Internationally Well-Known Marks

According to Section 3 of the Intellectual Property Code, any person who is a national or who is domiciled or has a real and effective interest in a country which is a party to any convention, treaty or agreement to which the Philippines is also a party or complies with the principle of reciprocity, are entitled to the same and even more benefits than those granted to Filipinos in the Intellectual Property Code. By implementing the TRIPS Agreement, owners of internationally well-known marks may prevent the use of their trademarks on goods or services which are similar and dissimilar to those in respect of which a trademark is registered. Thus, in the Philippines, if a mark is considered by the appropriate authorities to be an internationally well-known mark, Filipinos are prevented from using the same, similar or colorable imitation of such mark in related, non-related, competing and non-competing goods.

I believe that such is unfair to Filipinos. In the Philippines, the ultimate test of trademark infringement is the likelihood of confusion to the buying public. Furthermore, a person is prevented from registering a trademark which is confusingly similar to the trademark of a prior user or registrant. Such limitations apply only to related and competing goods as well as goods which flow through the same channels of trade. However, when it comes to internationally well-known marks, Filipinos are prevented from registering or are liable for trademark infringement even when their trademark is used on non-related and non-competing goods and on goods which do not flow on the same channels of trade. It would seem that the Intellectual Property Code grants a much wider protection to internationally-well known marks than to marks of Filipinos.

Although I agree that internationally well-known marks should be granted broad protection due to extensive advertising and promotion, such protection should be at par to the protection granted to Filipinos. Filipinos should be prevented from using internationally well-known marks only on related and competing goods and goods which flow through the same channels of trade. If there exists no likelihood of confusion to the buying public as a result of a Filipinos’ use of a mark similar to an internationally well-known mark, then there should be no trademark infringement and such Filipino should be allowed to register such mark.