What’s in a logo

I’m sure many of you have encountered and even tried answering an online game which asks you to guess the name of the company or the brand based on an image of the company’s logo being shown.

Many of these logos are easy to identify. A black swoosh is a giveaway. Or say three stripes. Or the cartoon depiction of a smiling bee facing right. Or the golden arches of the letter M on a red background.

Most, if not all, of these logos are registered as  a trademark, which our Intellectual Property Code (IPC) defines as any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods.

In the case of Dermaline vs Myra Pharmaceuticals, the Supreme Court defined a trademark as “any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others, and is an intellectual property deserving protection by law.”

In the Philippines, what can be registered as trademarks are word marks, figurative marks, figurative marks with words, 3D marks, and stamped or marked container of goods. And in any of the said types, the key point of consideration in granting consideration to a trademark is the distinctiveness of the said mark. This means that that a trademark must be capable of identifying the source of the goods to which it is affixed, and of distinguishing the owner’s goods or services from those of others.

Generally, an exclusive right over a mark can only be obtained by registration with the IPOPhl. Ownership of a trademark is acquired by registration. Actual use of the mark prior to registration is no longer required and intent to use is sufficient for purposes for registration. However, once the mark is registered, our law requires submission of what we call “declaration of actual use,” to prevent registrants from merely squatting on these registered marks.

Arbitrary and fanciful or coined trademarks are considered to be the most distinctive and strongest marks. In an article from Cornell Law School, it was explained that an arbitrary mark is the most unusual in the context of its use. For instance, the word “Apple” is a common word which refers to the fruit but it is used to name a tech giant and is a mark used for computers and smartphones. Other examples of arbitrary marks include Penguin for books, Arrow for shirts, and Subway for restaurants.

Fanciful trademarks meanwhile refer to words that are completely made up and only have meaning when applied to particular goods or services, the same article explained. Great examples of fanciful trademarks are Maalox, Xerox, Nikon. Or let us say you simply put together the first letters of your children or sibling’s names, just like the name of the stationery store “Papemelroti” which are the first two letters of the first names of the siblings Patsy, Peggy, Meldy, Robert and Tina and that would be classified as a coined or fanciful mark.

Suggestive trademarks, such as Nestle’s Master Roast and Master Blend, may be registered, thereby giving the registrant the exclusive right to use the said mark. In one case, the Supreme Court held that the term “Master” is a suggestive term which require one’s imagination, thought, and perception to reach a conclusion as to the nature of the good.

But in the spectrum of marks, descriptive and generic marks are the weakest and are by themselves not registrable as trademarks. Descriptive words which are composed of words that merely describe a product or identify the characteristics of a product cannot be registered as trademarks, like “Cold and Creamy” for ice cream or “24-Seven” to refer to internet banking because anyone should be able to use those words freely.

Also as a rule, generic marks like the word ” apple” if referring to the fruit, cannot be registered as trademarks which cannot be appropriated exclusively.

For example, the Supreme Court ruled that the words “Pale Pilsen” cannot be exclusively appropriated because these are generic words descriptive of the color (pale) and of the type of beer (Pilsen) which is a light bohemian beer with a strong hops flavor that originated in the City of Pilsen in Czechoslovakia and became famous in the Middle Ages. The word “pilsen,” it said, is what is referred to as a geographically descriptive mark which is non-registrable under our laws. Other descriptive words, it added, would be evaporated milk, tomato ketchup, cheddar cheese, corn flakes, and cooking oil, which cannot be for the exclusive use of a single manufacturer for these food products.

The only time that a descriptive or generic word can be registered as a trademark is when the word has acquired a secondary meaning, or if the descriptive or generic word is attached to another word to make up a trademark.

(to be continued)

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