Well-known Marks: Going Beyond Borders

November 13, 2012
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What do Facebook and Botox have in common?  Well, both marks have been declared as well-known marks internationally and in the Philippines.

The Intellectual Property Office of the Philippines, through the Bureau of Legal Affairs and the Office of the Director General, have the mandate, based on the “use” and the “well-knownness” of the mark, to declare deserving well-known marks upon meticulously considering the “knowledge of the relevant sector of the public as to the goods or services bearing the mark, rather than the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark.” [Intellectual Property Code of the Philippines, R.A. 8293, Sec. 123.1 (e)].  Also, Rule 102 of the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers states of the criteria in determining a well-known mark, such as, the duration, extent, and geographical use of the mark, extent of promotion of the mark, the successful registrations in various jurisdictions, and among other indicative factors.

One significant benefit that an owner of the well-known mark enjoys is the possession of a legal personality to oppose an application of a mark or to seek cancellation of a registration of a mark in the Philippines, which mark represents similar as well as unrelated goods or services, even without undergoing a Registration process in our Registry.

Does this mean that foreign marks are given special treatment by the Philippine Registry?  No, not at all.  It is true that the Registration for Intellectual Property Rights Protection is jurisdictional.  Hence, as a rule, a trademark or a service mark of a business enterprise which is not registered in the Philippines will not be protected under our law from any attempt of other individuals or entities to register and use the mark.  However, as an exception to this rule, owners of well-known marks enjoy the privilege the law provides because the Philippines, being a signatory of the Paris Convention for the Protection of Industrial Property and that of the World Trade Organization-Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, bears the responsibility to prove faithful to the covenants it has entered into with the rest of the Member-States.  As an overview, the Paris Convention pertains to the prevention of applicants whose marks represent the goods or services similar to the well-known marks. Hence, the mark “FACEBOOK.ASIA” is denied registration in the Philippines because it is confusingly similar to the well-known mark “FACEBOOK”. (Facebook Inc. vs. Lina Petalver Celino, Decision No.  2010-62, 29 July 2010).

On the other hand, the TRIPS Agreement broadens the protection for well-known marks such that owners of well-known marks are empowered to prohibit the use of their mark, although the mark applying for registration in the Philippines covers goods or services not similar to that which the prior registered well-known mark is being used and marketed.  In a case involving a well-known mark “ROLEX”, the Supreme Court sustains the decision of the trial court that although the trademark infringer uses the well-known mark “ROLEX” for its entertainment business, and obviously not similar to the class of watches, clocks, and bracelets for which the well-known mark “ROLEX” is registered, still, there is unauthorized appropriation and use of the mark “ROLEX”. (246 Corporation vs. Daway, G.R. No. 157216  November 20, 2003).   The law is cautious about the potential confusion as to the origin of the unrelated goods or services and of protecting the goodwill and the opportunity of the owner of the well-known mark for business expansion.

A word of caution to those contemplating to even slightly copy a well-known mark in order to identify your goods or services, regardless of its class – DON’T!  You will surely end up spending more money in a legal battle than to sweat it out and invest in true advertising.  It is essential to craft your own mark of uniqueness and style on your goods or services so as to attract the purchasing public.  This looks good on you and likewise, to your bottom line.  When carefully thought out and seriously utilized, a trademark or service mark can be your business’ most valuable asset.  For your local as well as international registrations, noting the Philippines’ accession to the Madrid Protocol, you may want to consider Philippines as your one-stop registration office and Triple i Consulting is just the right people to talk to.

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