Trademark Registration – Philippines
Everything you need to know about trademark registration in the Philippines
A. OWNERSHIP OF MARKS
Who is eligible to apply for registration?
A trademark applicant can be a natural person or a legal entity. A trademark application can be filed in the names of many parties. Foreign applicants who are not domiciled in the country or who do not have a real and effective commercial establishment there must have a resident representative who will be served with notifications or processes in proceedings involving the mark.
B. SCOPE OF TRADEMARK
What can be protected and registered as a trademark, and what can’t?
A trademark, according to Republic Act No. 8293 (the IP Code), is any visible sign capable of distinguishing an enterprise’s goods (trademark) or services (service mark) and includes a stamped or marked container of goods. Collective marks can be registered, and for the purposes of substantive investigation, they are regarded the same as ordinary trademarks.
Non-visually detectable marks such as sound, touch, taste, and smell have yet to be granted protection in the Philippines, while other non-traditional marks such as three-dimensional marks, position marks, holographic marks, and motion marks are recognized.
If a mark falls within one of the absolute or relative reasons for denial listed in Section 123 of the IP Code, it cannot be registered in the Philippines. Immoral, generic, descriptive, non-distinctive, and customary marks are absolute grounds, whereas confusing similarity with previously registered or earlier-filed marks, as well as marks that have been declared well known internationally and in the Philippines, is a relative ground. Descriptive marks, such as a color or shape, may be registered if they become unique in connection with the applicant’s goods or services after significant commercial usage in the Philippines for at least five years prior to the claim of distinctiveness.
C. UNREGISTERED TRADEMARKS
Can trademark rights be established without registration?
In the Philippines, trade names and business names are protected without the requirement for prior registration. Concerning the same or similar goods and services for which the marks are well known, well-known marks are also awarded protection in the Philippines without the requirement for prior usage or registration.
The notion of prior use as a basis for trademark ownership was established by previous rulings under the Old Trademarks Law. However, the Philippine Supreme Court recently declared, in Zuneca Pharmaceutical v Natrapharm, Inc, GR No. 211,850, on September 8, 2020, that ownership is no longer based on prior use for marks first used or registered after the IP Code went into effect on January 1, 1998. This resulted from the IP Code’s explicit acceptance of the first-to-file rule, as well as the rule that trademark ownership is gained through registration. A registered mark, however, has no effect against a mark that was used in good faith before the registered mark’s filing or priority date. Furthermore, whether a registered mark is used, a person who has identified his or her goods and services in the minds of the public has a property right in the goodwill created and may protect the right under unfair competition rules. As a result, evidence of bad faith or fraudulent intent may be used to invalidate a certificate of registration, such as the registrant’s knowledge of another party’s prior creation, use, or registration of an identical or similar mark, or making intentionally false claims to take advantage of another party’s goodwill (or all of the above), particularly on issues of origin, ownership, and use of the trademark in question, causing damage or prejudice to another party.
D. FAMOUS FOREIGN TRADEMARKS
Is a well-known foreign trademark protected even if it isn’t utilized in the United States? If that’s the case, does the foreign trademark have to be well-known in the United States? What proof is needed? What security is provided?
The IP Code protects marks that are considered well known internationally and in the Philippines by a competent authority in the Philippines, regardless of whether they are registered in the Philippines. Its exclusivity is limited to identical or similar goods and services for which it is well known if it is not registered. If it is registered in the Philippines, however, the exclusive right to use the mark extends even to unrelated goods and services, as long as such use would show a connection with the registrant to the registrant’s detriment.
When determining whether a mark is well recognized, consideration should be given to the relevant segment of the public rather than the public, including information gained in the Philippines as a result of the mark’s promotion.
The competent Philippine authorities employ the following criteria to establish if a trademark is well-known:
a market share of the goods or services to which the mark applies in the Philippines and other countries; a duration, scope, and geographical area of any use of the mark; a market share of the goods or services to which the mark applies in the Philippines and other countries; a market share of the goods or services to which the mark applies in the Philippines and other countries; a market share of the goods or
- a measure of the mark’s inherent or acquired distinctiveness.
- the mark’s quality image or repute.
- The number of times the mark has been registered around the world.
