The IP Code of the Philippines (RA 8293), as amended, is the principal 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.
REASONS FOR TRADEMARK APPLICATION REJECTION
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:
- consisting of immoral, deceitful, or scandalous stuff, or matter that disparages or falsely suggests a relationship with living or deceased people, institutions, beliefs, or national symbols, or brings them into discredit;
- consists of the flag, coat of arms, or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;
- consists of a name, portrait, or signature identifying a specific living individual, except with his or her written consent, or the name, signature, or portrait of a deceased president of the Philippines, during the life of his or her surviving spouse, if any, except with his or her written consent;
- is identical to a registered mark belonging to a different owner or a mark with an earlier filing or priority date, in respect of:
- the same goods or services; or
- closely related goods or services; or
- it so closely resembles such a mark as to be likely to deceive or cause confusion;
- is identical or confusingly similar to, or is a translation of, a mark that is considered by the Philippines’ competent authority to be well known internationally and in the Philippines, whether or not it is registered in the Philippines, and is used for identical or similar goods or services, whether or not it is registered in the Philippines. When evaluating whether a mark is well recognized, consideration should be given to the knowledge of the relevant sector of the public rather than the general public, including information gained in the Philippines as a consequence of the mark’s promotion.
- Identical or confusingly similar to, or a translation of, a mark deemed well recognized in line with the previous point that is registered in the Philippines for products or services that are not comparable to those for which registration is sought, where:
- use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark; and
- the interests of the owner of the registered mark are likely to be damaged by such use;
- is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
- consists exclusively of signs that are generic for the goods or services that they seek to identify;
- consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;
- 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;
- consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
- consists of color alone, unless defined by a given form; or
- Is contrary to public order or morality.
Nothing prevents the registration of signs or devices described in the 10th to 12th 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.
Apart from confusion, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
Aside from confusion with a senior mark, descriptiveness and genericness, a mark cannot be registered if it:
- consisting of immoral, deceitful, or scandalous stuff, or matter that disparages or falsely suggests a relationship with living or deceased people, institutions, beliefs, or national symbols, or brings them into discredit;
- consists of the Philippine flag, coat of arms, or other symbols, or any simulation thereof, of the Philippines or any of its political subdivisions, or of any other nation;
- consists of a name, portrait, or signature identifying a specific living individual, except with his or her written consent, or the name, signature, or portrait of a deceased president of the Philippines, except with his or her surviving spouse’s written consent, during the life of the surviving spouse, if any;
- comprises of shapes that may be required by technical considerations, the nature of the commodities themselves, or other elements that impact the intrinsic worth of the items;
- consists of color alone, unless defined by a given form; or
- Is contrary to public order or morality.