Rights Conferred, Assignment, Licensing, and Recordal
Registration confers exclusive rights, but those rights are alienable and licensable only with proper documentation and recordal. The exam tests the difference between the contract and its effect against third parties.
Core rules
- The owner has the exclusive right to prevent third parties from using identical or similar signs for identical or similar goods/services where confusion is likely.
- A Philippine registration is effective for 10 years from registration and renewable for 10-year periods, subject to fees and use requirements.
- An assignment must be in writing and recorded with IPOPHL; recordal is what gives notice and effect against third parties.
- A license may be exclusive or non-exclusive and must be recorded; an exclusive licensee may have standing to enforce if the agreement so provides.
- License agreements should include quality-control provisions; naked licensing risks abandonment.
- Recordal requires the relevant form, proof of the transaction, and fees; changes of name and address should also be recorded.
Worked example
A Philippine owner assigns 'BANAYAD' coffee to a buyer by a signed deed, but neither party records it. The buyer later licenses a roaster. The original owner then assigns the same mark to a third party, who records first. As between the competing assignees, recordal and good faith matter; the unrecorded licensee cannot safely rely on the mark against the recorded assignee. The lesson is to record promptly.
Traps
Do not treat a signed assignment or license as effective against the world without recordal. Do not draft a license without quality control. Check whether the licensee is exclusive and what enforcement rights it has. Renewals and DAUs are separate from assignment recordal. A transfer of a business may carry goodwill, but the mark record must still be updated.