Second of two parts
A descriptive or generic word can only be registered as a trademark 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.
But there are also originally legally protected trademarks but have been genericized and have lost their legal status after becoming generic terms. These include “Aspirin” which was a trademark but declared generic in the US, “Cellophane” also genericized in the US, and “Escalator” which was originally a trademark of Otis Elevator Co. Other brand names that have become generic words for a type of product and has in some cases resulted in companies losing their trademarks would include “Kleenex” which has become interchangeable with tissue, “Bubble Wrap,” “Thermos,” which lost its trademark after being declared generic in 1963, “Frisbee,” “Popsicle,” “Laundromat,” “Taser,” “Yo-yo,” “Kerosene,” “Jacuzzi,” “Jeep,” “Ping Pong,” “Zipper,” “Band-Aid,” and “Jet Ski,” which is a trademark still maintained by Kawasaki but which may soon lose the battle to preserve its exclusive use just like in the case of “Velcro,” which is registered to the company with the same name.
Colors and shapes are by themselves also not capable of being registered as trademarks in the Philippines under present laws, unless the colors are defined by a given form or part of a composite mark but there should be a disclaimer and the person who registers them as part of a mark will not acquire ownership thereto.
Trade dress or the look and feel of a product or place may be registered as trademarks only upon showing of proof of acquired distinctiveness, according to Bureau of Trademarks director Jesus Antonio Ros.
Aside from serving as means to indicate the origin of the goods to which they are attached, to guarantee the standard of quality of the goods, and to advertise the goods, trademarks can also be very valuable intangible assets.
Among the most valuable brands in the world are the trademark “Amazon” which is valued at $220 billion, “Google,” ($160 billion), “Apple” ($140 billion), “Microsoft” ($170 billion), and “Samsung” ($94 billion).
When Jollibee Foods Corp. acquired Mang Inasal Philippines Inc. from Injap Investments Inc., Jollibee paid about P700 million for tangible assets and P3 billion for IP-related assets which includes Mang Inasal’s trademark.
There is now a bill pending in Congress that seeks to amend the IPC that would expand the list of what marks can be registered as trademarks and therefore can be appropriated exclusively use of a business.
Presently, marks are limited to visible signs and there is a proposal to remove the word “visible,” which would allow the registration of non-traditional trademarks like color alone, smell, sound and taste.
In other jurisdictions, colors by themselves are registrable. Some of the colors registered as trademarks abroad would include Barbie Pink, 3M Yellow, Louboutin Red, Coca-Cola Red, to name a few.
There are also registered sounds in other countries like Netflix’s “Da Dum” sound, ESPN’s “DaDaDa-DaDaDa,” or even Darth Vader’s “breathing” sound or the distinct sound produced by lightsabers when wielded, retracted or swung which are trademarked by Lucasfilm.
Awareness in terms of the importance of trademark registration has increased, especially during the pandemic.
In the US, it is said that in December 2020 alone, the USPTO received 92,608 applications, an increase of 172 percent over Dec. 2019. In China, trademark applications increased 20 percent in 2020 over 2019. For 2021, European Union IPO trademark filings increased 23 percent compared to 2020. United Kingdom trademark applications also increased 31 percent in 2020. In many countries including the Philippines, notable also was the increase in new filings from small and medium-sized enterprises as well as individuals.
Worldwide, the World Intellectual Property Office said that around 13.4 million trademark applications were filed in 2020, up 16.5 percent compared to pre-pandemic 2019, which WIPO said is striking since many countries experienced economic downturn. Eleven trademark offices recorded double-digit growth, with Indonesia posting a 44.3 percent increase.
The increase, WIPO noted, may also be due to the fact that enterprises have brought new products and services to the market, and also because many anticipate a strong recovery. The IP office of China accounted for 73.1 percent of the 2020 increase in global trademark filings followed by the US with 9.6 percent.
These indeed are interesting times, which might even turn into a golden era for IP.
For comments, e-mail at mareyes@philstarmedia.com.