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In the complex world of intellectual property (IP) law, trade dress disputes often spark debates about the boundaries of brand protection. In the Philippines, the Intellectual Property Office of the Philippines (IPOPHL) plays a central role in determining how trade dress and related claims are resolved, similar to how courts evaluate trademark and copyright cases.
Trade dress refers to the visual appearance and overall image of a product, going beyond its functional aspects. It covers packaging, design, color schemes, shapes, and even the way a product is presented in the market. Much like trademarks, trade dress is meant to protect consumers from confusion and prevent unfair competition.
In the Philippines, protection for trade dress falls under trademark law, governed by the Intellectual Property Code (Republic Act 8293). To be protected, a trade dress must be either inherently distinctive or have acquired secondary meaning, meaning that over time, consumers have come to associate it with a single source.
One notable case is McDonald’s Corporation v. L.C. Big Mak Burger, Inc. (G.R. No. 143993, August 18, 2004). Here, McDonald’s successfully argued that the “Big Mak” burger name and packaging created confusion with its “Big Mac,” amounting to unfair competition. The Supreme Court stressed that distinctiveness and consumer association are key in protecting trade dress and trademarks.
At the IPOPHL level, oppositions to registration frequently involve disputes over similar packaging and product presentation. For example, in several Bureau of Legal Affairs (BLA) opposition cases, applicants were denied trademark registration when their packaging closely resembled existing brands, even when no exact duplication occurred.
It’s worth noting that some aspects of trade dress can also be protected under copyright law, particularly artistic packaging designs, logos, or illustrations. IPOPHL recognizes overlapping protection: while trade dress protects brand identity in the marketplace, copyright safeguards the creative expression itself. For instance, a unique bottle shape with engraved artwork could potentially enjoy both trade dress and copyright protection, giving the owner a stronger legal shield.
Courts and IPOPHL examiners are cautious in granting trade dress protection for commonplace elements such as basic colors, fonts, or generic bottle shapes. For example, in some IPOPHL decisions, applications that relied only on color combinations (like red-and-white packaging for beverages) were refused, since such colors are widely used in the industry and cannot function as a source identifier without secondary meaning.
This highlights the importance of showing substantial evidence of consumer recognition, such as market surveys, advertising spend, and proof of long-term use. Without such evidence, a trade dress claim may fail at the substantive examination stage or during opposition proceedings.
The Philippine framework on trade dress and copyright underscores the balance between protecting innovation and avoiding monopolization of common designs. Just as seen in international disputes like Pom Wonderful, the key lesson is the same: only truly distinctive designs that consumers associate with a single source can survive legal challenges.
For brand owners, working with experienced IP counsel is vital. At Brealant, we specialize in guiding clients through IPOPHL’s procedures—whether for trademark, copyright, or trade dress matters. Protect your brand identity and creative works with strategic, cost-effective legal support.
Brealant: Your Partner in Protecting Intellectual Property Rights.