Article 169p. 169

COMMERCIAL LAWS NEGOTIABLE INSTRUMENTS, CORPORATION, INSURANCE, TRANSPORTATION, BANKING

(ii) the right holder is not entitled to protection under this

Act; or

(iii)

where

the

application

for

registration

of

the

layout-design, was not filed within two (2) years from its

first commercial exploitation anywhere in the world.

Where the grounds for cancellation are established with

respect only to a part of the layout-design, only the

corresponding part of the registration shall be cancelled.

Any cancelled layout-design registration or part thereof,

shall be regarded as null and void from the beginning

and

may

be

expunged

from

the

records

of

the

Intellectual Property Office. Reference to all cancelled

layout-design registration shall be published in the IPO

Gazette.

(as amended by RA No 9150) (n)

PART III The Law on Trademarks, Service Marks

and Trade Names

SECTION 121. Definitions . — As used in Part III, the

following terms have the following meanings:

121.1.

"Mark"

means

any

visible

sign

capable

of

distinguishing the goods (trademark) or services (service

mark) of an enterprise and shall include a stamped or

marked container of goods; (Sec. 38, R.A. No. 166a)

121.2. "Collective mark" means any visible sign designated

as such in the application for registration and capable of

distinguishing

the

origin

or

any

other

common

characteristic, including the quality of goods or services of

different enterprises which use the sign under the control

of the registered owner of the collective mark; (Sec. 40,

R.A. No. 166a)

121.3. "Trade name" means the name or designation

identifying or distinguishing an enterprise; (Sec. 38, R.A.

No. 166a)

121.4. "Bureau" means the Bureau of Trademarks;

121.5. "Director" means the Director of Trademarks;

121.6.

"Regulations"

means

the

Rules

of

Practice

in

Trademarks and Service Marks formulated by the Director

of Trademarks and approved by the Director General; and

121.7. "Examiner" means the trademark examiner. (Sec. 38,

R.A. No. 166a)

SECTION 122. How Marks are Acquired . — The rights in a

mark shall be acquired through registration made validly

in accordance with the provisions of this law. (Sec. 2-A,

R.A. No. 166a)

SECTION 123. Registrability . — 123.1. A mark cannot be

registered if it:

(a) 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;

(b) 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;

(c) 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;

(d) Is identical with a registered mark belonging to a

different proprietor or a mark with an earlier filing or

priority date, in respect of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to

deceive or cause confusion;

(e)

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

well-known

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;

(f) 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;

(g) Is likely to mislead the public, particularly as to the

nature, quality, characteristics or geographical origin of

the goods or services;

(h) Consists exclusively of signs that are generic for the

goods or services that they seek to identify;

(i) 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;

(j) Consists exclusively of signs or of indications that may

serve in trade to designate the kind, quality, quantity,

intended purpose, value, geographical origin, time or

production of the goods or rendering of the services, or

other characteristics of the goods or services;

(k) 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;

(l) Consists of color alone, unless defined by a given form;

or

(m) Is contrary to public order or morality.

123.2.

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.

123.3. The nature of the goods to which the mark is

applied will not constitute an obstacle to registration.

(Sec. 4, R.A. No. 166a)

SECTION 124. Requirements of Application . — 124.1. The

application for the registration of the mark shall be in

Filipino or in English and shall contain the following:

(a) A request for registration;

(b) The name and address of the applicant;

(c) The name of a State of which the applicant is a

national or where he has domicile; and the name of a

State in which the applicant has a real and effective

industrial or commercial establishment, if any;

(d) Where the applicant is a juridical entity, the law under

which it is organized and existing;

(e) The appointment of an agent or representative, if the

applicant is not domiciled in the Philippines;

(f) Where the applicant claims the priority of an earlier

application, an indication of:

© Compiled by RGL

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