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The IP Code of the Philippines (RA 8293), as amended, is the primary source of trademark rights in the Philippines. The Trademark Regulations of 2017 (Intellectual Property Office of the Philippines (IPOPHL) Memorandum Circular 17-010) should be studied in combination with the IP Code.
In the Philippines, the first-to-file trademark system is used. The rights to a trademark are gained by proper registration in line with the law. Even if they are not registered in the Philippines, well-known marks are protected in the Philippines.
The application or registration of a trademark does not give ownership; rather, it is the ownership of a trademark that conveys the right to register the same, according to jurisprudence. As a result, in the Philippines, bad-faith registration is prohibited, as the trademark applicant must be the real and legitimate owner of the mark.
The IP Code is the statutory source of the trademark registration scheme in the Philippines. The Trademark Regulations of 2017 should be studied in combination with the IP Code.
Under the law, what forms of designations or other identifiers are allowed to be used as trademarks?
A ‘Trademark,’ according to the IP Code, is any visible indication capable of distinguishing an enterprise’s goods (trademark) or services (service mark), including a stamped or marked container of goods. As a result, any visual symbol, such as the following, can be registered as a trademark in the Philippines:
As a result, the following marks cannot be registered in the Philippines since they are not clearly discernible:
To execute the source-identifying role of a trademark, a trademark must be distinctive – that is, it must be able to identify the source of the items to which it is attached, as well as distinguish the owner’s goods or services from those of others. As a result, descriptive marks and generic marks cannot be registered in the Philippines (unless they have gained secondary meaning).
In the Philippines, marks that fall under any of the absolute or relative reasons for rejection cannot be registered. According to the IP Code, a trademark cannot be registered if it:
Nothing prevents the registration of signs or devices described points above if they have become unique in respect to the items sought to be registered as a consequence of their usage in commerce in the Philippines. The applicant’s practically exclusive and continuous use of the mark in commerce in the Philippines for five years prior to the claim of uniqueness may serve as prima facie proof that the mark has become distinctive.
The Intellectual Property Office of the Philippines is the regulating agency in charge of the registration procedure (IPOPHL). IPOPHL’s Bureau of Trademarks is responsible for assessing applications for trademark registration and providing registration certificates.
The fees that IPOPHL charges are as follows:
Additional fees will be incurred if color or convention priority is claimed.
Yes. The Nice Classification scheme is used by IPOPHL. Each registration must list the products or services by their names, grouped by the Nice Classification’s classes, and each group must be preceded by the number of the Nice Classification’s class to which that group of goods or services belongs, in the order of the Nice Classification’s classes. The Nice Classification will be based on the World Intellectual Property Organization’s most recent version.
Applications for the entire class are not permitted. The applicant must include the products or services for which registration is requested, organized by Nice Classification classes, as well as the number of the class to which each group of goods or services belongs.
To be eligible for registration, an applicant must have a genuine intention to use the trademark for the products or services listed in the application.
When submitting a trademark application, no statement of bona fide intention to use the trademark for the products or services listed in the application is necessary. However, within the following timeframes, a declaration of actual use (DAU) must be filed:
If a DAU is not filed, the mark will be removed from the Trademark Register. Furthermore, if the registered owner of a trademark fails to use the mark in the Philippines, or causes it to be used in the Philippines by virtue of a license, for an unbroken period of at least three years, the trademark can be revoked at any time.
Yes. IPOPHL examines trademark applications on a case-by-case basis. According to the IP Code, a trademark cannot be registered if:
IPOPHL conducts a formality check to see if the application meets the following standards for granting a filing date:
Following that, IPOPHL undertakes a substantive assessment to see if the mark falls within any of the absolute reasons for denial, in addition to the relative examination.
Apart from being confused with a senior mark, being descriptive, and being generic, a mark cannot be registered if it:
There is no longer a supplementary register in the Philippines where descriptive marks can be filed. IPOPHL permitted descriptive marks to be registered on the supplemental register prior to the implementation of the IP Code. The IP Code, on the other hand, now only allows for one register. Trade names and trademarks registered in the supplementary register under the previous trademark legislation remained in effect when the IP Code was enacted, although they could no longer be renewed.
However, nothing in the IP Code prevents the registration of any descriptive mark that has become distinctive in connection to the applicant’s products or services as a consequence of its usage in commerce in the Philippines. The applicant’s practically exclusive and continuous use of the mark in commerce in the Philippines for five years prior to the claim of uniqueness may serve as prima facie proof that the mark has become distinctive.
No. Before the application is published in the IPOPHL e-Gazette, a third party cannot object to the registration of a mark. Only after a mark has been published for opposition purposes may an opposition be filed.
No. The registration of a mark is not contingent on its commercial usage. As a result, even if a mark has not yet been used in commerce, an applicant can submit a trademark application for it. A DAU, on the other hand, must be filed within the following time frames:
If a DAU is not filed, the mark will be removed from the Trademark Register. Furthermore, if the registered owner of a trademark fails to use the mark in the Philippines, or causes it to be used in the Philippines by virtue of a license, for an unbroken period of at least three years, the trademark can be revoked at any time.
