Trademark practitioners always find it challenging when the examiner issues an office action objecting to the application for being descriptive. To overcome the objection, the agent goes thru an iterative process of selecting the factors that would be acceptable to the client, which would persuade the examiner to allow the application, e.g., amending the goods or services, and/or arguing that the proposed mark is not descriptive and submitting proof of secondary meaning, or arguing that the mark is only suggestive. Amending the mark to include another word or device is not allowed during the examination of the trademark application, so this option is not available. Though the distinction may appear subtle, it determines whether a mark is registrable at all, and whether it can enjoy broad protection against competitors. Recent and past Philippine jurisprudence offer some guidance of how the Intellectual Property Office of the Philippines (IPOPHL) and the Supreme Court draw this line. 

Spectrum of distinctiveness 

. In the case of Kolin Electronics Co., Inc., v. Kolin Philippines International, Inc., (G.R. No. 228165, February 9, 2021), the Supreme Court discussed the spectrum of distinctiveness, indicating the strength of a mark based on its degree of distinctiveness, to wit:  

1. Coined or fanciful marks. Invented words or signs that have no real meaning (e.g., Google, Kodak). These marks are the strongest and have the greatest chance of being registered. 

2. Arbitrary marks. Words that have a meaning but have no logical relation to a product (e.g., Sunny as a mark covering mobile phones, Apple in relation to computers/phones). 

3. Suggestive marks. Marks that hint at the nature, quality or attributes of the product, without describing these attributes (e.g., Sunny for lamps, which would hint that the product will bring light to homes). If not considered as bordering on descriptive, this may be allowed. 

4. Descriptive marks. Words that describe the feature of the product such as quality, type, efficacy, use, shape, etc. The registration of descriptive marks is not allowed under the IP Code, unless it has acquired secondary meaning which must be proven. 

5. Generic marks. Words or signs that name the species or object to which they apply (e.g., Chair in relation to chairs). They are not registrable. 

Descriptive versus suggestive marks.  

Under the IP Code, a mark is not eligible for registration if it consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services. However, this prohibition is not absolute since the IP Code also provides that nothing shall prevent the registration of a sign or device which has become distinctive in relation to the goods for which registration is requested as a result of its commercial use in the Philippines. Thus, while descriptive marks are ordinarily barred, they may still be registered upon proof of acquired distinctiveness or secondary meaning, with prima facie evidence being five years of substantially exclusive and continuous use in Philippine commerce. 

If there is insufficient proof of secondary meaning or acquired distinctiveness, the applicant may instead argue that the mark is not descriptive at all, but merely suggestive. Unlike descriptive terms, suggestive marks do not directly describe a product’s qualities or characteristics; rather, they require a degree of imagination, thought, or perception to connect the mark with the goods. Because of this indirectness, suggestive marks are inherently distinctive and registrable in the Philippines without proof of acquired distinctiveness. Having established that suggestive marks are inherently registrable while descriptive marks face statutory bars unless they acquire distinctiveness, the following cases are instructive.  

Changing the spelling of a word 

The director of the Bureau of Trademarks rejected the application of Korean Beauty Corp. for the mark PURE KORAGEN USHI (BOVINE COLLAGEN), for being descriptive. The mark covered the goods “dietary food supplements, dietary supplements, dietary and nutritional supplements,” under Class 5 of the Nice Classification. The reasoning was straightforward: “PURE” is laudatory, while “KORAGEN” resembles “collagen,” directly pointing to the product’s ingredient or function. Even with the altered spelling, consumers would likely perceive the mark as describing the product’s essential qualities. The appeal was docketed as 04-2024-016 and was decided by the Office of the Director General (ODG) on July 3, 2025. 

