Dear IBP,
Meron po kami business na kainan na namana ko pa po sa aking magulang. Ang nanay ko po ay si Aling Makmak at ang tatay ko ay si Donad. Kaya ang pangalang ng kainan namin ng fried chicken ay MakDonad. Madami po nag sasabi na dapat baguhin ko daw ang pangalan ng restaurant namin kasi bawal daw kung may malapit na kapangalan. Kaso po, mahigit sampong taon na po ang negosyo namin. Tama po ba sila na dapat ko nang baguhin, kahit hindi naman pareho talaga business name namin?
MakDonad
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Dear MakDonad,
I presumed you are the sole proprietor since according to your story, you inherited a “kainan” business from your parents. Since your problem is about business, just a reminder to make sure that the following steps have been taken into consideration. You have to register your business name at Department of Trade and Industry (DTI) , register your business with the Bureau of Internal Revenue (BIR), then at your Barangay and then at the Mayor’s Office.
Since what worries you is your business name, MakDonad, then your problem concerns about Trademark Registration in the Philippines. A trademark is the core of your business since it represents the goodwill and reputation of your products and services. For this reason, it is necessary that trademarks be protected. You have to register your trademark . You may file and pay for your application online at https://ipophil.gov.ph or you may personally file it at the Philippine Intellectual Property Office (IPO) at #28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City. Remember, a business owner with a trademark has the exclusive right to make use of his mark, and prevent others from using the same or similar marks, on identical or related goods or services. A trademark registration is in force for 10 years but, to maintain it, the DECLARATION OF ACTUAL USE of the mark, with accompanying evidence of its use must be filed with the Intellectual Property Office of the Philippines .
Also, the applicable Law is Republic Act No. 8293 [An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for Its Powers and Functions, and for Other Purposes] otherwise known as the Intellectual Property Code of the Philippines. Also, the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases (A.M. No. 10-3-10-SC) promulgated by the Supreme Court of the Philippines (SC) took effect on November 16 2020. The object of the revised rules is to improve and expedite IP cases recognising that an effective IP system is vital to the development of domestic and creative activity, facilitating transfer of technology, attracting foreign investments and ensuring market access to Philippine products. The Rules of Procedure for Intellectual Property Rights Cases instructs that “[i]n 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 the case of LEVI STRAUSS & CO., VS. ANTONIO SEVILLA AND ANTONIO L. GUEVARRA [ G.R. No. 219744, March 01, 2021 ], it was stated that jurisprudence has developed two (2) tests to aid the Court in ascertaining the existence of similarity and likelihood of confusion, namely, the Dominancy Test, and the Holistic or Totality Test. In Dy v. CA, the Court differentiated these tests as follows: On one hand, the dominancy test focuses on “the similarity of the prevalent or dominant features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public. Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. On the other hand, the holistic or totality test necessitates a “consideration of the entirety of the marks as applied to the products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words, but also on the other features appearing on both labels so that the observer may draw conclusion on whether one is confusingly similar to the other.” It concluded that respondents’ stylized LIVE’S mark under Trademark Registration No. 53918 is confusingly similar with petitioner’s “LEVI’S” marks; and hence, must be ordered cancelled.
The Trademark case of LEVI’S and LIVE’S will apply in your business. Since you mentioned MakDonad, the business McDonald’s came to my mind. Things to be considered are whether or not the general public can mistake your MakDonad mark for that of McDonald’s just like in the case of LEVI’S and LIVE’S. Is MakDonad confusingly similar with “McDonald’s” mark,or are the marks sufficiently distinguishable from each in spelling and pronunciation, fonts, color or style? Remember, that even if MakDonad mark had long been in use by your parents, your rights over the mark could still be challenged. It is best that you undergo the required trademark registration process. But do not lose hope. According to Ingrid Bergman, “Be yourself. The world worships the original.”
