Exciting times for IP

The triumvirate of Tito Sotto, Vic Sotto and Joey de Leon, collectively known as TVJ, following their exit from GMA 7’s and Philippine television’s longest running noontime show Eat Bulaga!, is moving to their new home at TV5.

But before doing so, they have filed with the Intellectual Property Office of the Philippines (IPOPhl) an application to register in their favor the mark “Eat Bulaga!”

An online trademark search revealed that there were two applications filed. One was made by Jose Ma. de Leon on March 22, 2023 for the mark “Eat Bulaga” and another by Vicente Sotto III, Jose Maria de Leon, Marvic Sotto and Antonio Tuviera on Feb. 27, 2023, also for the mark “Eat Bulaga.”

The same search revealed that De Leon sought to register the mark “Eat Bulaga” under Nice Classification 41 while that of Sotto et al were under Classification 16, 18, 21, 25, 41.

In the same search, it can also be seen that the mark “Eat Bulaga and EB” is still registered in the name of Television and Production Exponents Inc. (TAPE) covering the Classes 16, 18, 21 and 25 and has been registered in its name since 2011. Trademark registration is valid for 10 years but renewable.

The Nice Classification is a system of classifying goods and services for purposes of trademark application. Upon application for registration of a mark, the applicant has to decide in which classes it wants to register the trademark, depending on which products and services it considers appropriate.

The Intellectual Property Code provides that a mark will not be registered if it is identical with a registered mark belonging to a different proprietor in respect of the same goods or services, or closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion.

Since “Eat and Bulaga and EB” is still registered in the name of TAPE, whether the Bureau of Trademarks will approve or deny the separate filings by De Leon and Sotto et al will depend on the determination of: first, if the mark sought to be filed is/are identical with that registered with TAPE; and second, if they are indeed identical, if they will be used for the same goods or services, or closely related goods or services; and third, even if they are not identical, the mark sought to be filed nearly resembles the registered mark as to be likely to deceive or cause confusion.

For those living under a rock, “Eat Bulaga! (EB) is produced by TAPE and being aired on GMA 7. However, Tito, Vic and Joey recently left the show, which continued airing, albeit with a different set of hosts. TVJ are moving to TV5 with the so-called Dabarkads. Tito Sotto has said that they will be using the title “Eat Bulaga” for their upcoming TV5 noontime show. If this happens, two noontime show, one on GMA 7 and another on TV5 will be using the same name “Eat Bulaga” as the name of the show.

But is this allowed?

Under the IP Code, there is only one way of owning a trademark, and that is by validly registering it with the IPOPhl. But to keep owning a mark for 10 years and renewing the registration, there are requirements such as submission of a declaration of actual use of the mark periodically. Non-use of a mark, unless excused, is a ground for cancellation of registration of a mark.

A certificate of registration of a mark, is however, only prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the same in connection with the goods or services and those that are related thereto specificity in the certificate of registration.

People at IPOPhl are now abuzz with excitement about this latest brouhaha that puts their very own agency at the center of this exciting development in the field of intellectual property law.

They expect the group of TVJ, in addition to the application for registration of the mark, to file a petition with IPOPhl’s Bureau of Legal Affairs (BLA) to have the registration/renewal of registration of the mark “Eat Bulaga” in the name of TAPE cancelled on the ground that TAPE obtained it fraudulently or in bad faith and that TVJ are the real owners of the mark. Bad faith on the part of TAPE in obtaining the registration however needs to be proven and cannot be presumed.

TVJ can also file an unfair competition case against TAPE and prove a confusing similarity in the general appearance of the goods, as well as intent to deceive the public and/or a competitor. In unfair competition, there is no requirement that TVJ owns the trademark so long as the two essential elements are present.

TAPE on the other hand, as the registered owner of the mark, has the right to prohibit, without first obtaining its consent, the use in commerce any reproduction, copy, or colorable imitation of the registered mark in connection with the sale, offering for sale, distribution, advertising of such goods or services including other preparatory steps needed to carry out the sale of such goods or services on or in connection with which such use its likely to cause confusion, or to deceive the public.

We have learned that one of the leading law schools has been calling up IPOPhl inquiring about the rights of TAPE as owner of the registered mark, presumably as a client.

Violation of its right to exclusive use the registered mark in connection with identical or similar goods or services will give TAPE the right to file an action for trademark infringement against TVJ with the regional trial courts designated as special commercial courts which have exclusive jurisdiction over violation of intellectual property rights.

TAPE can also file an unfair competition case against TVJ, in case the latter decides to use the name “Eat Bulaga” for its move to TV5, and prove a confusing similarity in the general appearance of the goods, as well as intent to deceive the public and/or a competitor.

Lately, there have been reports quoting Tito Sotto as saying that their show on TV5 will be named “The Orig Eat Bulaga” to distinguish it from that of GMA7’s.

According to Sotto, they were the creators of Eat Bulaga in 1979 “and when it comes to copyright, any composition, drawing, or works or art, the creator of the work is the owner from the time of creation.”

Unfortunately, no one can claim ownership of the format of Eat Bulaga or its segments.

In the case of Joaquin and BJ Productions vs Drilon involving the format and style of presentation of the dating game show Rhoda and Me which aired from 1970 to 1977, the Supreme Court in 1999 said that copyright does not extend to an idea, procedure, process, system, concept, regardless of the form in which it is described, explained, illustrated or embodied in such work.

BJ Productions’ copyright ownership, the Court pointed out, covers only the audio-visual recordings of each episode but not to the general concept or format of its dating game show.

This means that neither TAPE nor TVJ can claim exclusive copyright ownership over the format of Eat Bulaga or any of its segments, which are mere ideas that are not the subject matter of copyright. Not being the copyright owners, they cannot prohibit others from reproducing the work without their permission.

How all these will pan out remains to be seen but what we are sure of right now is that this exchange between TAPE and TVJ is making many, even the ordinary man on the street, interested about trademark and copyright and intellectual property rights. And this is good for the promotion of the importance of IP rights, which the IPOPhl has been heavily working on in the past years.

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