TRADEMARK POLICY 2022
1. INTRODUCTION
Trademark is in the form of a brand name, brand mark, trade character, or a combination of these that is officially registered and given legal protection to prevent brand image theft or the creation of substantially similar identities to create marketplace confusion.
Trademark is designed to protect the legal rights attached thereto and optimize the rewards earned through brand identity, visual presence and competitive advantage.
DLSL marks and the reputation they represent are important and valuable assets. In a highly competitive environment, branding becomes critical as a factor that educational institutions can capitalize on to create a competitive advantage. DLSL benefits from public recognition of its identifying Marks resulting from its brand identity. The unifying look provided by properly used and managed Marks establishes recognition and distinction which is critical to establishing a visual presence. Brands need to be protected. Trademarks protect a brand's identity.
As DLSL adheres to DLSP Schools' commitment to being identified with high-quality programs, products and services, and distinguishing its programs from other schools as it conducts its business affairs in an ethical and socially responsible manner, a Trademark Policy is an enabling mechanism.
2. TRADEMARK POLICY
DLSL values the rich heritage of the institution and its brand identity by promoting the responsible use and association of its names, seals, logos, emblems, images, symbols and taglines that are representative of DLSL (together referred herein as “Marks”) and ensuring the fair share of the economic value that the use of DLSL name produces.
DLSL owns and controls its Marks that have become commonly associated with DLSL. In particular, DLSL prohibits use of DLSL’s Marks in connection with an actual or implied endorsement of non-DLSL entities or their products, services or activities that might compromise the integrity of DLSL.
3. Definition of Terms
a. Brand. A brand is a name, term, design, symbol or any other feature that identifies one seller’s goods or service as distinct from those of other sellers.1
b. Brand Identity. The collection of all elements that the institution creates to portray the right image to its consumer.
c. Competitive Advantage. The successful recognition of the brand identity and visual presence in the form products/services winning spices as articulated in the brand value proposition which cushion market positioning.
d. Infringement. A violation, a breach, or any unauthorized use of a trademark that belongs to another or use of a trademark as similar to that of another as to cause the likelihood of confusion in the minds of the public as to the source (affiliation or sponsorship) of the product or service.
e. License. A right to exercise the rights over an invention without which the exercise will constitute an infringement. It also refers to the instrument that grants those rights.
f. Licensing Agreement. A legal contract between a trademark owner and another party that have agreed to use the trademark on preapproved terms decided between the contracting parties. 2
g. Mark. Any visible sign, whether stamped or marked or however similarly indicated, capable of distinguishing the goods (trademark) or services (service mark) of an enterprise. 3 A trademark includes any word, name, symbol, device, or combination that is used in commerce to identify and distinguish the goods of one manufacturer or seller from those manufactured or sold by others, and also to indicate the source of the goods. A service mark is any word, name, symbol, device, or combination that is used, or intended to be used, in commerce to identify and distinguish the services of one provider from those of others.4
h. Sample Visual/Study. The proposed design bearing the DLSL Marks on the merchandise subject for production and sale.
i. Trademark. A trademark is a word, a group of words, sign, symbol, or a logo that distinguishes your business’ goods or services from those of other traders. 5
1 As defined by American Marketing Corporation. Retrieved from: https://www.ama.org/topics/branding/
2 Drafting Trademark Agreement, Klemchuk. Retrieved from https://www.klemchuk.com/ideate/trademark- licensing-agreement
3 As defined in Sec. 121.1 RA 8293 as amended. Retrieved from https://www.ipophil.gov.ph/intellectual-property- code-implementing-rules-and-regulations/.
4 Adapted from IPOPHL Glossary of Key Terms related to Intellectual Property. Retrieved from https://www.ipophl.gov.ph/glossary-of-key-terms-related-to-intellectual-property//
5 Adapted from IPOPHL. Retrieved from. https://www.ipophil.gov.ph/trademark/
j. Trademark registry. A component of a trademark portfolio that may comprise registered trademarks and service marks, as well as marks that are in use but not necessarily registered.
k. Unregistered Marks. A mark that has not been registered to the Intellectual Property Office of the Philippines (IPOPHL).
l. Visual Identity Manual (VIM). A system of guidelines that apply to a range of visual applications for the Institution. These applications include materials produced across all communications platforms such as print, the website, digital media, photography, and video as well as stationery, signage, and exhibits.
m. Visual presence. The recognition of the leadership identity persona a brand.