- a trademark’s worldwide registration exclusivity.
- a measure of how widely the mark has been utilized over the world.
- the world-wide exclusivity of use acquired by the mark.
- the worldwide commercial worth attached to the trademark.
- a track record of successfully defending the mark’s rights.
- The outcome of any litigation involving the question of whether the mark is well-known; and
- Whether or not there are any same or similar marks that are legitimately registered for or used on identical or similar goods or services and are held by anybody other than the person who claims the mark is generally recognized.
For a mark to be regarded well known, no single characteristic is determinate, and not all of the criteria must be met. The mark’s use and popularity in the Philippines is just one of many factors to consider.
E. THE BENEFITS OF REGISTRATION
What are the benefits of registration?
In the Philippines, trademark rights are granted by a valid registration under the IP Code. The owner of a registered mark has the sole right to prohibit all third parties from using identical or similar marks concerning the same or similar goods or services for which the mark is registered.
A certificate of trademark registration provides prima facie evidence 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 goods and services specified, as well as those related to them. A likelihood of confusion is assumed in the case of an identical sign for equivalent goods or services.
Only the owner of a registered mark has the right to sue an identical or confusingly similar mark for trademark infringement. Border enforcement measures by the Bureau of Customs and administrative enforcement measures by the Intellectual Property Rights Enforcement Office of the Philippine Intellectual Property Office are also available to the registered owner (IPOPHL).
F. FILING PROCEDURE AND DOCUMENTATION
What types of documents are required to file a trademark application?
What are the regulations that govern how the mark is represented in the application? Is it possible to file documents electronically? Is it possible to conduct a trademark search before filing a trademark application, or is it required? If so, what are the procedures and costs?
To complete a basic trademark application, you’ll need the following:
- a completed application forms.
- a reproduction of the mark sought to be registered; and
- a copy of the power of attorney (POA) signed by the applicant or its authorized representative.
A POA is not required for a file number and filing date to be assigned to an application. A POA can be submitted later, but it is required for an application to move forward to the substantive examination stage. The POA does not require the attestation, notarization, authentication, legalization, or other verification of any signature or other methods of self-identification.
Trademark applications must be filed and paid for online through the IPOPHL’s eTMfile system, according to IPOPHL Memorandum Circular No. 2020-013 and subsequent issuances.
The filing of a trademark application does not require a trademark search. However, before filing an application, private organizations may undertake a trademark search using the IPOPHL–World Intellectual Property Organization online Philippine Trademark Database or the Association of Southeast Asian Nations TMView to establish the relative registrability of a mark. The IPOPHL eTMfile system also has a built-in trademark search engine that is free to use. The IPOPHL online database, on the other hand, is not updated in real time, and its search function only searches previously filed applications or registered trademarks. A trademark search on the IPOPHL online trademark database will not uncover any other registrability difficulties.
G. REGISTRATION TIME FRAME AND COST
How long does it usually take to secure a trademark registration, and how much does it cost? When does registration become formally effective? What factors would cause the time and expense of filing a trademark application and acquiring a registration to increase?
Within six months of filing, an uncomplicated application is frequently given registration. IPOPHL action papers issued during the substantive examination of the mark prior to publication for opposition, or the filing of an opposition against the application during the opposition period, or both, can extend this period.
The day after the opposition period expires, or the day after the order refusing the opposition becomes final and executory, a mark is regarded registered. If the Issuance and Second Publication Fees are not paid on time, an application may still be abandoned after the opposition period has expired.
The government charges 5,769.52 Philippine pesos for a simple trademark registration that covers one mark in one class. The filing fee for a trademark application is multiplied by the number of classes covered, including color and priority claim expenses. Except for the Declaration of Actual Use (DAU) and the Request for Renewal of Registration, all subsequent government fees are set per application. There are no fees charged by the government for responding to IPOPHL action documents.
H. CLASSIFICATION SYSTEM
What classification system is used, and how does it differ from the International Classification System in terms of claimable products and services? Is it possible to use multi-class apps, and what are the projected cost savings?
When reviewing an application, the IPOPHL uses the most recent version of the Nice Classification of Goods and Services.
