“TRADEMARKS ARE TOOLS IN BUSINESS USED TO ASSOCIATE A VISUAL SIGN TO A PERCEIVED GOODWILL IN ORDER TO INFLUENCE CONSUMER PREFERENCES”
GN&P LAW’s TRADEMARK BROCHURE
*© 2005 by Atty. Greg Nunag
Why are trademarks essential in business?
As defined in many legal systems, trademarks (or service marks) are visual signs that distinguish the goods and services of a company from those of others. This primary function of trademarks, which is to distinguish products, serves both the businessmen and the general public by forestalling market confusion on the sources and the attributes of goods and services.
From the point of view of business, marks are used to associate products with certain favorable characteristics in order to build the products’ public image. A favorable public image is essential in achieving goodwill in the consumers’ minds which ultimately results to patronage.
On the other hand, from the consumers’ end, marks ensure that the goods and services patronized correspond to the products prefered. By consumer preference is meant the way consumers purchase goods or avail of services based on various economic, social and other factors.
In these regard, trademarks are tools to associate a visual sign to a perceived goodwill in order to influence consumer preference.
How are trademark rights acquired?
Trademark rights are acquired by filing trademark applications with the local jurisdiction. In some regions, systems for multi-jurisdictional application filing and prosecution are in place.
What cannot be acquired as trademarks?
No trademark rights can be acquired from:
(1) Pre-existing local trademarks
- Pre-existing local trademarks pertain to marks which are are identical to or are in near resemblance with locally registered trademarks or trademarks previously applied for registration in the local jurisdiction involving the same or closely related goods and services unless the applicant succeeds in an ownership dispute against the owner of the pre-existing mark based on first local commercial usage.
(2) Pre-existing foreign trademarks
- Pre-existing foreign trademarks pertain to marks which have been considered by any Philippine court or the Disputes Resolution Bureau of the Philippine Intellectual Property Office to be identical to, in near resemblance with or is a translation of an internationally well-known mark even when the same is not registered or has not been applied for registration in the Philippines unless when the applicant succeeds in an ownership dispute against the owner of the pre-existing mark based on first local commercial usage.
(2) Descriptive Marks
- Descriptive marks include words or phrases that are necessary to adequately describe a certain class of goods or services.
(3) Generic Marks
- Generic marks include words or phrases that specifically designate particular products.
(4) Deceptive Marks
- Descriptive marks include words or phrases that are likely to deceive, mislead or misinform the public as to the nature, quality, characteristics or origin of the goods or services or which tend to falsely suggest a connection with any living or dead person, entity or institution.
(5) Sovereign Marks
- Visual signs that represent the Philippine or any foreign sovereign including any of their agencies and political subdivisions such as their coats of arms or other national symbols.
(6) Disparaging Marks
- Visual signs which, in view of morality, decency or public policy are deemed to result to public contempt or ridicule.
What are the steps in obtaining Philippine trademarks?
The summary of stages in the prosecution of Philippine marks are:
(1) Application filing and formality examination.
(2) Substantive examination and responding to Office Actions (objections by the government).
(3) First government publication of the trademark to invite Oppositions (objections by private individuals and entities).
(4) Allowance of registration and second government publication of the trademark to give constructive notice of the registration.
(5) Issuance of the Registration Certificate.
(6) Compliance with continuing usage requirements:
(a) Sworn Declaration of Use (with proof) within three years from the application date; and,
(b) Sworn Declaration of Use (with proof) within five years from the registration date.
(6) Renewal of Registration through the submission of a Sworn Renewal Petition before the expiration of the mark’s ten-year lifespan.
What is the term of the Philippine registration?
Subject to the continuing usage requirements, Philippine trademarks exist for ten years from the registration date and may be renewed successively and infinitely for fresh ten-year periods.
What are the fees involved in the filing a trademark application in the Philippines?
Fees will differ among law firms but the costs for plain word marks without special claims will be in the in the vicinity of US$50 comprising the government filing fees and out-of-pocket expenses.
What are the fees involved in searching and reporting Philippine tra demarks?
There are no government fees to search Philippine trademarks. The government database of registered and pending marks is freely accessible to the public at Intellectual Property Website (www.ipophil.gov.ph). However, attorney opinions on the registrability of marks entail professional fees depending on the number of marks and classes involved. A difficulty premium may be added for logo marks which require manual search in the Intellectual Property Office library.
What are GN&P Law’s representation fees in prosecuting Philippine trademarks?
Here is a list of our representative professional fees:
TRADEMARK APPLICATION: US$350
(a) additional classes (US$50/class)
(b) claim of priority date (US$50/class)
(c) claim of colors (US$20/class)
(d) request for priority examination (US$200)
RESPONDING TO OFFICIAL ACTIONS: US200
REMITTING THE FIRST PUBLICATION FEE: US200
REMITTING THE SECOND PUBLICATION FEE: US200
REVIEWING AND TRANSMITTING THE CERTIFICATE: US200
SUBMISSION OF DECLARATIONS OF USE: US$350/mark/class
*Atty. Greg Nunag is the Managing Attorney of GN&P Law and may be contacted at email@example.com.