Article 173p. 173

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

149.5. Assignments and transfers shall have no effect

against third parties until they are recorded at the Office.

(Sec. 31, R.A. No. 166a)

SECTION 150. License Contracts . — 150.1. Any license

contract concerning the registration of a mark, or an

application therefor, shall provide for effective control by

the licensor of the quality of the goods or services of the

licensee in connection with which the mark is used. If the

license contract does not provide for such quality control,

or if such quality control is not effectively carried out, the

license contract shall not be valid.

150.2. A license contract shall be submitted to the Office

which shall keep its contents confidential but shall record

it and publish a reference thereto. A license contract shall

have no effect against third parties until such recording is

effected. The Regulations shall fix the procedure for the

recording of the license contract. (n)

SECTION 151. Cancellation . — 151.1. A petition to cancel a

registration of a mark under this Act may be filed with

the Bureau of Legal Affairs by any person who believes

that he is or will be damaged by the registration of a

mark under this Act as follows:

(a) Within five (5) years from the date of the registration

of the mark under this Act.

(b) At any time, if the registered mark becomes the

generic name for the goods or services, or a portion

thereof, for which it is registered, or has been abandoned,

or its registration was obtained fraudulently or contrary to

the provisions of this Act, or if the registered mark is

being used by, or with the permission of, the registrant so

as to misrepresent the source of the goods or services on

or in connection with which the mark is used. If the

registered mark becomes the generic name for less than

all of the goods or services for which it is registered, a

petition to cancel the registration for only those goods or

services may be filed. A registered mark shall not be

deemed to be the generic name of goods or services

solely because such mark is also used as a name of or to

identify

a

unique

product

or

service.

The

primary

significance of the registered mark to the relevant public

rather than purchaser motivation shall be the test for

determining whether the registered mark has become

the

generic

name

of

goods

or

services

on

or

in

connection with which it has been used. (n)

(c) At any time, if the registered owner of the mark

without legitimate reason fails to use the mark within the

Philippines, or to cause it to be used in the Philippines by

virtue of a license during an uninterrupted period of three

(3) years or longer.

151.2. Notwithstanding the foregoing provisions, the court

or the administrative agency vested with jurisdiction to

hear and adjudicate any action to enforce the rights to a

registered mark shall likewise exercise jurisdiction to

determine whether the registration of said mark may be

cancelled in accordance with this Act. The filing of a suit

to enforce the registered mark with the proper court or

agency shall exclude any other court or agency from

assuming jurisdiction over a subsequently filed petition

to cancel the same mark. On the other hand, the earlier

filing of petition to cancel the mark with the Bureau of

Legal Affairs shall not constitute a prejudicial question

that must be resolved before an action to enforce the

rights to same registered mark may be decided. (Sec. 17,

R.A. No. 166a)

SECTION 152. Non-use of a Mark When Excused . — 152.1.

Non-use

of

a

mark

may

be

excused

if

caused by

circumstances arising independently of the will of the

trademark owner. Lack of funds shall not excuse non-use

of a mark.

152.2. The use of the mark in a form different from the

form in which it is registered, which does not alter its

distinctive character, shall not be ground for cancellation

or removal of the mark and shall not diminish the

protection granted to the mark.

152.3. The use of a mark in connection with one or more of

the goods or services belonging to the class in respect of

which the mark is registered shall prevent its cancellation

or removal in respect of all other goods or services of the

same class.

152.4. The use of a mark by a company related with the

registrant or applicant shall inure to the latter's benefit,

and such use shall not affect the validity of such mark or

of its registration: Provided , That such mark is not used in

such manner as to deceive the public. If use of a mark by

a person is controlled by the registrant or applicant with

respect to the nature and quality of the goods or services,

such use shall inure to the benefit of the registrant or

applicant. (n)

SECTION 153. Requirements of Petition ; Notice and

Hearing .

—

Insofar

as

applicable,

the

petition

for

cancellation shall be in the same form as that provided in

Section 134 hereof, and notice and hearing shall be as

provided in Section 135 hereof.

SECTION 154. Cancellation of Registration . — If the

Bureau of Legal Affairs finds that a case for cancellation

has been made out, it shall order the cancellation of the

registration. When the order or judgment becomes final,

any

right

conferred

by

such

registration

upon

the

registrant

or

any

person

in

interest of record shall

terminate. Notice of cancellation shall be published in the

IPO Gazette. (Sec. 19, R.A. No. 166a)

SECTION 155. Remedies ; Infringement . — Any person

who shall, without the consent of the owner of the

registered mark:

155.1. Use in commerce any reproduction, counterfeit,

copy, or colorable imitation of a registered mark or the

same

container

or

a

dominant

feature

thereof

in

connection with the sale, offering for sale, distribution,

advertising of any goods or services including other

preparatory steps necessary to carry out the sale of any

goods or services on or in connection with which such

use is likely to cause confusion, or to cause mistake, or to

deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a

registered mark or a dominant feature thereof and apply

such

reproduction,

counterfeit,

copy

or

colorable

imitation to labels, signs, prints, packages, wrappers,

receptacles or advertisements intended to be used in

commerce upon or in connection with the sale, offering

for sale, distribution, or advertising of goods or services on

or in connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive, shall be

liable in a civil action for infringement by the registrant

for the remedies hereinafter set forth: Provided , That the

infringement takes place at the moment any of the acts

stated

in

Subsection

155.1

or

this

subsection

are

committed regardless of whether there is actual sale of

goods or services using the infringing material. (Sec. 22,

R.A. No. 166a)

SECTION 156. Actions , and Damages and Injunction for

Infringement . — 156.1. The owner of a registered mark

may recover damages from any person who infringes his

rights, and the measure of the damages suffered shall be

either the reasonable profit which the complaining party

would have made, had the defendant not infringed his

rights, or the profit which the defendant actually made

out of the infringement, or in the event such measure of

damages cannot be readily ascertained with reasonable

certainty, then the court may award as damages a

reasonable percentage based upon the amount of gross

sales of the defendant or the value of the services in

connection with which the mark or trade name was used

in the infringement of the rights of the complaining

party. (Sec. 23, first par., R.A. No. 166a)

156.2. On application of the complainant, the court may

impound

during

the

pendency

of

the action, sales

invoices and other documents evidencing sales. (n)

156.3. In cases where actual intent to mislead the public or

to defraud the complainant is shown, in the discretion of

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