The Philippines has a Multi-class system. Additional publishing and issuance government fees (3,151.60 Philippine pesos) are avoided with a multi-class application since they are charged per-application rather than per-class. Objections to a specific class, on the other hand, harm the entire application in multi-class applications.
I. EXAMINATION PROCEDURE
When deciding whether to grant a trademark registration, what procedure does the trademark office use? Are trademark applications checked for potential trademark conflicts? Is it possible to overcome an objection based on a third-party mark with a letter of consent? Is it possible for applicants to respond to trademark office rejections?
Following the completion of the formal criteria, an application is subjected to substantive examination, during which the examiner evaluates whether the trademark is registrable under section 123 of the IP Code. Confusing likeness to existing registrations or marks with earlier filing or priority dates is one of the related reasons under section 123. The first-to-file and first-to-register rules apply to the examination process. Prior use, ownership, well-known status, and bad faith registration claims cannot be decided by the examiner; they must be handled in a valid inter parties or IP violation case.
If a Registrability Report or Notification of Provisional Refusal is given, the applicant has two months to respond to the examiner’s objections from the date of mailing or digital signing, respectively. On request and payment of the extension cost, this term can be extended for another two months. In a subsequent action, the examiner may reiterate or raise new objections, which must be responded to within two months of its mailing date. Within two months of the mailing date, a final action or refusal may be appealed to the Director of Trademarks.
When the examiner’s objection is founded on relative grounds, a letter of consent or co-existence may provided. However, the examiner has the last say on whether this is enough to overcome the objection, especially if there is a considerable risk of public confusion or deception.
J. USE OF A TRADEMARK AND REGISTRATION
Is it necessary to claim use of a trademark or service mark before registration is approved or issued? Is it necessary to present proof of use? Are priority rights granted to international registrations? Is there a point at which registration must begin to be used in order to keep the registration or to defeat a third-party challenge based on non-use?
The use of a trademark is not essential for registration, but it is required to keep a trademark application or registration current, whether national or via the Madrid Protocol. There is no time limit on when you must start using the mark. However, a DAU must be presented together with proof of use of the mark within specific time frames, the earliest of which is three years from the date of filing, foreign registration, or subsequent designation. Failure to file the DAU within any of the deadlines will result in the application being automatically denied or the mark being removed from the Trademarks Register. If a trademark registration has not been utilized in the Philippines for at least three years without a good reason, it maybe subject to a third-party revocation action.
In compliance with the Paris Convention, the Philippines gives international applicants priority. As a result, a Philippine application maybe regarded submitted as of the filing date of an earlier foreign application, but it cannot be registered in the Philippines until the priority application has been filed. The Philippine application must be filed within six months after the priority application in order to claim Paris Convention priority.
What words or symbols can be used to show that a trademark is in use or has been registered? Is it necessary to mark? What are the advantages of utilizing such words or symbols, as well as the risks of not doing so?
It is not necessary to use the terms ‘Registered Mark’ or ®. If the trademark infringed contains such terms, the infringer is presumed to have knowledge of the possibility of confusion, allowing the registrant to recover profits or damages in an infringement action.
L. APPEALING A DENIED APPLICATION
Is there an appeal process if the application is denied?
A trademark application denial can be appealed by filing a notice of appeal with the director of trademarks within two months of the final refusal’s mailing date, and the appellant’s brief within another two months.
Within 30 days of receiving the decision, the director of trademarks’ decision may be appealed to the Office of the Director General (ODG). Within the same time frame, the applicant may also file a motion for reconsideration with the director of trademarks, but this is not required for an appeal to the ODG. If the appellant files a move for reconsideration and it is denied, he or she has 30 days from the date of the final order to file an appeal with the ODG.
An appeal to the ODG is perfected by filing an appeal memorandum that includes proof of service to the appeal and the relevant bureau director, as well as proof of payment of the appeal fee and additional fees. On valid motion and payment of the applicable fees, the time limit for filing an appeal may be extended by 15 days. The appeal must be filed through the Office of the Director General’s email address, firstname.lastname@example.org, in accordance with IPOPHL Memorandum Circular No. 2020-041 or the Revised Uniform Rules on Appeal in the Office of the Director General.
