Under Philippine law, a trademark and a trade name are distinct legal concepts governed by different rules and registration systems. The Intellectual Property Code (Republic Act No. 8293) defines a “mark” in Section 121.1 as any visible sign capable of distinguishing the goods or services of an enterprise. This definition covers trademarks for goods and service marks for services. Rights over a registered mark are governed by Section 147, which grants the owner of a registered mark the exclusive right to prevent third parties, without consent, from using identical or similar signs for identical or similar goods or services where such use would result in a likelihood of confusion. Registration of marks is obtained through the Intellectual Property Office of the Philippines (IPOPHL) in accordance with the procedures laid down in the IP Code.
By contrast, a trade name is defined in Section 121.3 of the same Code as the name or designation identifying or distinguishing an enterprise. Trade names as such are not registered with IPOPHL as trademarks; instead, business names and corporate names are recorded under separate regimes. For corporations, Section 17 of the Revised Corporation Code (Republic Act No. 11232) requires that a corporate name be distinguishable from names already reserved or registered, and prohibits the SEC from allowing names that are not distinguishable, that are already protected by law, or that are contrary to law, rules, or regulations. For sole proprietorships, trade names are recorded with the Department of Trade and Industry under its business name regulations. These registrations perform a registration and regulatory function for business operations but are not, by themselves, trademark registrations under the IP Code.
Although DTI and SEC do not adjudicate trademark infringement under RA 8293, both agencies have authority to act on complaints involving confusingly similar trade names or business/corporate names. DTI may deny, cancel, or require the amendment of a business name under its Business Name Registration Regulations if the name is identical or confusingly similar to an existing registered business name. Likewise, under Section 17 of the Revised Corporation Code, the SEC may prohibit or order the correction of a corporate name that is identical, deceptively or confusingly similar to an existing registered corporate name or to a name already protected by law, including earlier registered trademarks and trade names. Accordingly, complaints for confusingly similar trade names may be filed with DTI for sole proprietorships and with the SEC for corporations.
Jurisprudence recognizes the protection of corporate and trade names as a property right distinct from trademark registration. In Philips Export B.V. v. Court of Appeals, G.R. No. 96161 (21 February 1992), Philips Export B.V. and its related corporations were prior registrants and users of the “PHILIPS” mark and corporate names. A later corporation, Standard Philips Corporation, obtained SEC registration using “Philips” in its corporate name. The Supreme Court held that a corporation’s right to use its corporate and trade name is a property right that may be protected against subsequent use by another corporation in the same field, and ordered the deletion of “Philips” from the later corporation’s name. This case illustrates that a corporate name, once validly adopted and used, can be protected against confusingly similar corporate names, particularly where there is also an earlier registered trademark.
On the side of trademark ownership, Zuneca Pharmaceutical v. Natrapharm, G.R. No. 211850 (8 September 2020), clarified the mode of acquiring ownership of a mark under the IP Code. The Court held that, under RA 8293, ownership of a trademark is acquired by registration, abandoning the earlier rule that prior use alone determined ownership. In that case, Natrapharm was recognized as the lawful registrant and owner of the mark “ZYNAPSE,” while Zuneca, as a prior user in good faith of the similar mark “ZYNAPS,” was allowed to continue using its mark but did not acquire ownership superior to the registered owner. This decision confirms that trademark rights and ownership are governed by the registration system of the IP Code, subject to limited protections for prior good-faith users.
These statutory provisions and cases show that SEC/DTI registration of a business or corporate name does not create trademark ownership under RA 8293, and conversely, IPOPHL trademark registration does not, by itself, authorize the use of a mark as a corporate name without compliance with Section 17 of the Revised Corporation Code. SEC may refuse or order the change of a corporate name that is identical or confusingly similar to a name “already protected by law,” which includes registered trademarks and earlier protected corporate names. The protection of marks and the regulation of corporate or business names operate through parallel but separate legal frameworks.
Accordingly, a business that wishes both to operate under a particular name and to protect that name as a brand generally needs to secure (1) corporate or business-name registration with the SEC or DTI, as the case may be, and (2) trademark registration with IPOPHL for the mark used on goods or services. The former satisfies corporate and business-name requirements under the Revised Corporation Code and related regulations; the latter confers exclusive rights to the mark in the sense contemplated by Sections 121 and 147 of the IP Code.
This guide provides a general overview of the above transactions at the time of writing only and is not intended to be a comprehensive legal advice. This should also not be taken as an opinion on the topic. For more details and information, you may coordinate with any GVES Law Partner regarding the matter.
Atty. Ludanielle N. Legarde is a Partner of GVES Law.