Patents and trademarks are both intellectual properties, for sure, but the two cannot be interchanged. Interestingly, a recent article from a reputable local daily reported about a certain popular festival’s logo being patented with the Intellectual Property Office (IPO). It warned individuals and entities from using said “patented logo” in their respective businesses to ride with the popularity of the merrymakings without the owners’ permission. It even went on citing Section 71 of the Intellectual Property Code (“the Code”), enumerating the rights of owners of patents.
True enough, Section 71 enumerates the rights of owners of patents, period. But a patented logo? There is no such thing.
The IPO would not have registered the same as a patent if it applied for one. What the article should have referred to was a trademark – and not a patent – registration. Section 121.1 of the Code defines a “mark” as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise.”
Meanwhile, Section 21 of the Code explicitly reserves patents for “any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable… It may be, or may relate to, a product, a process, or an improvement of any of the foregoing.”
The prominent festival’s logo is used for promoting the event or branding, and is in no way an invention per se. Simply put: branding indicia gets registered as a trademark, not as a patent.
The Supreme Court recently upheld the constitutionality of SEC Memorandum Circular No. 8, Series of 2013. The salient points of said Memorandum Circular are as follows:
a. The covered corporations are those involved in areas of activities or enterprises specifically reserved, wholly or partly, to Philippine Nationals by the Constitution, the Foreign Investments Act, and other existing laws.
b. All covered corporations shall, at all times, observe the constitutional or statutory ownership requirement.
c. The required percentage of Filipino ownership must be met in both (a) the total number of outstanding shares of stock entitled to vote in the election of directors, and (b) the total number of outstanding shares of stock, whether or not entitled to vote in the election of directors.
d. Corporate Secretaries of covered corporations are directed to monitor and observe compliance thereto. The Corporate Secretary may not delegate this responsibility without an express authority from the Board of Directors or Trustees.
e. Failure to comply will be punished with the administrative sanctions provided in Section 14 of the Foreign Investments Act as amended, summarized below:
Fine of ½ of 1% of the paid-in capital, but not more than Php5,000,000.00
President / officials responsible
Fine not exceeding Php200,000.00
Any person, firm, or juridical entity
Forfeiture of all benefits granted under the Foreign Investments Act as amended
The Firm welcomes the addition of Atty. Kathleen May O. Clareza as among its associates. Prior to joining BCCS Law, Atty. Clareza was a Special Investigator III of the Legal Department of the Food and Drug Administration (FDA). As part of the legal team of the FDA, her responsibilities included, among others, the enforcement of the rules and regulations of the said agency. Being a member of the legal team, likewise, exposed her to the different centers of FDA. Her previous stint with the FDA boosts the FDA practice of the Firm. The Firm’s FDA practice has been thriving in recent years and the intimate knowledge of Atty. Clareza of relevant FDA rules and regulations will be instrumental to the Firm’s FDA related advice and services.
The Intellectual Property Office of the Philippines (IPOPHL) has removed the entire section on discounts extended to online filings of applications in its new schedule of fees that will take effect on 1 January 2017. Informal inquiries with officers of the IPOPHL revealed that the section was purposely deleted as it is the intention of IPOPHL to no longer extend such discount. Thus, online filings of applications will be assessed the same application fee as manual filings made before the IPOPHL.
In Asahi Electrical Manufacturing Corp. vs. Reginald Joseph O. Chua, the Bureau of Legal Affairs (BLA) cancelled Chua’s certificate of industrial design. Among the grounds cited by the Bureau of Legal Affairs (BLA) in cancelling the registration was the fact that the design was dictated by technical or functional considerations. Section 113.2 of the Intellectual Property Code provides that industrial designs dictated by technical or functional considerations to obtain a technical result shall not be protected. Although not mentioned by the BLA in its decision, the title itself of the registration betrays it – An AERODYNAMIC Fan Blade. Chua shot himself in the foot when he called the fan blade AERODYNAMIC.
Café de Coral Assets Ltd. (CDC) opposed the application of Albertito Guerero for “The Old Spaghetti House” based on the former’s “The Spaghetti House” trademark registration worldwide including the Philippines. While CDC was able to show that it had a prior registration in the Philippines, CDC and its predecessor-in-interest were actually not able to use the mark in the Philippines. CDC filed an affidavit of non-use on the basis that it is still looking for a suitable franchisee in the Philippines. The Bureau of Legal Affairs (BLA), however, considered this excuse to be unacceptable. Mr. Guerrero was thus able to show that he was the first one to have used “The Old Spaghetti House” mark in the Philippines, and was in fact the “OLDER” Spaghetti House. The decision of the BLA may be accessed here.
The Philippine Trademark Office is in the process of drafting amendments to the Intellectual Property Code of the Philippines. Our Firm’s partner, Joseph Sarmiento, is working closely with the International Trademarks Association (INTA) through his INTA Committee to implement much needed changes to make Philippine trademarks practices in tune with the times.
Among the amendments that will be proposed is the deletion of the requirement that an application that claims priority from a foreign registration should be registered in the country of origin first. This has been the bane of foreign applicants as this requirement is an unusual requirement that does not conform with the Paris Convention. Further, as Philippine trademark applications are now examined with relative dispatch (within a month or 2 from filing), a trademark application that claims priority from a foreign application is at a disadvantage as it will have to wait for the priority application to mature to registration first (which can take years in some countries).
Betita Cabilao Casuela Sarmiento
Suite 1104, Page One Building
1215 Acacia Avenue
Madrigal Business Park, Ayala Alabang
Muntinlupa City 1780
Metro Manila, Philippines
Tel No. +63 2 8555 1750