The decision of the Office of the Director of Government (ODG) can be appealed to the Court of Appeals (CA) by filing a petition for review under Rule 43 of the Rules of Court within 15 days of receiving the ODG decision. The CA decision can be appealed to the Supreme Court as a last resort by submitting a petition for review on certiorari under Rule 45 of the Rules of Court within 15 days of receiving the CA decision.
M. THIRD-PARTY OPPOSITION
Is it possible to object to an application? Is it possible for a third party to object to a trademark or service mark application before it is registered, or to seek cancellation of a trademark or service mark after it has been registered? What are the main causes of such issues, and what are the procedures for dealing with them? Is it possible for a brand owner to fight a bad-faith application for its mark in a jurisdiction where it is not protected?What is the normal cost range for a third-party resistance or cancellation action?
Following substantive examination, an application is published in the IPOPHL e-Gazette for the purpose of opposition. Anyone who believes they would be harmed by the registration of the published mark has 30 days from the date of publication to file an opposition to its registration. On request and payment of the extension fees, the period for filing an opposition may be extended for two 30-day periods based on meritorious grounds and for a final 30-day period based on compelling grounds. Along with the initial motion for extension, an opposer must also pay the opposition filing fee of 14,746 Philippine pesos.
A trademark cancellation petition must be submitted within five years of the date of registration on the grounds that the registration causes the petitioner harm. Otherwise, the petition maybe submitted at any time for any of the reasons listed below:
- The mark has become generic.
- The mark has been abandoned.
- The mark’s registration was obtained fraudulently or in violation of the IP Code.
- The mark is being used by the registrant, with his or her permission, to misrepresent the source of the goods or services covered by the mark; or
- The registrant failed to use the mark in the Philippines for three years or longer without legitimate reason.
All pleadings and submissions in inter partes cases must be made through email to email@example.com and will be presumed filed on the date the Bureau of Legal Affairs (BLA) receives the email, according to IPOPHL Memorandum Circular No. 2020-034. If the relevant rules demand it, the party filing the pleading or submission must email a copy of it to the opposing party, including any proof. Otherwise, the submitting party must say in the BLA email that they have no information on the opposing party’s email address and that service will be made by personal service, courier, or registered letter, with evidence. Within five days of the date of the BLA’s statement of account, payment of appropriate fees must be done through IPOPHL online payment services. Within three days of the payment, the BLA must receive proof of payment through email. Failure to pay or present proof of payment within the specified time period may result in sanctions, including dismissal of the case and denial of the motion.
The BLA will issue a notice to answer after the verified notice of opposition or petition for cancellation is deemed formally complete, requiring the respondent to file a verified answer within 30 days of receipt, which may be extended by three 30-day periods upon proper motion and payment of the required fees.
If the respondent or his or her representative refuses to receive a copy of the notice to answer, has moved out of the recorded address, or provided an incomplete address, the notice to answer will be posted on the IPOPHL website, and the 30-day period to file a verified answer, or an extension of time to file the same, will begin on the date the notice to answer was posted online. If the respondent does not file a verified answer in a timely manner, it will be declared in default, and the opposition or cancellation case will be decided solely on the opposer’s or petitioner’s pleadings and evidence.
If an answer is not filed in a timely manner, the case will be forwarded to the IPOPHL’s ADR Services for mediation. The BLA adjudication officer will issue a ruling based on the settlement agreement if the dispute is concluded through mediation. Otherwise, the case will be sent back to the BLA for further adjudication.
The parties will be summoned to a preliminary conference following the conclusion of the mediation proceedings in order to facilitate the resolution of the case through stipulations, clarifications, and simplification of issues, as well as the submission and presentation of original or certified true copies of relevant documents. Following the conclusion of the preliminary session, the parties have 10 days to submit their respective position papers. The matter will be submitted for judgement when this period has passed, with or without the parties’ submissions.
Legal representation in opposition and cancellation procedures is normally based on hourly rates and varies depending on the intricacy of the problems involved.
Foreign brand owners, whether or not doing business in the Philippines, may file an opposition or cancellation case with the IPOPHL based on a bad-faith application or registration of their marks by a third party, even if they do not have trademark registrations in the Philippines, thanks to reciprocal rights. When circumstances show that the mark applied for or registered in the Philippines was first used by a foreign brand owner in the country or in another jurisdiction, and the local applicant or registrant knew or should have reasonably known about that use, the local application or registration will be deemed invalid.
