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Viva La Madrid

The Philippine Supreme Court dismissed the petition filed praying for the nullification of the Philippines’ accession to the Madrid Protocol. The Philippines acceded to the Madrid Protocol on 25 April 2012 by way of an executive agreement. This manner of accession was questioned on the basis that the Madrid Protocol is a treaty that requires ratification by the Philippine Senate. Foreign trademark proprietors may now breathe easy knowing that the Madrid Protocol is here to stay. A copy of the decision may be accessed here. 

May the real John Lloyd please stand up?

An applicant trying to appropriate the mark “JOHN LLOYD” was successfully opposed by John Lloyd Cruz himself. The Bureau of Legal Affairs rightfully sustained the opposition filed by the real John Lloyd as the mark consists of the name of a living individual. While the applicant did not include the family name “Cruz”, The BLA held that the prohibition of the law does not require that the full name be used. It is enough that the name used clearly refers to such individual. In this case, “JOHN LLOYD” identifies a specific living individual who is so well known that a connection between the applicant and the real John Lloyd would be assumed. 

To Chow Is To Eat

The Bureau of Legal Affairs of the Intellectual Property Office, in its Decision No. 2016-109, explained that although the word “CHOW” was originally considered as descriptive, the doctrine of secondary meaning applies as evidence shows that the CHOW mark has been used by and closely associated with Nestle for animal food in the Philippines. Hence, if some other party will appropriate the word “CHOW” for its marks covering animal food products, it is highly likely that consumers will be misled to believe that the goods came from the same source. 
 
As explained by The Supreme Court in the earlier case of Philippine Nut Industry, Inc. vs. Standard Brands Incorporated (G.R. No. L-23035), this doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market; might nevertheless have been used so long and so exclusively by one producer with reference to his article that in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.  This doctrine is found in Sec. 4 (f), Chapter II-A of the Trade-Mark Law and subsequently adopted in Section 123.2 of the IP Code of the Philippines. 

Advertising Services in Class 35

It has recently been the policy of the Intellectual Property Office (IPO) to issue office actions against trademark applications/registrations covering Class 35 clarifying whether the applicant or registrant is an advertising agency. The IPO has apparently taken the position that advertising in Class 35 is limited to advertising for others, such as an advertising agency. This sudden change in policy has resulted in the issuance of office actions even on existing registrations during the renewal process or when declarations of use are filed.  If one is not an advertising agency, the IPO will require the deletion of “advertising services” from the specification of services in Class 35. If you have similar issues, do not hesitate to contact us. 

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