Protecting Well-known Marks

Protecting Well-known Marks

01-02-2012

Ignacio S. Sapalo

The law on well-known marks in the Philippines is found in Sections 123.1 (e) and (f) of the Republic Act 8293, the intellectual property code of the Philippines, which came into force on January 1, 1998.

The Law

The law on well-known marks in the Philippines is found in Sections 123.1 (e) and (f) of the Republic Act 8293, the intellectual property code of the Philippines, which came into force on January 1, 1998. Section 123.1 (e) reads as follows:

“Sec. 123. Registrability 123.1 A mark cannot be registered if it: (e) Is identical with, or confusingly similar to, or constitutes a translation of, a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services.

“In determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark.”

At present, our IP Office (IPO) is undertaking a project, in coordination with private-sector organisations, to strengthen the protection of IP in the Philippines. One of these, which was assigned to the IP Foundation, relates to well-known marks. The IP Foundation’s position paper is summarized below.

Proposed Amendments

Since the Republic Act 8293 took effect on January 1, 1998, its basic principles, which are in conformity with Article 6 of the Paris Convention and Article 16 of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, have been widely accepted.

Many lawyers, however, have complained about the lack of coherence and consistency in the application of the law by the IPO’s Bureau of Legal Affairs. For brevity, this article deals only with its rulings involving the requirement of knowledge of the relevant sector in the Philippines through the promotion of the mark.

In Advance Magazine Publishers, Inc v Ramon Ong, it was declared that the mark GQ is not wellknown. The opposition didn’t demonstrate market share in the Philippines, nor present any evidence to indicate the volume of sales or subscriptions of the magazine in the Philippines.

In United States Polo Association v Meryll Lyn Y. Dy the only evidence the opposition provided consisted of the registrations abroad of its mark Polo Force, a summary listing of a global licensing structure and printouts of its Internet website www.us-polo.org on the history of the organisation in the US. The bureau refused to declare Polo Force as a well-known mark.

“THE SETTING UP OF A WELL-KNOWN MARK REGISTRY IS NOT BEING CONSIDERED BECAUSE WHETHER A MARK IS WELLKNOWN IS DICTATED BY MARKET FORCES, WHICH ARE IN CONSTANT FLUX.”

On the other hand, the bureau issued a contradictory ruling in Sehwani v In-N-Out Burger Inc. Our Supreme Court affirmed the finding of the bureau that In-N-Out Burger and Arrow Design is internationally wellknown on the basis of “registrations in various countries around the world and its comprehensive advertisements therein”, notwithstanding that no In-N-Out Burger restaurant was established in the Philippines. In-N-Out submitted articles from magazines, newspapers and print-outs of its Internet website, as well as videotapes of famous celebrities mentioning In-N-Out as evidence.

To remove any doubt, resulting from the In-N-Out doctrine, about the intention of the legislator mandating knowledge of the relevant sector in the Philippines in determining whether a mark is well-known, the IPF proposes to amend Sec. 123 (e), by way of inserting “widely recognised” between “well-known internationally” and “in the Philippines”.

Other amendments being considered are as follows:

• To ensure compliance with the constitutional requirement on due process, a requirement that the determination whether a mark is wellknown be done by the competent authority in adversarial proceedings.
• To extend protection of well-known marks to cases of dilution by blurring or tarnishment.
• To adopt the criteria set by the 1999 Joint Recommendation of WIPO and the Paris Union on what the relevant sector of the public includes.

The setting up of a well-known mark registry is not being considered because whether a mark is well-known is dictated by market forces, which are in constant flux. As such, it would likely create more problems than it solved.

 

Ignacio S. Sapalo is the managing partner of Sapalo Velez Bundang & Bulilan. He can be contacted at: info@sapalovelez.com