CHAPTER 3

Trade-marks and Trade-names

Article 520. A trade-mark or trade-name duly registered in the proper government bureau or office is owned by and
pertains to the person, corporation, or firm registering the same, subject to the provisions of special laws. (n)

Article 521. The goodwill of a business is property, and may be transferred together with the right to use the name
under which the business is conducted. (n)

Article 522. Trade-marks and trade-names are governed by special laws. (n)

TITLE II
Intellectual Creation

Article 721. By intellectual creation, the following persons acquire ownership:

(1) The author with regard to his literary, dramatic, historical, legal, philosophical, scientific or other work;

(2) The composer; as to his musical composition;

(3) The painter, sculptor, or other artist, with respect to the product of his art;

(4) The scientist or technologist or any other person with regard to his discovery or invention. (n)

Article 722. The author and the composer, mentioned in Nos. 1 and 2 of the preceding article, shall have the
ownership of their creations even before the publication of the same. Once their works are published, their rights are
governed by the Copyright laws.

The painter, sculptor or other artist shall have dominion over the product of his art even before it is copyrighted.

The scientist or technologist has the ownership of his discovery or invention even before it is patented. (n)

Article 723. Letters and other private communications in writing are owned by the person to whom they are
addressed and delivered, but they cannot be published or disseminated without the consent of the writer or his heirs.
However, the court may authorize their publication or dissemination if the public good or the interest of justice so
requires. (n)

Article 724. Special laws govern copyright and patent. (429a)

Article 712. Ownership is acquired by occupation and by intellectual creation.

Ownership and other real rights over property are acquired and transmitted by law, by donation, by testate and
intestate succession, and in consequence of certain contracts, by tradition.

They may also be acquired by means of prescription. (609a)

1987 Constitution (Article XIV, Section 13; Article XII, Section 6)

Section 13. The State shall protect and secure the exclusive rights of scientists, inventors, artists,
and other gifted citizens to their intellectual property and creations, particularly when beneficial
to the people, for such period as may be provided by law.

LAW ON TRADEMARKS, TRADENAMES AND SERVICE MARKS

A. WHAT ARE PROTECTED; REQUIREMENTS FOR PROTECTION

1. DEFINITIONS OF MARK, COLECTIVE MARK, AND TRADE NAME (§121.1, 121.3,121.3)

PART III
THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES

Section 121. Definitions. - As used in Part III, the following terms have the following meanings:

121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or
services (service mark) of an enterprise and shall include a stamped or marked container of
goods; (Sec. 38, R.A. No. 166a)

121.2. "Collective mark" means any visible sign designated as such in the application for
registration and capable of distinguishing the origin or any other common characteristic,
including the quality of goods or services of different enterprises which use the sign under the
control of the registered owner of the collective mark; (Sec. 40, R.A. No. 166a)

121.3. "Trade name" means the name or designation identifying or distinguishing an enterprise;
(Sec. 38, R.A. No. 166a)

2. HOW PROTECTED

(a) HOW MARKS ARE ACQUIRED (§122)

Section 122. How Marks are Acquired. - The rights in a mark shall be acquired through
registration made validly in accordance with the provisions of this law. (Sec. 2-A, R A. No.
166a)
(b) FUNCTIONS OF TRADEMARKS

Modern authorities on trademark law view trademarks as performing three distinct functions:
(1) they indicate origin or ownership of the articles to which they are attached;
(2) they guarantee that those articles come up to a certain standard of quality; and
(3) they advertise the articles they symbolize. 14

Pribhdas Mirpuri vs. Court of Appeals (19 November 1999)

Modern authorities on trademark law view trademarks as performing three distinct functions: (1) they indicate origin or ownership of the
articles to which they are attached; (2) they guarantee that those articles come up to a certain standard of quality; and (3) they advertise the
articles they symbolize. 14

(c) CERTIFICATE OF REGISTRATION ASPRIMA FACIE EVIDENCE OF VALIDITYOF REGISTRATION

(§138) –

Section 138. Certificates of Registration. - A certificate of registration of a mark shall be prima

facie evidence of the validity of the registration, the registrant's ownership of the mark, and of
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. (Sec. 20, R.A. No. 165)

Philip Morris, Inc. vs. Fortune Tobacco Corporation, 493 SCRA 333, G.R. No. 158589 June 27, 2006

Rights of Foreign Corporations to Sue on the Basis of Their Certificate of Registration of Trademarks; Foreign
corporations may not successfully sue on the basis alone of their respective certificates of registration of
trademarks, for as a condition to availment of the rights and privileges vis-à-vis their trademarks in this country,
they ought to show proof that, on top of Philippine registration, their country grants substantially similar rights and
privileges to Filipino citizens pursuant to Section 21-A of R.A. No. 166.—Admittedly, the registration of a trademark
gives the registrant, such as petitioners, advantages denied non-registrants or ordinary users, like respondent. But
while petitioners enjoy the statutory presumptions arising from such registration, i.e., as to the validity of the
registration, ownership and the exclusive right to use the registered marks, they may not successfully sue on the
basis alone of their respective certificates of registration of trademarks. For, petitioners are still foreign
corporations. As such, they ought, as a condition to availment of the rights and privileges vis-à-vis their trademarks
in this country, to show proof that, on top of Philippine registration, their country grants substantially similar rights
and privileges to Filipino citizens pursuant to Section 21-A of R.A. No. 166. Philip Morris, Inc. vs. Fortune Tobacco
Corporation, 493 SCRA 333, G.R. No. 158589 June 27, 2006

B. PROTECTION OF TRADENAMES ORBUSINESS NAMES (§165)

 Shangri-la International HotelManagement Ltd. vs. DevelopersGroup of Companies, Inc., 31 March

2006

 Prosource International Inc. vs.Horphag Research Management SA(GR No. 180073,

November 25, 2009)

 Coffee Partners, Inc. vs. San FranciscoCoffee Roastery, Inc. (G.R. No. 169504,March
3, 2010)