Protecting Your Product Design

Did you recently create your own furniture, or accessories? Perhaps you handcrafted your own bags and shoes? If so, your creations are covered by industrial design, copyright, or trademark.

Industrial Design (or Design Patent)

A new and ornamental design may be registered as an industrial design.[1] Such registration entitles you to the exclusive use of the design for as long as fifteen years.[2] Industrial design registration can protect the designs of handicrafts, jewelries and computer components, among others.[3]

Patent or Utility Model 

Meanwhile, a design that pertains primarily to the functional aspect of a product, as opposed to being mere ornamentation, may be registered as an invention or a utility model. For example, a chair that is ergonomically designed to make long hours of sitting more comfortable may only be registered as an invention[4] or a utility model[5] even if its design also looks aesthetically pleasing. However, if the design serves as mere ornamentation (e.g., carvings or paintings on the chair’s legs) an industrial design registration is applicable.

Copyright Protection (Work of Applied Art)

A “work of applied art” is an artistic creation having utilitarian functions that are incorporated in a useful article.[6] Original ornamental designs or models for articles of manufacture, even if registrable as industrial designs, are entitled to copyright protection.[7] A useful article, however, may be copyrighted only to an extent where its pictorial, graphic, or sculptural features could be identified separately from its functional aspects. [8]

In 2019, the Taiwan IP Court ruled that Céline and Givenchy handbag designs are not copyrightable because they are primarily functional and they lack some required artistic features.[9] This is consistent with a past decision by our Supreme Court which recognized copyright protection only to works of applied art that have aesthetic features which are separable from its utilitarian aspects.[10]

Three-Dimensional Mark or Trade Dress

A product design may also be protected by a trademark. A mark is any visible sign capable of distinguishing products including a stamped or marked container of goods.[11] A sachet of a coffee, a bottle of a beer, and even the overall shape and appearance of a chocolate, even if registrable as industrial designs, may be registered as trademarks. Below are examples of three-dimensional marks or containers which have been registered as trademarks in the Philippines:

[12]        [13][14]

Summary

Product design is a complex process that involves artistic and functional consideration. New product designs may be protected by industrial design, patent, utility model, copyright, and trademark. You just need to identify the kind of protection that best suits your needs.

For questions regarding this article, email us at inquiry@cfiplaw.com.

Note: The article above is for informational purposes only and does not constitute legal advice.


[1] Sec. 113.1, IP Code (1997).

[2] Sec. 118, IP Code (1997).

[3] Sec. 113.3, IP Code (1997).

[4] An invention patent requires that an additional requirement of inventiveness or non-obviousness.

[5] Sec. 113.2, IP Code (1997).

[6] Sec. 171.10, IP Code (1997).

[7] Sec. 172.1 (h), IP Code (1997).

[8] Ching vs. Salinas, G.R. No. 161295, 29 June 2005.

[9] https://www.mondaq.com/patent/875930/can-a-bag-design-be-copyrighted

[10] Ching vs. Salinas, G.R. No. 161295, 29 June 2005.

[11] Sec. 121.1, IP Code (1997).

[12] Trademark Registration No. 14479 in the name of Elite Gold Ltd.

[13] Trademark Registration No. 123914 in the name of AB Heineken Philippines Inc.

[14] Trademark Registration No. 41997123133 in the name of Mondelez Europe GmbH.

Are Online Shopping Sites Liable for the Sale of Fake Products?

The COVID-19 pandemic has popularized online shopping as a convenient and safe mode of buying goods. More and more buyers prefer purchasing goods online. As a result, companies have started selling products through their websites.

Additionally, online purchases can be made via third parties through social media pages (Facebook/Instagram) and online shopping sites (Lazada/Shopee). However, recent reports on sales of supposedly counterfeit goods have revealed the dangers of online shopping.[1]

 Liability of Online Shopping Sites

Under the Philippine Intellectual Property Code (I.P. Code), any person who sells products that bear the registered mark of another, without the latter’s consent, is liable for trademark infringement.[2] For instance, the owner of an Instagram page that sells counterfeit products may be held liable for infringement. With respect to online shopping sites, however, ascribing liability becomes tricky. Many sites disclaim liability by alleging that they act as mere intermediaries that bring sellers and buyers together.

Other Jurisdictions

A landmark case in Europe has held that online sites are indeed liable for selling counterfeit products.[3] It ruled that these platforms could not disclaim liability if they fail to act expeditiously after (1) playing an active role in the promotion or sale of the trade-marked goods, or (2) gaining knowledge of facts or circumstances that should have put them on notice that the offers for sale were unlawful.[4]

In the U.S, it was held that online marketplaces are not liable for sales of counterfeit items if they did not have knowledge of specific infringing sellers or listings.[5] However, in another case, Court subsequently held an online marketplace liable even if the infringed brands did not send formal take-down notices to the seller.[6] Another was held liable for failing to send an email blast which would have curtailed acts of infringement.[7]  

Philippines

The DTI has advocated for legislation that would make online platforms liable for selling counterfeit products.[8] Senate Bill No. 1591 seeks to regulate e-commerce in the Philippines by penalizing online merchants and shopping platforms who sell fake or unregistered items, with a fine equivalent to a hundred percent of the amount of the counterfeit goods offered.[9] Considering that there is still no settled jurisprudence on this matter, such proposal is a welcome development. Nevertheless, we believe that a penalty equivalent to the value of the counterfeit product is a mere slap on the wrist. Congress can certainly do more to protect consumers!

