The first-to-file rule is followed in the Philippines trademark protection. When using identical or similar signs or containers for goods or services that are identical or similar to those for which the trademark is registered, where such use would lead to a likelihood of confusion, the trademark registrant is presumed to be the owner of the mark and has the exclusive right to prevent all third parties without their consent from doing so. As a result, any third party who successfully obtains a trademark registration covering an unregistered trademark may generally appropriate it.
The protection and enforcement of trademarks and other intellectual property rights are typically governed by local laws and regulations, particularly Republic Act (RA) No. 8293 of The Intellectual Property Code of the Philippines, which went into effect on January 1, 1998, was amended by RA No. 10372 in 2013, as well as its implementing rules and regulations and other issuances of the Intellectual Property Office of the Philippines (IPOPHL).
The IP code and the relevant regulations also incorporate and reinforce the Philippines’ commitments under various international treaties and agreements, such as the Paris Convention for the Protection of Industrial Property, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, and the General Agreement on Tariffs and Trade (GATT) Uruguay Round, particularly the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement).
The true owner of a mark may get the rights to a mark by registration, which includes trademarks and service marks. The party who registers first will be given preference. Domestic and International applicants for trademark registration follow the same procedure. However, it is crucial to remember that to complete an application, a candidate must also submit a statement of actual use of the mark in Philippine commerce within three years of applying.
An individual or a legal entity may submit a registration application for a mark (corporation, partnership or association). Non-resident applicants must choose a local agent in the Philippines to whom notifications and legal documents may be delivered.
An application obtains an effective filing date on the day the IPOPHL receives the following:
- A reproduction of the mark,
- A list of the products or services for which registration is requested, an express or implied statement that registration of the mark is sought,
- The applicant’s name, nationality, state of incorporation, complete address, if applicable, and the necessary filing fee.
An IPOPHL trademark examiner reviews the trademark application after submission. An official action paper will be produced outlining why the application cannot be registered as trademark and instructing the applicant to refute the objection or meet additional criteria if the examiner determines that the mark should not be registered for any reason. The applicant has two months (plus a two-month extension) to submit a response from the action paper’s mailing date.
The trademark application will be approved and published for opposition in the IPO Electronic Gazette once the objections have been resolved. Subject to three successive extensions of 30 days each, anybody who feels that registering a mark will violate their rights may register an objection to the application within 30 days of the publication date.
The application will be approved for granting a certificate of registration if no opposition is raised, and the IPOPHL will then issue the certificate of registration. It typically takes six to twelve months to complete the trademark registration procedure (without resistance from a third party).
Having ratified the Madrid Protocol, the Philippines may be mentioned in an international registration from another member state. From the date of the international registration, an international registration designating the Philippines will function in the same way as if an application for the registration of a mark had been submitted directly to the IPOPHL.
A thorough trademark availability search is usually advised to ensure the mark is open for use or registration. The IPOPHL internal and external web databases may be searched once the proposed mark and the covered products or services are identified. Within three to five days, the findings may be made public.
If the use of identical or similar signs or containers for goods or services that are identical or similar to those for which the trademark is registered would lead to a likelihood of confusion, the owner of the registered mark is presumed to have the exclusive right to use the mark and to prevent any third parties without their consent from doing so.
The term “act of infringement” refers to various actions, including those taken before selling products or providing services. It does not just refer to marking, name replacement, or fraudulent usage. No matter whether the items were sold or the services rendered, the law states that the criminal is still responsible.
Philippine law applies the dominancy test to determine what qualifies as a colorable imitation. It states that anybody who uses in commerce a colorable imitation of a registered mark or a dominating feature of one is responsible for damages as a result of the infringement of the registered mark.
Special legislation addressing trademark squatters did not exist. The genuine owner may launch an objection or cancellation action if a trademark squatter files or registers the mark with the IPOPHL. Such trademark squatters might potentially be the target of criminal, civil, and administrative actions for trademark infringement, unfair competition, and other IP offenses under the IP code. Additionally, a civil lawsuit may be brought based on RA No. 386’s or the Philippine Civil Code’s prohibitions against abuse of rights.
The Cybercrime Prevention Act of 2012, also known as RA No. 10175, just made cyber-squatting, or the acquisition of a trademarking domain name over the internet in bad faith with the intent to profit, deceive, harm reputation, or prevent others from registering the same, a felony. According to the legislation, trademark squatters may face a sentence of six to twelve years in jail, a fine of PHP200,000 (US$4,000), a maximum sum proportional to the harm caused, or both.
According to the IP code, whether a registered mark is used, a person who has distinguished in the public’s mind their goods, services, or business from those of others has a property right in the goodwill of the distinguished goods, services, or business which may be protected in the same way as other property rights.
Any person who uses dishonesty or another method that goes against good faith to pass off their own produced or distributed goods, businesses, or services for those of the one who has built up such goodwill or who commits any acts calculated to produce the same result, is engaging in “unfair competition.” The components that must typically be proven for a claim of unfair competition or passing off to be successful are:
- reputation attached to the goods or services;
- Misrepresentation to the public leading, or likely to lead, the public to believe that the goods offered by one are the goods of the owner entitled to protection; and
- Damage or the likelihood of damage suffered because of the erroneous belief.
An unfair competition lawsuit does not require trademark registration.
The parties that have been wronged may take legal, administrative, and criminal action to prevent third parties from violating their trademark rights. These acts can be implemented concurrently and are separate from one another. However, when both criminal and civil processes are started at the same time, the civil proceedings will be put on hold until the criminal proceedings have been adjudicated. The conclusions of the court hearing the criminal case may be viewed as binding on the court hearing the civil case. On the other hand, the administrative case may go forward separately from the criminal or civil processes.