4. COVERAGE
This policy applies to all Lasallian Partners, students, alumni, and other stakeholders (persons, businesses, and organizations) outside DLSL who intent to use the names and/or marks and their elements for purposes of sponsorships, lectures, student events, programs, publications, fundraising activities, and retail business venture who wishes to produce, distribute or sell merchandise bearing DLSL Marks.
5. OWNERSHIP OF TRADEMARK
DLSL are entitled to the Marks that they already applied for and have registered. DLSL owns and controls its Marks that have become commonly associated with DLSL. The DLSL trademark registry at IPTTO online services describes the DLSL owned trademarks.
DLSL declares and acknowledges the trademarks ownership of De La Salle Brothers Inc.
(DLSBI) and shall honor the Memorandum of Agreement on DLSBI trademark ownership. 6
6. TRADEMARK REGISTRATION
No one may register or authorize the registration of any trade or service mark of DLSL without the prior written permission of the President. IPTTO is the designate of the
6 The Memorandum of Agreement was between DLSLBI and De La Philippines Schools (who have existing Intellectual Property Office in 2018) represented by De La Salle University Inc. (DLSU), De La Salle- College of St.
Benilde (DLSL-CSB), De La Salle University Dasmarinas (DLSU-D), and De La Salle Health and Sciences Institute (DLSHI).
Office of the President to facilitate the filing for trademark registration, declaration of actual use and renewal with the Intellectual Property Office of the Philippines (IPOPHL).
The owner of the registered trademark will have the exclusive right to prevent all third parties from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion.7
6.1 Pre-registration protocol
a. Cross-referencing with other DLSP School and DLSBI trademark registry shall be observed to determine the presence of its registered Marks, or the elements of the Marks are contained in the trademark intended for registration.
In instances that other DLSP School or DLSBI Marks or the elements of the Marks will form part of the trademark for registration, permission to use should be lodged at the Office of the President or its equivalent by submitting a written letter of intent to use by indicating therein the purpose, nature of the activity, what items the marks will be indicated, and the duration of use. The sample visual/study should also be submitted.
b. Conduct an online search in the WIPO Global Brand Database to determine if there are identical or similar marks that would prevent the registration of the mark.
6.2 Registration Proper
Trademark applications are currently being done with the Intellectual Property Office (IPO) of the Philippines through online facility at https://ipophil.gov.ph or in person at the Philippine Intellectual Property Office (IPO) at #28 Upper McKinley Road, McKinley Hill Town Center, Fort Bonifacio, Taguig City.
7 Adapted from AUMENTO IP Law Firm. Retrieved from https://www.aumentolaw.com.ph/resources-trademarks/
6.3 Post Registration8
The IP Code requires the mandatory filing of a Declaration of Actual Use (DAU) together with proof of such use as to ensure the non-removal of the registered trademark from the IPOPHL Register:
a. Within three (3) years from the date of filing of the trademark application; to ensure the non-removal from the Register if it was registered in the meantime;
b. Within one (1) year from the fifth (5th) anniversary of the registration of the mark; and,
c. Within one (1) year from the fifth (5th) anniversary of each renewal.
7. ASSIGNMENT OF OWNERSHIP RIGHTS
DLSL at its own discretion may assign, license, or otherwise transfer DLSL-owned Intellectual Property rights to a third party. The assignment may be subject to any of the following terms and conditions:
7.1 that DLSL be compensated for any expenditure it may have incurred in connection with the protection and/or Commercialization of such IP; and,
7.2 that DLSL be granted a non-exclusive, royalty-free license to use the IP for research and educational purposes.
8. AUTHORITY AND RESPONSIBILITIES
The presence of cross functional offices and the determination of their responsibilities on trademark integrity control mechanism plays an important role in safeguarding DLSL reputation.
