Intellectual Property Code with the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases

Section 1

A certificate of registration of a mark shall be prima facie evidence of: a) the validity of the registration; b) the registrant's ownership of the mark; and c) the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.

Section 2

Th following shall be accepted as proof of actual use of the mark: a) Labels of the mark as these are used; b) Downloaded pages from the website of the applicant or registrant clearly showing that the goods are being sold or the services are being rendered in the Philippines; c) Photographs, including digital photographs printed on ordinary paper, of goods bearing the marks as these are actually used or of the stamped or marked container of goods and of the establishment/s where the services are being rendered; d) Brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines; e) For online sale, receipts of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines or that the transaction took place in the Philippines; f) Copies of contracts for services showing the use of the mark. Computer printouts of the drawing or reproduction of marks will not be accepted as evidence of use; and g) Such other proofs that the court may deem acceptable.

Section 3

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. The following criteria or any combination thereof may be taken into account in determining whether a mark is well-known: a) the duration, extent and geographical area of any use of the mark; in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; b) the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies; c) the degree of the inherent or acquired distinction of the mark; d) the quality-image or reputation acquired by the mark; e) the extent to which the mark has been registered in the world; f) the exclusivity of registration attained by the mark in the world; g) the extent to which the mark has been used in the world; h) the exclusivity of use attained by the mark in the world; i) the commercial value attributed to the mark in the world; j) the record of successful protection of the rights in the mark; k) the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and l) the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his or her mark is a well-known mark. Provided, that the mark may be well-known, regardless of whether the mark is registered in the Philippines.

Section 4

Likelihood of confusion shall be presumed in case an identical sign or mark is used for identical goods or services.

Section 5

In determining whether one trademark is confusingly similar to or is a colorable imitation of another, the court must consider the general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade, and giving the attention such purchasers usually give in buying that class of goods. Visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace must be taken into account. Where there are both similarities and differences in the marks, these must be weighed against one another to determine which predominates. In determining likelihood of confusion between marks used on non-identical goods or services, several factors may be taken into account, such as, but not limited to: a) the strength of plaintiff's mark; b) the degree of similarity between the plaintiff's and the defendant's marks; c) the proximity of the products or services; d) the likelihood that the plaintiff will bridge the gap; e) evidence of actual confusion; f) the defendant's good faith in adopting the mark; g) the quality of defendant's product or service; and/or h) the sophistication of the buyers. "Colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, as to cause him or her to purchase the one supposing it to be the other. Absolute certainty of confusion or even actual confusion is not required to accord protection to trademarks already registered with the IPO.

Section 6

Goods or services may not be considered as being similar or dissimilar to each other on the ground that, in any registration or publication by the Office, they appear in same or different classes of the Nice Classification.

Section 7

In an action for unfair competition, intent to defraud or deceive the public shall be presumed: a) when the defendant passes off a product as theirs by using imitative devices, signs or marks on the general appearance of the goods, which misleads prospective purchasers into buying their merchandise under the impression that they are buying that of their competitors; b) when the defendant makes any false statement in the course of trade to discredit the goods and business of another; or c) where the similarity in the appearance of the goods as packed and offered for sale is so striking.

Section 8

A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The test for determining whether the mark is or has become the generic name of goods or services on or in connection with which it has been used shall be the primary significance of the mark to the relevant public rather than purchaser motivation.

Section 9

A market survey is a scientific market or consumer survey which a party may offer in evidence to prove (a) the primary significance of a mark to the relevant public, including its distinctiveness, its descriptive or generic status, its strength or well-known status and/or (b) likelihood of confusion.