Guarding a brand name

By Atty. Eduardo T. Reyes III

Aguinaldo Hall at Goldberry Lite Hotel in Iloilo City was full for the 2-day seminar series  on March 9 and 10, 2026 put together by the Iloilo Business Club, Inc., Soft Skills Management Consultancy Service, and Cornelius Magnate, which offered to Iloilo business persons insights on business strategies and how to protect their business names and brands.

During the forum, this columnist was invited to speak on “The Legal Architecture of Business Continuity.” The talk focused on branding and protecting the brand name or technically called: trademark.

What is a trademark?

The Intellectual Property Code defines trademark as “any visible sign capable of distinguishing the goods … of an enterprise[.]” It is “any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others.”

It is an intellectual property which is protected by law as concluded in Medina/Rackey Crystal Top Corporation v. Global Quest Ventures, Inc.,  G.R. No. 213815, February 08, 2021.

How important is the registration of a trademark or name with the Intellectual Property Office of the Philippines (IPOPHL) which is an arm of the Department of Trade and Industry (DTI)?

One must not confuse the registration of a “business name” with the DTI which is required for the operation of a business, with registration of “trademark or name” with the IPOPHL. The latter may not be a prerequisite for business operation but is the best safeguard that ensures that only the legitimate business owner can use their brand name.

Thus, as held in Zuneca Pharmaceutical v. Natrapharm, Inc., G.R. No. 211850, September 8, 2020 and Manuel T. Zulueta v. Cyma Greek Taverna Co., G.R. No. 205699, January 23, 2023, there has been a doctrinal-shift from the old Trademark Law, where actual use was the mode of acquiring ownership, to the current Intellectual Property Code (IP Code), where ownership of a trademark is acquired solely through valid registration.

Today, the controlling principle is the first-to-file rule. Prior use no longer determines ownership. The only recognized exception is when the registrant acted in bad faith, that is, when the application was filed with knowledge of another’s prior creation, use, or registration of an identical or confusingly similar mark. In such case, the registration is void and confers no rights.

Yet protecting a brand name does not end with registration.

Too, in trademark law, the owner must supervise how the mark is used to maintain their goodwill and reputation. Section 150 of R.A. No. 8293 of the Philippines expressly requires that a trademark license contract must provide effective control by the licensor over the quality of goods or services offered by the licensee. If such control is absent or not exercised, the license contract may be considered invalid. Thus:

Section 150. License Contracts. – 150.1. Any license contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If the license contract does not provide for such quality control, or if such quality control is not effectively carried out, the license contract shall not be valid.

In other jurisdictions such as in the United States, this is called “naked licensing.” It is an instance where the trademark holder acts loosely in terms of ensuring that the ones they have licensed or permitted to use their mark or name, adhere to the quality and standards expected of the product or service that is associated with the mark or name.

So, in the business world, does a name matter? What’s in a name, after all, as Shakespeare had asked in one of his plays?

Well, in business, a brand name can set apart a good product or service from the rest, to the end that the consuming public will not confuse one with the others.

(The author is the senior partner of ET Reyes III & Associates (ETRIIILaw)– a law firm based in Iloilo City. He is a litigation attorney, a law professor, MCLE lecturer, bar reviewer and a book author. Among the books he authored is “Law on Property and Essentials of Land Registration [2024 Edition]” which was on the bestseller’s list in online shops for several months. In 2026, he published his second major legal textbook titled “Comprehensive Reviewer on Persons and Family Relations.” His website is etriiilaw.com).