The President has the delegated authority for approving use of DLSL Marks as follows:
a. Vice Chancellor for Academics and Vice Chancellor for Research and Innovation: for use in connection with educational, research, and other scholarly activities;
b. Chief of Strategic Services Officer and Chief Finance Officer: for use on merchandise in connection with DLSL business activities and licensing program;
8 Adapted from IPOPHL FAQs on Trademarks. Retrieved from https://www.ipophil.gov.ph/help-and- support/trademark/.
c. Chief Strategic Services Officer: for use in film, video, print and digital media, and web pages;
d. Strategic Communications Office (STRATCOMM): for use of DLSL name and marks may be used, and by whom to ensure these are used on high-quality, socially responsible, and appropriate collaterals, and merchandise;
e. Intellectual Property and Technology Transfer Office and Resource Generation Office: for the joint responsibility to protect DLSL IP assets by seeking a fair share of the economic value that the use of the DLSL name and marks produces;
f. Central Purchasing Department: for the responsibility in transacting business with accredited and licensed vendors (with brand approval) only; and,
g. Institutional Registrar: for the custody of the DLSL seal and act as the designate of the President in the administration of its use.
9. DLSL TRADEMARK USE
As trademark protects brand identity, its appropriate use and association, and prohibition of use must be widely disseminated and responsibly handled. The familiarization of the DLSL trademark registry aims to direct the vigilant position of DLSL on trademark integrity and on trademark infringement enforcement.
IPTTO in the pursuit of strengthening DLSL brand identity and visual presence, the trademark registry (Appendix A) shall be accessible at IPTTO online services at the DLSL website in the resources folder.
9.1 Lasallian Partners and students may use the DLSL trademark on activities for which the DLSL takes institutional responsibility. Approval is not required on the following materials/activities under the oversight of STRATCOMM or ORP.
a. Stationery, business cards, and other materials used by the institution or other units in the ordinary course of business;
b. Materials prepared for use in connection with courses and programs conducted by DLSL;
c. Electronic presentations for lectures, research/scholarship or professional conferences;
d. Official publication of DLSL and related materials of the institution and its various units;
e. Official homepage and similar electronic publications issued by the DLSL and its various units; and,
f. Journals in printed or digital form published by DLSL or any of its units.
9.2 Lasallian Partners and students may use the DLSL trademark or refer to affiliation with DLSL on activities for which DLSL or one of its delegated authorities is accountable.
9.3 Lasallian Partners association, student’s organization, and the Advancement Office are permitted to use the name and/or marks of DLSL with the approval of the responsible official, in the case of the use of the name or marks on merchandise;
9.4 Individuals, businesses, and organizations seeking to use the DLSL name or mark in written, electronic, or any form of communication that might be interpreted as a DLSL endorsement must obtain prior approval. This includes but is not limited to event signage and programs, advertisements, and promotional items; and,
9.5 Authorized or accredited individuals or institutions outside the institution may use DLSL Marks for sale of merchandise with the approval of the responsible authority and if it satisfies the general criteria of accuracy, appropriateness, and fair share of economic value.
10. USE OF MARKS OF OTHER DE LA SALLE PHILIPPINE SCHOOLS9
DLSP Schools encourage collaborative endeavors among the member DLSP Schools including sharing the use of Marks. All DLSP Schools shall respect and protect the Marks of the member School it wishes to use.
a. Protocol for the use of Marks by other DLSP Schools must be observed by adapting the use of “Use of Marks Application Form”.
b. Letter of Intent to Use should be addressed to the Office of the President (owner of Trademark/s) coursed through the Intellectual Property Office or Technology Transfer Office or designee of each DLSP School.
c. The requisitioning DLSP School accomplishes the "Use of Marks Application Form"
provided by the Intellectual Property Office or Technology Transfer Office of each DLSP School. The study or studies of the proposed usage should be also submitted.
d. The Office of Strategic Communications or its equivalent evaluates the study or studies of the proposed usage and releases the approved design/s based on existing style guides.
e. The Intellectual Property Office or Technology Transfer Office or designee of the Trademark/s owner communicates with the requisitioning member school the result of the request.
