The genius of Philippine Trademarks

Filipino’s ingenuity goes both ways. We can think of smart ideas but sometimes they cross the line into infringement. But we can harness this genius in creating “marks” of our own. To illustrate, there are 4 types of trademarks in terms listed in the order of their strengths:

1) Arbitrary (made up, original) Ex. Exxon, Kodak

2) Suggestive (suggesting a product in the mind) Ex. Coppertone

3) Descriptive (trait emphasized) Ex. Quarter Pounder

4) Generic (natural inference). Ex. Mineral Water

Arbitrary trademarks bear no relationship to the products or services to which they are applied. Suggestive trademarks imply some particular characteristics of the good or service to which it applies and requires the consumer to exercise the imagination in order to draw a conclusion as to the nature of the good or service. A descriptive term identifies a characteristic or quality of the goods or services such as color, function, dimensions or ingredients. They are can only be protected if they have acquired secondary meaning in the minds of the consuming public. Lastly, generic terms are names of a particular genus or class of which an individual article or service is but a member.[1]

There are two cases which have recently caught the headlines. The word Ginebra has been considered “generic” in a legal battle between two liquor companies. The one who won sought to register and the losing company protested and sought to protect it’s own mark and claim confusing similarity. The IPO claimed that the word “ginebra” is generic and couldn’t have obtained secondary meaning in favor of the losing company. The standard in trademark disputes is that generic trademarks cannot be subject of registration or subject to cancellation. Why then did the IPO “approve” the trademark application if the word in question is generic? Think about it.

The other case is obviously a case of “riding” on the popularity of an arbitrary name. Harvard University went after a clothing company using the school name for a brand of jeans. This is clear cut. Trademark confusion creates a cause of action for the owner of the mark because it will cause confusion as to the origin of the goods. We all know that Harvard does not make jeans. If that be the case, I would go for further studies at Levi’s University.

In summary, it is best to consult a legal professional before making product names public. You wouldn’t want to be caught drinking a strong colorless alcoholic beverage without jeans.

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[1] Zatarains v. Oak Grove, U.S. Court of Appeals for the 5^th Circuit (698 F.2d 786, 1983).