IPOPHL typically takes two months to issue the first office action once the application is filed. IPOPHL will issue a notice of allowance in lieu of an office action if no office action is issued.
IPOPHL normally takes two to five months from the time the application is filed to the time the notice of authorization for publication of the mark is issued.
The trademark examiner’s final judgment can be appealed to the director of the Philippine Intellectual Property Office’s Bureau of Trademarks (IPOPHL). Within two months after the mailing date of the decision being appealed, the appellant must file a notice of appeal and pay the requisite fees. The appellant or his or her attorney of record must sign the notice of appeal, which must state the reasons for the appeal.
The appellant must provide a brief outlining the authorities and grounds on which he or she bases the appeal within two months of filing the notice of appeal. If the brief is not filed within this deadline, the appeal will be dismissed.
Unless a move for reconsideration is filed with the director or an appeal to the director general of IPOPHL is finalized during that time, the director’s decision becomes final and executory 30 days after receipt of a copy by the appellant. There may only be one move for reconsideration. However, for the purposes of initiating an appeal with the director general, a move for reconsideration is not needed.
The director general of IPOPHL’s decision can be appealed to the Court of Appeals by filing a petition for review within 15 days of the decision’s notice, as per the Rules of Court.
The Court of Appeals’ judgment can be appealed to the Supreme Court by submitting a petition for review on certification within 15 days of the decision’s notice, as required by the Rules of Court.
Yes. Once a trademark application has been published in the Intellectual Property Office of the Philippines (IPOPHL) e-Gazette for opposition purposes, a third party can file an objection.
Anyone who feels that the registration of a trademark will do him or her harm may file an objection to the trademark application.
For opposition purposes, a notice of opposition to a trademark application must be filed within 30 days following the mark’s publication in the IPOPHL e-Gazette. The opposing party, on the other hand, may file up to three applications for 30-day extensions of time to file notices of objection.
If no opposition is filed within 30 days of the mark’s publication, it is deemed registered on the next calendar day after the opposition period has expired.
The Bureau of Legal Affairs is the IPOPHL division that hears and resolves on oppositions to trademark registration applications.
The typical procedure for handling an opposition is as follows:
Within 10 days of receiving the judgment or final order, the appellant may submit an appeal with the director of IPOPHL’s Bureau of Legal Affairs. The appellant has 30 days from the date of receipt of the director’s decision to file a memorandum of appeal with IPOPHL’s director general.
The director general’s decision can be appealed to the Court of Appeals by filing a petition for review within 15 days of the decision’s notice, as per the Rules of Court. The Court of Appeals’ judgment can be appealed to the Supreme Court by submitting a petition for review on certification within 15 days of the decision’s notice, as required by the Rules of Court.
Owners of trademarks that are not registered in the Philippines might file an unfair competition complaint. Anyone who has distinguished his or her business, goods, or services from those of competitors in the minds of the public – whether or not a registered mark is used – has a property right in the goodwill of that business, goods, or services, which will be protected in the same way as other property rights, according to the IP Code.
The IP Code protects well-known brands, even if they are not registered in the Philippines. The IP Code states that a mark cannot be registered if it is identical or confusingly similar to, or constitutes a translation of, a well-known mark used for identical or similar goods or services both internationally and in the Philippines, regardless of whether the well-known mark is registered in the Philippines.
The IP Code further stipulates that trade names are protected against any unlawful conduct perpetrated by other parties, even if they are not registered. Any subsequent use of a trade name by a third party – whether as a trade name, trademark, or collective mark – or any use of a similar trade name or trademark that is likely to mislead the public is prohibited.
The application or registration of a trademark does not give ownership; rather, it is the ownership of a trademark that conveys the right to register the same, according to jurisprudence. As a result, in the Philippines, bad-faith registration is prohibited, as the trademark applicant must be the real and legitimate owner of the mark. As a result, the genuine owner of a trademark might initiate a cancellation or objection action against registered or sought-after marks.
The rights to a trademark must be secured through a legally recognized registration.
Except in the case of IP Code-authorized imports of drugs and medicines and off-patent drugs and medicines, the owner of a registered mark has the exclusive right to prevent third parties from using identical or similar marks for identical or similar goods or services in the course of trade, where such use would cause confusion. A possibility of confusion must be inferred in the case of the use of an identical sign for identical products or services. As a result, the owner of a registered trademark can sue trademark infringers for infringement.
A certificate of trademark registration also serves as prima facie proof of the registration’s validity, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in connection with the products or services stated in the certificate.
No. There is no longer a supplementary register in the Philippines where descriptive marks can be filed. The IP Code currently only allows for one register.
A trademark infringement might be prosecuted in civil, criminal, or administrative court. The remedies available against a trademark offender vary depending on the type of complaint filed:
Despite the fact that trademark dilution was referenced in a Supreme Court decision in 2005, the IP Code does not provision for it.