What to do when you receive a counterfeit product

Despite the vacuum in our laws, there are ways to make companies accountable for selling fake products. One way is to alert the online platform that one of their sellers is advertising fake products. Doing so would prompt them to conduct and investigation and possibly blacklist the guilty seller. More importantly, it would render them unable to raise the defense of lack of knowledge regarding the sale of fake products. Notably, popular sites like Lazada and Shopee provide ways for consumers to chat with their customer care teams. One can even go further and alert the owners of the products that other sellers are infringing upon their brands.

Can you reject or return the product?

The short answer to this is yes. The sale of a counterfeit product is a criminal act [10] which should not be condoned nor tolerated. Aside from the I.P. Code, the Consumer Act allows a buyer to file a case against sellers who are guilty of false advertising.[11] Surely, one should never be forced to accept the product of a criminal offense.

For questions regarding this article, email us at inquiry@cfiplaw.com.


Note: The article above is for informational purposes only and does not constitute
legal advice.


[1] https://www.pna.gov.ph/articles/1122237; https://news.abs-cbn.com/business/10/23/15/why-etude-house-distributor-sued-lazada.

[2] Sec. 155, Intellectual Property Code of the Philippines, Rep. Act No. 8293.

[3] Case C-324/09, L’Oréal SA v. eBay Int’l AG, 2011 E.C.R. I-6011.

[4] Ibid.

[5] Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2nd Cir. 2010)

[6] Chloé SAS et al. v. Sawabeh Information Services Co. et al., Civil Action No. 2:11-cv-04147 (C.D. Cal.).

[7] 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013).

[8] https://cnnphilippines.com/news/2019/10/8/DTI-counterfeit-online-shopping.html.

[9] https://news.abs-cbn.com/business/09/03/20/gatchalian-wants-online-shopping-apps-penalized-for-sale-of-fake-items.

[10] Sec. 170, Intellectual Property Code of the Philippines, Rep. Act No. 8293.

[11] Article 123 in relation to Article 110, Consumer Act of the Philippines, Rep. Act No. 7394.

Can Your Trademark Be Registered?

If you own a business, chances are, you are already using trademarks on your products. However, do you know if those trademarks are registrable?

A trademark is used to associate a product with a business. Overtime, a trademark could become so popular that customers would look for it when they are looking for a product of a certain quality. Therefore as an identifier, a trademark must be uncommon and cannot be confusingly similar to other trademarks.

Generic and Descriptive Marks are Unregistrable

Generally, a mark is not registrable if it is generic[1] or merely descriptive.[2]  To illustrate, the word “PEN” may not be used as a trademark for pens and the word “BRIGHT” may not be used for light bulbs. Allowing the registration of these marks would prevent others from fairly using generic and descriptive terms as labels to describe their products. Nevertheless, a common word may be used as a mark for an unrelated product. For example, the word “APPLE”, though common, may be used as a trademark for phones. Another option is to opt for more distinctive terms which do not have common dictionary meanings such as “XEROX” for photocopiers.[3]

Other Unregistrable Marks

A trademark is also unregistrable if it consists of immoral, deceptive or scandalous matter,[4] or if it is contrary to public order.[5] A mark may be disallowed if it disparages or falsely suggests a connection with persons, institutions, beliefs, or national symbols.[6] For example, the flag of a country is unregistrable.[7] Similarly, signs or of indications that have become customary or usual as product designations in everyday language or in established trade practices are unregistrable.[8] Thus, a barber’s pole may not be registered as a trademark for barbershops because it has become a customary mark for barbershops. Other unregistrable marks include colors (unless defined by a given form),[9] misleading marks,[10] and marks consisting of shapes necessitated by technical factors or by the nature of goods, such as figure of water drops for water products.[11]

Marks Identical or Confusingly Similar to Registered or Internationally Well-Known Marks

Furthermore, a mark may not be registered if it is identical or if it is confusingly similar to a previously registered mark (or one with an earlier filing date)[12] or to an internationally well-known mark.[13] For this purpose, an internationally well-known mark does not have to be registered in the Philippines in order to gain protection. However, such protection is conditioned upon a prior declaration by either the Bureau of Legal Affairs, the Office of the Director General of the Intellectual Property Office or the Courts, that such mark is internationally well-known.[14]

To determine if a trademark has already been registered by others, you may check the trademark database of the Intellectual Property Office of the Philippines which is posted at https://www3.wipo.int/branddb/ph/en/.

For questions regarding the article “Can Your Trademark Be Registered”, you may email us at inquiry@cfiplaw.com.

Note: The article above is for informational purposes only and does not constitute legal advice.


[1] Sec. 123 (h), IP Code of the Philippines.

[2] Sec. 123 (j), IP Code of the Philippines.

[3] https://www.inta.org/fact-sheets/trademark-strength/, accessed on 25 September 2020.

[4] Sec. 123 (a), IP Code of the Philippines.

[5] Sec. 123 (m), IP Code of the Philippines.

[6] Ibid.

[7] Sec. 123 (b), IP Code of the Philippines.

[8] Sec. 123 (i), IP Code of the Philippines.

[9] Sec. 123 (l), IP Code of the Philippines.

[10] Sec. 123 (g), IP Code of the Philippines.

[11] Sec. 123 (k), IP Code of the Philippines.

[12] Sec. 123 (d), IP Code of the Philippines.

[13] Sec. 123 (e) and (f), IP Code of the Philippines.

[14] Dy vs. Philips Electronics, G.R. No. 186088, 22 March 2017.

Bringing down the cost of medicine through compulsory licensing

The prices of medicine in the Philippines are higher compared to other countries in Asia and in countries of similar economic status. Some of the factors affecting medicine prices are the cost of research, presence of competition in the market, government regulations, and patent protection.


Medicines with existing patents are expensive due to the ability of pharmaceutical companies to dictate their price. The grant of a patent over such products practically results in a monopoly.