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. 

Can copyright subsist in a useful article?

Since copyright subsists from the moment of creation without any formality requirement, it is easy for someone to claim copyright ownership over an object with artistic features. 
 
In the case of Sison Olaño, et al. vs. Lim Eng Co, G.R. No. 195835, the Supreme Court explained that a hatch door is not an artistic work within the meaning of copyright laws, but is intrinsically a useful article, which, as a whole, is not eligible for copyright.  The only instance when a useful article may be the subject of copyright protection is when it incorporates a design element that is physically or conceptually separable from the underlying product.  
 
To illustrate, a belt, being an object utility with the function of preventing one’s pants from falling down, is in itself not copyrightable but an ornately designed belt buckle which is irrelevant to or did not enhance the belt’s function hence, conceptually separable from the belt, is eligible for copyright as sculptural work with independent aesthetic value, and not as an integral element of the belt’s functionality.  In the same manner, a table lamp, being a functional object intended to provide illumination in a room, is not copyrightable.  The general shape of a table lamp is not copyrightable because it contributes to the lamp’s ability to illuminate the reaches of a room.  However, a lamp base in the form of a statue of male and female dancing figures of semi vitro us china is copyrightable as a work of art because it is unrelated to the lamp’s utilitarian function as a device to combat darkness.  

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. 

Anti-Dummy Law Update

An alien cannot be elected as president/chairman or officer of a corporation that is engaged in a nationalised activity pursuant to the Anti-Dummy Law. This rule has been reiterated by the SEC in Opinion No. 16-02. The Anti-Dummy Law, however, allows an alien to be elected as director in proportion to his allowable participation or share in the corporation’s capital. 

SEC Reportorial Requirements

Petitions to set aside revocation orders pursuant to failure to comply with reportorial requirements may now be filed anytime subject to compliance with MC No. 5-2016. Thus, if you have a company that had its registration revoked because of failure to submit reportorial requirements  (e.g., general information sheet, audited financial statements, etc.), and the deadline to file the petition to revoke the order has lapsed, you may still proceed to do so. 

Online Gambling Update

The newly elected President of the Philippines has announced a crackdown on online gambling facilities. It appears from the statements made that the new President is against gambling in general. This policy may affect the Philippine gaming industry. 

Retail Trade Update

Sales to the general public, through a single outlet owned by a manufacturer of products manufactured, processed or assembled in the Philippines, irrespective of capitalisation is not considered as retail, pursuant to Section 3(d) of the Retail Trade law and Section 2(d) of its Implementing Rules and Regulations. Please refer to SEC Opinion No. 16-03. 

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. 

Implementing Regulations of the Competition Act

The Philippine Competition Commission issued recently issued the rules and regulations to implement Republic Act No. 10667, or the Philippine Competition Act. The regulations came into force on June 18, 2016 after being published on JUne 3, 2018. A copy of the regulations may be downloaded here.

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