In the Philippines, a trademark applicant does not need to have actual use at the time of filing. You may file an application based on bona fide intent to use the mark in commerce. However, IPOPHL requires proof of use at later stages.
This system allows startups and new product launches to secure their rights early, without waiting for actual sales. For example, filing before a public product launch helps prevent competitors from registering the same or a confusingly similar mark.
The procedure generally follows these steps:
- Application filing → IPOPHL assigns an application number.
- Formality examination → Checks compliance with documentary requirements.
- Substantive examination → IPOPHL examines distinctiveness, descriptiveness, and likelihood of confusion.
- Publication for opposition → Third parties may oppose the application.
- Allowance and registration → If no opposition is sustained, IPOPHL issues a Certificate of Registration.
Proof of Use: A Critical Requirement
Unlike in some countries where registration can be purely defensive, in the Philippines proof of use is mandatory:
- Declaration of Actual Use (DAU) must be filed within three years from the filing date, and again on the fifth year to maintain the registration.
- If no DAU is filed, the application or registration is vulnerable to cancellation.
This ensures trademarks are genuinely used in trade, rather than stockpiled.
Strategic Benefits of Early Filing
- Priority: Your filing date acts as a priority date, making it harder for later applicants to claim the same or confusingly similar mark.
- Defensive value: Filing before launch allows you to market confidently, knowing that others cannot preempt your registration.
- Enforcement: A pending application can already deter competitors and be cited during opposition or infringement disputes.
Philippine Case Example
In W Land Holdings, Inc. vs. Starwood Hotels and Resorts Worldwide, Inc. (IPOPHL, BLA Case No. 14-2012-00004), IPOPHL emphasized that failure to prove actual use can defeat a registration, even if the applicant filed earlier. This underscores why submitting accurate DAUs is just as important as filing early.
Another practical example is the long-running disputes involving “Ivy” and “Ivory” brands. Even though one party filed earlier, the lack of proof of consistent use weakened its claim during opposition.
Copyright Note: Packaging and Branding Elements
Entrepreneurs should remember that copyright may also protect creative elements of branding, such as logos, product packaging, and original advertising material. This protection arises automatically upon creation, without registration, but registering both a trademark and copyright can give stronger enforcement tools.
Practical Tips for Startups
- File your application with IPOPHL before launching.
- List only the goods/services you realistically intend to use.
- Be prepared to file DAUs with acceptable evidence (e.g., labels, advertising, receipts).
- Avoid rushing your DAU submission—make sure you meet the legal standards of use in commerce.
- If you are a foreigner, you must appoint a local IP agent (e.g., Brealant, Federis, or Hechanova) to represent you.
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