The spectrum of distinctiveness for mark protection was introduced in the United States of America ² and has been applied in the Philippine setting. ³ Under this spectrum, the four different categories of marks enjoy varying strengths of protection:

1. fanciful or arbitrary;
2. suggestive;
3. descriptive; and
4. generic.

Fanciful marks are not found in the dictionary. Rather, they are letter or number combinations that are coined solely for the purpose of serving as marks. For example, “KODAK” is not a word in the dictionary and was coined particularly to distinguish the mark from other film products. ⁴ On the other hand, arbitrary marks are words or phrases with ordinary meaning, but their use as marks appears to be random, original, or unexpected. The Philippine Supreme Court ruled that “ADAGIO” -- a musical term that means slowly or in an easy manner -- is an arbitrary mark when used for brasseries, because the term is not a common descriptive name for such products. ⁵ Fanciful and arbitrary marks are the most distinctive marks; consequently, they enjoy the broadest protection.

Suggestive marks are terms that imply, but do not expressly describe, the qualities or functions of the products or services. Imagination, thought, or perception is necessary to establish the connection between the marks and their objects, because there is no immediate connection between them. The Philippine Supreme Court ruled that “FAMILY BANK” is a suggestive mark. By their respective definitions, there is no expected relationship between the terms “family” and “bank,” but the combination of these words in the mark suggests that the family’s savings should be deposited in that bank. ⁶ Suggestive marks are inherently distinctive and thus entitled to protection.

As a rule, descriptive marks cannot be registered in the Philippines. ⁷ Examples are terms that merely describe the character, quality, composition, or place of manufacture of a product. The Philippine Supreme Court ruled that “PALE PILSEN” cannot be appropriated as a mark for exclusive use, because it is a term that merely describes the color (pale) of a type of beer (pilsen), a pilsen being a light bohemian beer with a strong hops flavor that originated from the City of Pilsen in Czechoslovakia.⁸ However, as an exception, a descriptive mark can be registered under the doctrine of “secondary meaning.” Under this doctrine, a descriptive term may be used as a mark, if -- through the long and exclusive use of a descriptive term by an entity in referring to its product -- the descriptive term comes to mean that the product was produced by the entity. ⁹

The Philippine Supreme Court ruled that the term “GINEBRA” (which means “gin” in Spanish) has become a descriptive mark (and ceased to be a generic mark) based on public perception, and it can be used exclusively by one gin manufacturer to the exclusion of others despite merely being descriptive, because the term has acquired a secondary meaning among Filipino gin drinkers, that is, the term has been associated with the gin product of that gin manufacturer through long and exclusive use. ¹⁰

Marks are considered generic if they simply refer to the class or genus of products or services, if they are common names or descriptions of products or services, or if they refer to the basic nature of products or services, instead of their idiosyncratic characteristics. Generic marks cannot be registered and are not entitled to protection in the Philippines, ¹¹ because Philippine law requires that marks be comprised of words or signs that are “capable of distinguishing the goods or services of an enterprise.” ¹² Registered generic marks may even be cancelled, if they later develop the generic signification for the products or services they represent. ¹³ The term “COFFEE” is a generic mark for a coffee product. ¹⁴ Therefore, a generic word, by itself, cannot be used exclusively, because it cannot distinguish itself from the class where it belongs.

In sum, to increase the likelihood of registration of a mark and thus enhance its protection, one should choose a fanciful, arbitrary, or suggestive mark; one should avoid a descriptive mark if possible; and one should not use a generic mark.

Disclaimer:
This article was prepared for informational purposes only. It is not a legal advice. And while it strives to be accurate and relevant, there is no guarantee that it will remain so in the future or when it is received. For legal advice on Philippine intellectual property (IP) law, please consult a licensed Philippine attorney.

Zamora and Poblador provides legal services on Philippine IP law, including registration, opposition, cancellation, enforcement, prosecution, defense, contract preparation, contract review, due diligence, and portfolio management.

You may make inquiries or schedule an appointment via landline at +(63)(2)88125767 to 70, mobile at +639175085389, or email at zp@zplaw.com.ph.

• ¹ This article is an excerpt from the Philippine Supreme Court’s decision in Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks (G.R. Nos. 196372, 210224, 216104, and 219632, 9 August 2022).
  ² Abercromhie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1976).
  ³ For example, Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., G.R. No. 228165, 9 February 2021.
  ⁴ 1 Gilson on Trademarks §2.04 (2020).
  ⁵ Romero v. Maiden Form Brassiere Co., Inc., 119 Phil. 829, 832 (1964).
  ⁶ GSIS Family Bank — Thrift Bank v. BPI Family Bank, 770 Phil. 158, 173 (2015).
  ⁷ Section 123.1 (j) (k) and (l) of Republic Act No. 8293 (Intellectual Property Code of the Philippines).
  ⁸ Asia Brewery, Inc. v. Court of Appeals, 296 Phil. 298, 314 (1993).
  ⁹Lyceum of the Philippines, Inc. v. Court of Appeals, 292 Phil. 609, 618 (1993), citing
  Philippine Nut Industry, Inc. v. Standard Brands, Inc., 160 Phil. 581, 592-593 (1975).
  ¹⁰Ginebra San Miguel, Inc. v. Director of the Bureau of Trademarks, supra.
  ¹¹Kolin Electronics Co., Inc. v. Kolin Philippines International, Inc., supra; see also Section 123.1 (h) of Republic Act No. 8293.
  ¹²Section 121.1 (h) of Republic Act No. 8293.
  ¹³ Section 151.1 (b) of Republic Act No. 8293. zp@zplaw.com.ph.
  ¹⁴ Coffee Partners, Inc. v. San Francisco Coffee & Roastery, Inc., 628 Phil. 13, 24 (2010).