CURRENT INNOVATION CONCERNS
Elpidio V. Peria
30 August 2014
The Verge recently reported that the Amyotrophic Lateral Sclerosis or ALS Association, a US-based organization that was behind the viral internet sensation ice bucket challenge which has recently raised some US$100.9 million from donations worldwide, has withdrawn its attempt to trademark the terms “ice bucket challenge” and “ALS Ice Bucket Challenge”.
In its Facebook page cited in the news report, the ALS Association said it “understood people’s concerns over any one group owning those phrases” and will be withdrawing the trademark applications it filed over those terms the past week.
To an uninitiated Pinoy, trademark seems a strange legal tool which one can use to own words or phrases, even designs or marks.
But trademark is one species of intellectual property with separate rules and principles distinct from patents, copyrights and even plant breeder’s rights, all of which are examples of a category of rights called intellectual property rights or IPR, which in essence are state-granted monopolies over the use and commercialization over subject matter covered by those rights.
Under the Philippine Intellectual Property Code or Republic Act 8293, a trademark is any visible sign capable of distinguishing the goods of an enterprise, while a similar sign used to distinguish services is called a service mark. In the law, they are simply called as “mark”. If what is sought to be distinguished by a name or designation is an enterprise, it would be called a “trade name”.
Going back to the ALS Association’s idea to trademark the terms “ice bucket challenge”, would it have been registrable just the same, under the Philippine law on trademark?
Examining what may make a mark non-registrable as provide in art. 123 of the IP Code, it may be that the term “ice bucket challenge”
(i)Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;
Given the viral nature of the challenge and the strong association now of the term “ice bucket challenge” with the ALS disease, any group applying to trademark the term which is not the ALS Association because of this ground for its non-registrability as a trademark.
Now, there may be other groups who may copy the idea of “ice bucket challenge” but for a different purpose, such group may be actually seen as lacking in originality or is doing so in poor taste, so it may not get the same enthusiastic response as what the ALS Association has done and connect it with ALS or Lou Gehrig’s disease.
All things considered, the ALS Association seems to have done right in being sensitive to the concerns of people who reacted badly to its idea to trademark “ice bucket challenge”. Trademark law principles will take care of those who will attempt to trademark it here in the Philippines.