9 Adapted from Intellectual Property Manual for De La Salle Philippine Schools. (2021)
11. PROHIBITION OF TRADEMARK USE
To eliminate reputational risks that might arise from irresponsible use and association of DLSL Marks the following restrictions shall be observed:
11.1 Lasallian Partners and students are not permitted to use DLSL name and trademark in connection with any product, image, entity, person, name, or service which is not consistent with its educational purposes and may negatively impact DLSL’s reputation; this includes but is not limited to cigarettes or other tobacco products, alcoholic beverages, firearms, gambling activities, sexually suggestive products, gaming;
11.2 Lasallian Partners and students are not permitted to use DLSL name and trademark in association with any commercial activity that is not official DLSL business;
11.3 Lasallian Partners and students are not permitted to use DLSL name and trademark in connection with partisan political activities; and,
11.4 The Marks shall not be used in any way that discriminates or implies discrimination against any persons or groups based on race, color, religion, national origin, sex, age, sexual orientation, disability, gender identity, and expression, or in any other way that would be a violation of the Institution's anti-discrimination policies.
12. TRADEMARK USE REQUEST
All use of DLSL Marks that are associated with DLSL, must be approved before any item can be ordered and produced. All merchandise bearing the name and Marks for commercial purposes are royalty-bearing at the rate established by the Chief Finance Officer.
The Trademark Request Form (TURF) should be accomplished when faculty, staff, students, and other individuals, businesses and organizations outside DLSL intent to use the names and/or marks of the institution for purposes of sponsorships, lectures, student events, programs, publications, fundraising activities, and retail ventures.
12.1 Process Flow on Trademark Use Request
TURF serves as a tool to control the responsible use of DLSL Marks and the elements of the Marks. TURF is made available and downloadable at the IPTTO services online resources folder at the DLSL website. This should be submitted together with the sample visual study and other related documents to support the purpose of use.
TURF is designed with a two-tier approval system to guarantee the satisfaction of the general criteria of accuracy, appropriateness, and fair share of economic value for the use of DLSL Marks.
13. VISUAL IDENTITY MANUAL
Trademarks define brand positioning, and the brand plays an integral role in DLSL’s marketing. DLSL shall implement a Visual Identity Manual (VMI) to achieve consistency in how DLSL is viewed visually and build brand recognition. The Institutional Communications
Kit and Style Guide of STRATCOMM containing the DLSL Logo Style and Usage Guidelines will serve as the DLSL VMI.
13.1 The Institutional Communications Kit must serve as the official source of information regarding the correct use of the institutional logo, colors, fonts, design style, and use of visuals in a range of applications; and,
13.2 The Office of Strategic Communications (STRATCOMM) must lead and develop the Institution’s brand systems and resources and be responsible for interpreting and ruling on questions regarding the Institution’s Brand to strengthen the member school’s identity.
14. WEBSITE STANDARDS
DLSL website is governed by the web policy and guidelines. The quality and accuracy, and timeliness of the information shall be assured at all times to protect DLSL reputation and image.
STRATCOMM leads the content management of the website. This includes setting-up graphic standards in maintaining consistency and quality in the use of DLSL Marks on its website.
15. SANCTIONS AND ENFORCEMENT
15.1. Violation of the DLSL Trademark Policy for illegal or unethical use will be dealt with in accordance with the provisions of the appropriate administrative manual for Lasallian Partners, and students. 10 Serious Illegal acts involving trademark infringement may be subject to investigation and legal action.
15.2. Any natural or juridical person, except Lasallian Partners, Students, who has been alleged to breach and violate this Policy shall be dealt with under the terms in the preceding article and in accordance with the relevant provisions of IP Code of the Philippines.
15.3. The Intellectual Property and Technology Transfer Office shall take cognizance of the allegation reports, complaints as well as its own observation regarding the possible Trademark Infringements by any person, natural or juridical.
