What’s in a name?

News for these past few weeks has focused mostly on an ongoing conflict between some of the country’s most famous personalities and a production company. The dispute appears to have many aspects to it, but an issue that keeps on resurfacing involves claims of ownership over the name of a popular noontime show. The conflict has put the spotlight on a topic that rarely makes it to the headlines—that of intellectual property rights, with many asking questions such as “Who owns the name of a TV show?” “Who has the right to use the name of a show?” And perhaps most importantly, “Why is the name of a show so important?” Intellectual property or IP refers to creations of the mind that are protected by law. Some examples are inventions, literary works, and brand names. These creations are in turn protected by what we call IP rights, with the most common being patents, copyrights, and trademarks. A patent protects technical solutions to problems in different fields of human activity such as inventions and innovations. A copyright protects original literary and artistic creations such as books and audiovisual works. A trademark protects any visible sign capable of distinguishing goods such as a brand name or a logo. Unfortunately, the three main kinds of IP rights are often referred to interchangeably. Nevertheless, knowing the differences among them is vital.

Let’s say Person A comes up with a unique name for a TV show. She writes the name on a piece of paper using a beautiful font, and couples it with a matching logo. From the moment she creates this drawing, she obtains ownership over it. This is because a copyrightable work is protected from the moment of creation. However, ownership over the copyright does not necessarily entail ownership over the trademark. The IP Code of 1998 which is the governing law for IP rights mandates the “first-to-file” rule. This means that the first person to file a trademark application with the Intellectual Property Office of the Philippines, the governing body for IP rights, is deemed to be the mark’s owner. Therefore, if Person A intends to use the name to identify her show, she must also file a corresponding trademark application.

Does this mean then that the first person to file a trademark application always obtains ownership over the mark? Not necessarily. In the case of Zuneca Pharmaceutical v. Natrapharm, Inc., the Supreme Court pronounced that an applicant gains ownership over the mark only if he filed it in good faith—meaning, the application should have been filed without knowledge of another person’s ownership, prior to creation or prior use. Moreover, the Court has ruled that a trademark that was used and/or registered prior to the effectivity of the IP Code shall be governed by the “prior use” rule, which means that the first person to have actually used the mark owns it. There are other considerations. For instance, it is a basic rule in trademark law that a registration generally provides protection only for the goods successfully applied for. Furthermore, a person who had been using a mark in good faith prior to its registration by another applicant may be allowed to continue using the mark under certain conditions. We also have what we call a well-known mark—a coveted category of marks protected in our jurisdiction despite nonregistration.

There are many factors that require consideration when deciding the issue of ownership over a mark. What is evident from all these rules, however, is that a name can be so valuable that it needs multiple levels of protection. Perhaps this is even more true if the name involved is a “household name.” In the present case, what is involved is a name that has literally become part of Filipino households for decades. What’s in a name? As it turns out, a lot.

—————-

Mario C. Cerilles Jr. is the cofounder of Cerilles & Fernan Intellectual Property Law. He also teaches intellectual property law at the University of the Philippines College of Law. The views expressed in this article are his own. Email: mccerilles@gmail.com