusingly similar to said trademark.
3. In applying a trademark for registration with the IPO, the owner might discover that he is using a trademark similar to another registered mark. Thus, he can make the necessary modifications in his mark and avoid future law suits for infringement. A losing party in an infringement case may be forced to destroy his inventory and marketing materials, required to pay damages, and even get imprisoned.
4. Upon application, the trademark will be included in the IPO trademark database and will appear in its online search engine. Third persons will see the trademark once they verify. Thus, new applicants will avoid using a trademark that is identical or similar to that of the prior applicant.
5. Once the trademark application is duly filed, the IPO trademark examiner will refuse to register other marks identical or confusingly similar with the trademark first filed.
6. The owner of the trademark may file the appropriate Civil and Criminal actions against the infringer in court, and claim for damages.
7. A registered trademark shows that one is serious about his business and brands. This will attract patrons.
WHO IS PROTECTED, THE FIRST WHO USED THE TRADEMARK, OR THE FIRST WHO REGISTERED THE TRADEMARK?
In the Philippines, we follow the first-to-file system, not the first-to-use system. This means that even if a person or entity already used a trademark for several years, but said trademark is not registered with the IPO, a third person who registers an identical trademark under his name may obtain the exclusive right to use the trademark.
CAN ONE REGISTER A TRADEMARK WITHOUT THE ASSISTANCE OF A LAWYER?
Yes. A non-lawyer may register his trademark with the IPO on his own. There is no law requiring a person to seek the assistance of a lawyer or a trademark expert to register a trademark. However, the following are some of the advantages of having an expert to assist in registering your trademark:
1. The expert can conduct a comprehensive pre-application clearance search of a trademark (determination if it is identical or confusingly similar to another mark). The expert will also check if the mark may legally be registered under the law (if the mark is not immoral, misleading, generic, descriptive, etc.) Thus, one can determine from the beginning if a trademark may be registered and efforts won’t be wasted.
2. The registration process is quite complex and is technically a legal proceeding.
3. The trademark examiner will require the applicant to file an official answer to the examiner’s registrability reports. The official answers usually require the application and citation of pertinent laws, jurisprudence, and implementing rules.
WHAT ARE THE REQUIREMENTS IN THE INITIAL FILING A TRADEMARK WITH THE IPO?
The applicant must fill up an application form showing some personal details together with a copy of the trademark, file the same, and pay the necessary filing fees.
If you wish to register your trademark, we can assist you. You may contact the author at email@example.com. or any of our lawyers.
Trademark Intellectual Property Lawyer Greenhills