Yes. In addition to infringement, the IP Code allows remedies for additional injuries to trademark rights, including:
A trademark infringement may face administrative, civil, or criminal action, as follows:
Administrative case: A trademark infringement administrative case is initiated by filing a verified complaint with IPOPHL’s Bureau of Legal Affairs (BLA). In administrative cases for infringement of legislation regarding IP rights, the BLA has initial jurisdiction if the total damages sought are not less than PHP 200,000.
Civil case: A trademark infringement legal action is started by submitting a verified complaint with the appropriate court.
Criminal case: A trademark infringement criminal prosecution is started by submitting a complaint with the prosecutor. The prosecutor will undertake a preliminary investigation to establish if there are adequate reasons to believe that trademark infringement has occurred and that the respondent is most likely guilty and should face trial.
Register your brand nowActions for trademark infringement are subject to the following limits under the IP Code:
Other defenses that are available are as follows:
The court’s judgment in criminal and civil matters, as well as the director general’s decision in administrative cases, can be appealed to the Court of Appeals by submitting a petition for review within 15 days of notification of the decision, as required by the Rules of Court. The Court of Appeals’ judgment can be appealed to the Supreme Court by submitting a petition for review on certiorari within 15 days of the decision’s notice, as required by the Rules of Court.
A certificate of registration is valid for ten years and can be renewed for another ten years after it expires by paying the appropriate fee and filing a request.
A declaration of actual use (DAU) must be made within the following time frames in order to keep a trademark or renew a registration:
If a DAU is not filed, the mark will be removed from the Trademark Register.
The IP Code allows for the cancellation of a trademark for the following reasons:
The Philippines’ Intellectual Property Office (IPOPHL) cannot revoke a trademark registration on its own. Anyone who feels that the ongoing registration of a trademark would do them harm must file a trademark cancellation petition.
The cancellation petition must be in written, validated, and supported by a non-forum shopping certification. The petition must be submitted in duplicate and include proof of service to the respondent, as well as the following information:
Within 10 days of receiving the judgment or final order, the appellant may submit an appeal with the director of IPOPHL’s Bureau of Legal Affairs. The appellant has 30 days from the date of receipt of the director’s decision to file a memorandum of appeal with IPOPHL’s director general.
The director general’s decision can be appealed to the Court of Appeals by filing a petition for review within 15 days of the decision’s notice, as per the Rules of Court. The Court of Appeals’ judgment can be appealed to the Supreme Court by submitting a petition for review on certification within 15 days of the decision’s notice, as required by the Rules of Court.
According to the IP Code, any licensing contract relating to the application or registration of a mark must include provisions allowing the licensor to effectively regulate the quality of the licensee’s products or services in connection with which the mark is used. If the license contract does not allow for such quality control, or if such quality control is not carried out properly, the license contract is void.
A license contract does not need to be filed with the Philippine Intellectual Property Office. A license contract, on the other hand, has no legal impact against third parties until it is properly registered.
Any licensing contract must allow for effective control by the licensor of the quality of the licensee’s goods or services in connection with which the mark is used, according to the IP Code. If the license contract does not allow for such quality control, or if such quality control is not carried out properly, the license contract is void.
To keep a trademark in the Philippines, a declaration of actual use (DAU) must be filed. The mark will be removed from the registry if a DAU is not filed. Furthermore, if the registered owner of a trademark fails to use the mark in the Philippines, or causes it to be used in the Philippines by virtue of a license, for an unbroken period of at least three years, the trademark can be revoked at any time.
Thus, if the licensor does not utilize the trademark in the Philippines and the licensing contract does not allow the licensor to effectively regulate the quality of the licensee’s goods or services, the usage of the local licensee will not benefit the licensor. As a result, the trademark may be subject to cancellation or revocation if it is not used in the Philippines.
In the Philippines, unregistered well-known trademarks are protected. The IP Code states that a mark cannot be registered if it is identical or confusingly similar to, or is a translation of, a well-known worldwide and Philippine mark that is used for identical or comparable products or services, regardless of whether the mark is registered in the Philippines.
The following factors, or any combination of them, may be used to determine if a mark is widely known:
Owners of trademarks that are not registered in the Philippines can also file an unfair competition complaint. Anyone who has distinguished his or her business, goods, or services from those of competitors in the minds of the public, whether or not a registered mark is used, has a property right in the goodwill of the business, goods, or services, which will be protected in the same way as other property rights, according to the IP Code.
The application or registration of a trademark does not give ownership; rather, it is the ownership of a trademark that conveys the right to register the same, according to jurisprudence. As a result, in the Philippines, bad-faith registration is prohibited, as the trademark applicant must be the real and legitimate owner of the mark.
Yes. Because the Philippines are a signatory of the Paris Convention, the Intellectual Property Office of the Philippines allows the registration of a mark based on a foreign or international registration. According to the Paris Convention, a foreign applicant can claim the priority date of a preceding foreign application provided the application is filed within six months of the foreign application’s filing date.
The Philippines is also a signatory to the Protocol Relating to the Madrid Agreement Concerning International Trademark Registration. By naming the Philippines in the application for international registration, a foreign applicant might seek protection in the Philippines under the Madrid Protocol.
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