10 The Employee Manual and Student Handbook is available for download at https://www.dlsl.edu.ph/for-partners/
and https://www.dlsl.edu.ph/for-students/respectively.
a. Verification. Verification of the gathered documents and evidences shall follow after such receipt of the report. Verification can take in the form of ocular visits and/or research;
b. Cease and Desist Notices. Upon verifying the possible infringement, and it is found that there are sufficient grounds to assert the IP rights of DLSL, the IPTTO shall release cease and desist notices to the alleged infringer. The said notices will take two forms:
b.1. Verbal Notice. This notice serves as an initial warning of cease and desist order to the alleged infringer to the discontinuance of the infringing DLSL marks on their products or services. The verbal notice is given during the ocular visit.
b.2. Written Notice: If, in the instance, the alleged party does not comply with the prior oral notice, a written notice will be sent. This shall serve as the second warning and might be ground for legal action, if warranted.
c. Legal Action. IPTTO, through the school’s lawyer, shall institute legal action against the infringing party, in accordance with the relevant provisions of the IP Code of the Philippines, if such infringing party does not comply with the terms and conditions set forth in the cease and desist order.
16. LICENSING AGREEMENT
Any individual, organization, or business that wishes to receive a license for the DLSL name and/or marks for use on merchandise but not limited to uniforms, T-shirts, lanyards, mugs, planners, and umbrellas must be an accredited vendor of the Central Purchasing Department (CPD).
Authorized or accredited individuals, organizations, or businesses outside the institution may use DLSL Marks for sale of merchandise if it satisfies the general criteria of accuracy, appropriateness, and fair share of economic value. All merchandise bearing the Marks are royalty-bearing at the rate established by the Vice President for Finance. Only items intended for internal use by DLSL and not offered for resale, are not royalty-bearing.
Negotiations for Trademark Licensing Agreement will be handled by the Resource Generation Office (ResGO). IPTTO will participate in the review of the Licensing Agreement for the assurance of inclusions of the critical elements related to IP including restrictions towards extended licensing.
17. GENERAL PROVISIONS 17.1 Dispute Resolution
A dispute arising from the interpretation or operation of this policy will be handled by the Intellectual Property and Technology Transfer Office in the first instance in consultation with the IP Committee. If the matter cannot be resolved in the IPTTO, the dispute must be referred to a Special Legal Counsel for mediation.
Individuals who wish to appeal to decisions covered by this Policy shall have recourse to the Office of the President whose decision will be final.
17.2 Waiver of Policy
DLSL may grant a waiver of any provision of this policy on a case-by-case basis taking into account the best interest of DLSL and the facts of the particular situation involved. The President of DLSL shall have the sole discretion to waive or vary any or all provisions of the IP Policy.
17.3 Revision
This policy will be reviewed periodically by the IP Committee, or as requested by the President. Amendments may be proposed where the President or the Vice Chancellor for Research and Innovation, as his designate, gives the final approval. In any case, the amendments shall be in full force and effect on the date the amendments have been announced by DLSL.
17.4. Effectivity and Repeal
This Trademark Policy will take effect immediately upon approval by the President on January 05, 2023. Policies inconsistent with this Trademark Policy are deemed repealed.
APPENDIX A
APPROVAL HISTORY Date
(YYYY-MM- DD)
Prepared by: Authorized by: Approved by:
(Secondary) Approved by:
2021-08-06 Girlie L.
Navarro
Br. Dante Jose R.
Amisola FSC
Executive Council
Br. Dante Jose R.
Amisola FSC Girlie L.
Navarro
Br. Edmundo L.
Fernandez FSC
De La Salle Leadership Team
Br. Edmundo L.
Fernandez FSC
REVISION HISTORY Revision
Date (YYYY-MM-
DD)
Author Reason for Changes
2022-11-15 Girlie L. Navarro To conform with the DLSP Intellectual Property Manual:
Guidelines in Developing IP Policy
Reviewed by:
Br. Manuel Pajarillo FSC Atty. Ramel Muria Dr. Sheila Maloles Dr. Edgar Allan Poe Mr. Jay Jaboneta Ms. Sunshine Rivera
2023-01-05