Sustaining the rejection by the BOT director, the ODG held that descriptiveness is assessed based on the goods covered by the mark, and in this instance, imagination is not required to arrive at a conclusion that what are being offered for sale are dietary supplements which contain PURE BOVINE COLLAGEN (PURE KORAGEN USHI). The ODG found that Korean Beauty merely rearranged the words to avoid a direct association with the descriptive connotation of the mark. What remained clear is that, despite such “rearrangement” and translation, these are not sufficient to overcome the obvious descriptiveness of the mark. The ODG explained that the doctrine of foreign equivalents is applicable in this case, as “KORAGEN USHI” is the descriptive ingredient of “BOVINE COLLAGEN”, with ushi being a Japanese word for cow. The ODG emphasized that descriptive marks – particularly in sensitive fields like pharmaceuticals and health – are not registrable absent strong evidence of acquired distinctiveness. This decision highlights a common pitfall: merely tweaking spelling does not rescue a term if its descriptive significance remains obvious to the target market. 

Proving secondary meaning for descriptive marks 

In the landmark case of the mark “GINEBRA”, which involved the consolidation of five cases between Ginebra San Miguel and Tanduay Distillers, both leading companies in the liquor business in the Philippines, and the IPOPHL, the common issue was whether the mark “GINEBRA” for gin products is generic or distinctive (G. R. No. 196372, August 9, 2022). It started when San Miguel filed the said application which the IPOPHL rejected claiming that “GINEBRA” is a generic term since it is the Spanish word for gin, applying the doctrine of foreign equivalents.  

The Supreme Court, citing Sec. 151.1 (b) of the IP Code, however, stated that in determining whether a mark is generic or not, the primary significance of the registered mark to the relevant public must be considered, rather than purchaser motivation. In coming out with its conclusion, the Supreme Court considered the applicability of the foreign equivalents doctrine.  

Under this doctrine, resorting to dictionary translations where a foreign word ought to be considered generic with respect to a certain product if the English translation thereof is likewise generic concedes a generic meaning in relation to such product. This doctrine, is not absolute and accepts of exceptions when, based on the test of primary significance pursuant to public perception, the relevant public has placed a different or alternate meaning or assessment to a foreign word. In the instant case, San Miguel presented two consumer survey evidences done by an independent research firms which complied with the parameters set forth to establish their credibility. 

The Supreme Court gave weight to the surveys since they were shown to have reliably established the true state of mind of gin drinkers and addressed the precise legal question before the Court, i.e., how the appropriate group of consumers, in this case gin -drinkers, perceive Ginebra San Miguel’s “Ginebra” gin product. The survey results revealed that an overwhelming majority of the gin-consuming public (90 percent of the respondents) primarily identified the word “GINEBRA” with San Miguel’s brand of gin products. The Supreme Court hence, ruled that the mark GINEBRA is not generic, and registrable as a descriptive mark which has acquired distinctiveness by secondary meaning. 

The strength of suggestiveness 

In the case of Société des Produits Nestlé, S.A. v. Court of Appeals (G.R. No. 112012, April 4, 2001), Société des Produits Nestlé and its licensee Nestlé Philippines, opposed CFC Corporation’s application for “FLAVOR MASTER” for instant coffee, invoking its own long-used marks “MASTER ROAST” and “MASTER BLEND”. Nestlé asserted that the common word “MASTER” was the dominant element of its marks, heavily reinforced by nationwide advertising campaigns that associated its coffee with mastery, expertise, and perfection, even using prominent personalities like basketball player Robert Jaworski and media personality Ric Puno Jr. as endorsers under the theme of “masters.” CFC argued that its trademark, FLAVOR MASTER, is not confusingly similar with the former’s trademarks, MASTER ROAST and MASTER BLEND, alleging that, “except for the word MASTER (which cannot be exclusively appropriated by any person for being a descriptive or generic name), the other words that are used respectively with said word in the three trademarks are very different from each other – in meaning, spelling, pronunciation, and sound.”  

The Bureau of Patents, Trademarks and Technology Transfer (BPTTT) denied CFC’s application for registration, and CFC appealed the decision. Importantly, the Supreme Court rejected CFC’s argument that “MASTER” was descriptive or generic. It ruled that “MASTER” is a suggestive term, and therefore may legally be protected – it does not describe coffee per se, but instead evokes the idea of expertise and mastery, requiring imagination to link it to the product. Suggestive terms, by their nature, are registrable and entitled to protection without proof of secondary meaning.