N. DURATION AND MAINTENANCE OF REGISTRATION
What are the requirements for maintaining a registration and how long does it last? Is it necessary to use the trademark in order to keep it up to date? If that’s the case, what kind of proof of usage is required?
A trademark registration is valid for ten years from the date of registration and can be renewed for an additional ten years.
A DAU and evidence of use must be filed within the following time frames to keep a trademark registration active:
- within three years of its filing date, international registration date or date of subsequent designation.
- within one year of the fifth anniversary of the registration or grant of protection.
- within one year of the date of renewal; and
- within one year of the fifth anniversary of each renewal.
Failure to file the DAU and proof of use within any of the above deadlines will result in an application being automatically denied or a registration being cancelled. A cancellation action may also be brought if a registered mark is not used for three years without justification.
The following proof of usage is allowed under the 2017 Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers:
- Labels of the mark as they are used.
- Downloaded pages from the website of the applicant or registrant clearly show that the goods are being sold or the services are being rendered in the Philippines.
- Photographs of goods bearing the mark as it is actually used or of the stamped or marked container of the goods, and of the establishment or establishments where the services are rendered.
- Brochures or advertising materials showing actual use of the mark on goods being sold or services being rendered in the Philippines.
- Receipts or invoices of sales of the goods or services or other similar evidence of use, showing that the goods are placed in the market or the services are available in the Philippines; and
- copies of contracts for services showing the use of the mark.
The examiner handles determining whether the proof of use of a mark is acceptable and sufficient. If the examiner finds problems with the DAU or determines that the proof is insufficient or unacceptable, the registrant will be issued an office action requiring them to produce alternative or additional proof of use or to clarify the issues presented. The registrant has two months from the office action’s mailing date to comply or object. If you do not react in a timely manner, your DAU will be denied, and your mark will be removed from the Trademarks Register for non-use.
Except for a lack of finances, an applicant or registrant may file a Declaration of Non-Use (DNU) in lieu of the DAU if non-use of the mark is due to any of the following conditions beyond the control of the owner:
- Where the registrant or applicant is prohibited from using the mark in commerce because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of services.
- where a restraining order or injunction was issued by the BLA, the courts or quasi-judicial bodies prohibiting the use of the mark; or
- Where the mark is the subject of an opposition or cancellation case.
In most cases, the DNU can only be used to replace the DAU from the third year. A DNU may be submitted in place of the appropriate DAU at any time if the use of a mark has been halted or ceased awaiting litigation.
What is the procedure for surrendering a trademark registration?
A registrant can voluntarily cancel their trademark registration by filing an oath-based petition. A notice of surrender will be published in the IPOPHL e-Gazette if it is granted. The government charges 1,580 Philippine pesos for the voluntary surrender of a trademark registration, which includes publication costs.
P. Related IP rights
Can trademarks be protected under other IP rights?
A logo or device (excluding word elements) could be considered an artistic work and thus be protected by copyright. A product’s, portion of a product’s, packaging or container’s shape might be regarded distinctive and registered as a trademark or industrial design.
Q. TRADEMARKS ONLINE AND DOMAIN NAMES
What regime governs the protection of trademarks online and domain names?
The IP Code provides trademarks with sufficient protection to cover all commercial uses of trademarks, including online use. Other rules and regulations governing the online use of IP rights, such as the Philippine Consumer Act, the Joint DTI-DOH-DA Administrative Order No. 1, Series of 2008, the Cybercrime Prevention Act of 2012, and the Electronic Commerce Act of 2000, bolster this protection.
Under the IP Code, a domain name can be registered as a trademark, giving it all of the rights of a trademark owner. The Cybercrime Prevention Act of 2012 defines cyber-squatting as the acquisition of a domain name in violation of another party’s intellectual property rights. ICANN’s Uniform Domain Name Dispute Resolution Policy allows domain name disputes to be addressed to a dispute service provider approved by the Internet Corporation for Assigned Names and Numbers (ICANN).