Trade Name vs Trademark: Priority Rights and Protection Under the IP Code

The Supreme Court recently clarified a recurring question in Philippine intellectual property law: can a prior trade name defeat a later trademark registration? In Campbridge Waterproofing Systems, Inc. v. Greenseal Products (M) Sdn. Bhd. (G.R. No. 269302, January 22, 2025), the Court ruled that it can—but also corrected lower courts on how priority rights under the Intellectual Property Code (IP Code) should be applied.

The Dispute Over "GREENSEAL"

Greenseal Malaysia adopted the mark "GREENSEAL" in 1986 and registered it in Malaysia in 1993 for Class 17 goods like sealants and waterproofing compounds. It began distributing products in the Philippines in 2004, and in December 2006, Greenseal Philippines Corporation was registered with the Securities and Exchange Commission (SEC) as the exclusive local distributor.

Campbridge, a Philippine company, applied to register "GREENSEAL" as a trademark in February 2009 and obtained registration in May 2009 for elastomeric sealant. Campbridge claimed it had renamed its product from "FlexSeal Elastomeric Sealant" to "GREENSEAL" sometime in the mid-2000s.

Greenseal sought cancellation of Campbridge's registration, arguing it was the prior user and that Campbridge had appropriated its trade name. The IPOPHL Bureau of Legal Affairs and its Director both ordered cancellation, but the IPOPHL Office of the Director General reversed, applying the first-to-register rule. The Court of Appeals reinstated the cancellation, and Campbridge appealed to the Supreme Court.

Ownership of Marks: Registration vs. Prior Use

The Court reaffirmed the rule from Zuneca Pharmaceutical v. Natrapharm, Inc. (882 Phil. 278 [2020]): under the IP Code, which took effect January 1, 1998, ownership of a trademark is acquired through registration, not prior use. The old Trademark Law's prior-use rule was repealed.

However, a certificate of registration is only prima facie evidence of ownership. It does not conclusively prove ownership when the registration was made in bad faith or contrary to law. The IP Code allows cancellation of registrations obtained in bad faith or contrary to its provisions.

Trade Name Protection Under the IP Code

The decisive ground for cancellation in this case was not bad faith—which the Court found unproven—but trade name protection. The IP Code provides that trade names are protected even prior to or without registration against unlawful acts committed by third parties. Any subsequent use of a trade name by a third party as a mark, if likely to mislead the public, is deemed unlawful.

The Court cited Ecole De Cuisine Manille, Inc. v. Renaud Cointreau & Cie (710 Phil. 305 [2013]) and Fredco Manufacturing Corp. v. President and Fellows of Harvard College (665 Phil. 374 [2011]) for the rule that a trade name of a national of a Paris Convention member state is protected without registration.

Here, Greenseal's trade name had been used in the Philippines since 2004 and registered with the SEC since 2006—before Campbridge's 2009 trademark application. Campbridge's registration of "GREENSEAL" as a trademark was therefore contrary to law and subject to cancellation.

Clarifying Priority Rights

The Court corrected the Court of Appeals on two points. First, Zuneca was not inapplicable merely because Greenseal had a Malaysian registration; Greenseal's Philippine use began only in the 2000s, after the IP Code's effectivity. Second, the CA misapplied the IP Code's provisions on priority rights.

Under the Paris Convention and IPOPHL rules, a priority claim based on a foreign application must be filed within six months of the first foreign filing. Greenseal's Malaysian registration was in 1993, but it filed in the Philippines only in May 2010—far beyond the six-month window. Thus, no priority right could be claimed.

Practical Takeaways

• Trade names are protected independently of trademark registration. Under the IP Code, a trade name used in commerce—even without registration—can block or cancel a later trademark registration if the use is likely to mislead the public.
• First-to-register is the general rule, but not absolute. Registration obtained in bad faith or contrary to law is voidable and may be cancelled.
• Priority rights have a strict six-month deadline. A foreign filing does not automatically extend to the Philippines unless the local application is filed within six months of the foreign filing date.
• Bad faith requires clear and convincing evidence. Mere suspicious timing or an unexplained name change does not automatically prove bad faith.
• Document your use. Evidence of actual use, such as invoices, purchase orders, and SEC registration, can be decisive in establishing trade name or mark rights.

This article is general information and not legal advice. For your specific situation, consult a lawyer or ask ASG Legal AI.