Title
Trade-Mark and Trade-Name Protection Act
Law
Act No. 666
Decision Date
Mar 6, 1903
The Philippine Jurisprudence case explores the definition, recognition, and protection of property in trade-marks and trade-names, including the prohibition of unfair competition and the establishment of the Bureau of Patents, Copyrights, and Trade-Marks as the governing authority.

Law Summary

Appropriation and Use of Trade-Marks

  • Any person producing or dealing in merchandise can appropriate an unclaimed trade-mark through actual use in trade.
  • Designations solely related to the name, quality, description of the merchandise, or geographic origin cannot be trade-marks.

Recognition and Protection of Trade-Marks as Property Rights

  • Ownership or possession of a trade-mark is recognized as a property right.
  • Civil remedies include recovery of damages reflecting either the reasonable profits lost or the defendant's profits.
  • Damages may be doubled if there is proven intent to deceive or defraud.
  • Preliminary and perpetual injunctions may be granted to protect the trade-mark owner.

Registration Not a Prerequisite for Protection

  • Proof of prior use and public recognition suffices for protection, regardless of registration under previous or current laws.
  • Registration is not required to establish rights to a trade-mark.

Definition and Protection of Trade-Names

  • Trade-names serve to distinguish a business, profession, trade, or occupation from others.
  • Use in advertisements, business signs, or letterheads suffices; appearance on goods is not required.
  • Trade-names enjoy the same protection and remedies as trade-marks.

Penal Provisions Against Fraudulent Use

  • Using another's trade-mark or trade-name with intent to defraud incurs fines up to $2,500, imprisonment up to three years, or both.
  • Those who reproduce or aid in fraudulent use face fines up to $1,000 or imprisonment up to eighteen months.

Unfair Competition and Its Legal Consequences

  • It covers deceptive conduct such as making goods appear as those of another manufacturer or dealer.
  • Liability arises when such conduct is intentional and likely to mislead purchasers.
  • Civil damages and injunctions apply parallel to those for trade-mark violations, with possible doubling of damages.

Criminal Liability for Unfair Competition

  • Convictions may result in fines up to $2,000, imprisonment up to two years, or both.

Exclusions from Suit

  • No action lies if the trade-mark or trade-name violation occurs in unlawful businesses or involves deception by the complaining party.

Assignment and Use of Trade-Marks and Trade-Names

  • Assignees of original owners may lawfully use and receive protection if assignment is properly demonstrated.

Registration Procedure and Requirements

  • Owners domiciled in the Philippines, the US, or treaty countries can register marks by filing detailed statements and paying a fee of $25.
  • Statements must include identity, class of goods or business, description, mode of use, and duration of use.
  • Registration excludes marks that are descriptive, geographical, identical or confusingly similar to existing registered marks.

Verification and Registration Formalities

  • Applications require a verified declaration asserting rightful ownership and uniqueness.
  • Receipt of application is recorded, and the registration's lawfulness is presumpatively decided by the Bureau Chief.

Legal Effect of Registration Certificates

  • Certificates under former Spanish sovereignty provide conclusive evidence of exclusive rights.
  • Certificates issued under this Act are prima facie evidence only.
  • Certificates are valid for 30 years, with renewal possible within six months before expiration.
  • Shorter protection periods apply for foreign trademarks recognized under foreign laws.

Credit for Previous Fees and Fraudulent Registrations

  • Applicants receive credit for prior fees paid for the same mark.
  • Fraudulent procurement of registry results in civil liability for damages and criminal penalties of up to $1,000 fine or one year and one day imprisonment.

Regulatory Authority and Foreign Registration

  • The Bureau Chief may issue rules regarding transfers and registration procedures.
  • Citizens seeking foreign protection may register locally to meet foreign requirements.

Administrative Provisions and Repeal

  • Duties regarding patents, copyrights, and trade-marks are assigned to the Chief of the Bureau of Forestry.
  • The Spanish Royal Decree of 1888 on trade-mark registration is repealed.

Effectivity

  • The Act takes effect upon its passage on March 6, 1903.

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