Registration and use

Ownership of marks

Who may apply for registration?

A trademark applicant may be a natural or juridical person. A trademark application may also be made in the name of more than one applicant. Foreign applicants not domiciled or with no real and effective commercial establishment in the country must have a resident representative who will be served with notices or processes in proceedings affecting the mark.

Scope of trademark

What may and may not be protected and registered as a trademark?

The IP Code defines a ‘trademark’ as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise, including a stamped or marked container of goods. Collective marks are registrable and are treated as ordinary trademarks for the purposes of substantive examination.

The Philippines does not accord protection to non-visually perceptible marks (eg, sound, touch, taste and smell marks) but recognises other non-traditional marks (eg, 3D marks, position marks, hologram marks and motion marks).

A trademark is unregistrable in the Philippines if it falls under any of the absolute or relative grounds for refusal under Section 123 of the IP Code. Absolute grounds include immoral, generic, descriptive, non-distinctive and customary marks, while relative grounds cover confusing similarity with previously registered or earlier filed marks and with marks that are well known internationally and in the Philippines.

Marks which are descriptive, consist of the shape of a good or comprise a colour may be registered if they become distinctive in connection with the applicant’s goods and/or services as a result of extensive commercial use in the Philippines for at least five years before the claim of distinctiveness is made.

Unregistered trademarks

Can trademark rights be established without registration?

Trade or business names are protected in the Philippines without need for prior registration.  Well-known marks are also granted protection in relation to the same or similar goods and services for which the marks are well known without need for prior registration in the Philippines.

Jurisprudence has also established the doctrine of prior use as a basis of trademark ownership. A certificate of registration may be defeated by evidence of prior use of the mark by another person. A registered mark will have no effect against a mark which has been used in good faith before the filing or priority date of the registered mark. Moreover, a party that has identified its goods and services in the mind of the public – irrespective of whether a registered mark is employed – has a property right in the goodwill created and may protect that right based on unfair competition.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

The IP Code protects marks that are considered by a competent authority in the Philippines to be well known internationally and in the Philippines, regardless of whether they are registered in the country. If unregistered, the mark’s exclusivity is limited to identical or similar goods and services for which it is well known. However, if it is registered in the Philippines, the exclusive right to use the mark extends to all goods and services that are not similar to those for which it is registered, provided that such use would indicate a connection with the registrant to the latter’s prejudice.

In determining whether a mark is well known, the authorities will take into account the relevant sector of the public, rather than the public at large, including knowledge in the Philippines obtained through the promotion of the mark.

The following criteria are used by the competent Philippine authorities to determine whether a trademark is well known:

  • duration, extent and geographical area of any use of the mark;
  • market share – in the Philippines and other countries – of the goods and/or services to which the mark applies;
  • the degree of inherent or acquired distinctiveness of the mark;
  • image quality or reputation acquired by the mark;
  • the extent to which the mark has been registered anywhere in the world;
  • the exclusivity of registration attained by the mark anywhere in the world;
  • the extent to which the mark has been used in the world;
  • the exclusivity of use attained by the mark anywhere in the world;
  • the commercial value attributed to the mark around the world;
  • a record of successful protection of the rights in the mark;
  • the outcome of any litigation dealing with the issue of whether the mark is well known; and
  • the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that the mark is a well-known mark.

No one factor is determinative and not all the criteria must be met for a mark to be considered well known. The use, promotion and market share of the mark in the Philippines is only one of many factors to be considered.

The benefits of registration

What are the benefits of registration?

As a general rule, registration confers trademark rights in the Philippines. The owner of a registered mark has the exclusive right to prevent all third parties from using marks that are identical or confusingly similar to its own, with respect to the same or similar goods or services for which its mark has been registered.

A certificate of registration of a mark is prima facie evidence of:

  • the validity of the registration;
  • the registrant’s ownership of the mark; and
  • the registrant’s exclusive right to use the mark in connection with the goods and services listed and those related thereto.

In the case of an identical sign for identical goods or services, a likelihood of confusion is presumed.

Only a registered trademark owner may claim trademark infringement against an identical or confusingly similar mark.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

A completed application form should be submitted to the IP Office of the Philippines (IPOPHL), accompanied by a reproduction of the applied-for mark. The reproduction of the mark may be in printed or electronic form, which should be in .jpg format. A power of attorney (POA) is needed for an application to proceed to substantive examination but its submission is not required for an application to be issued a filing number and filing date. The submission of a scanned POA is sufficient. Attestation, notarisation, authentication, legalisation or other certification of any signature or other means of self-identification is not required for the POA.

Trademark applications may be submitted in printed form or through electronic filing using the eTMfile system of the IPOPHL.

A trademark search is not a prerequisite for the filing of a trademark application. Nonetheless, private entities may conduct a trademark search using the IPOPHL online trademark database to determine the registrability of a mark before filing the application. Using the eTMfile system to file an application includes a built-in trademark search, without additional cost. However, the IPOPHL online trademark database is not updated in real time and its search function covers only previously filed applications or existing trademark registrations. Other registrability issues will not be revealed through a search of the online database.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

A straightforward application is usually granted registration within six months from the filing date. This period is prolonged by IPOPHL-issued action papers during the substantive examination of the mark before its publication for opposition and/or the filing of an opposition case against the application during the opposition period.

A mark is deemed to be registered on:

  • the day following the expiration of the period for opposition; or
  • the day on which opposition against the mark is denied.

An application may still be abandoned after the lapse of the opposition period if the issuance and second publication fee is not paid in a timely manner.

The government fees for a straightforward trademark registration covering one mark in one class is approximately $125. The filing fee of a trademark application, including colour and priority claim fees, is multiplied by the number of classes covered. Subsequent government fees are fixed, except in relation to a declaration of actual use (DAU) and request for renewal of registration. There are no government fees for responding to IPOPHL-issued action papers. 

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

The IPOPHL applies the latest version of the Nice Classification of Goods and Services at the time the application is filed.

The Philippines follows a multi-class system. A multi-class application avoids additional publication and issuance government fees ($68), which are calculated per application, rather than per class. However, for multi-class applications, objections related to a particular class affect the whole application.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

On completion of the formal requirements, an application undergoes substantive examination where the examiner determines the registrability of the trademark based on Section 123 of the IP Code. One of the relative grounds under Section 123 is confusing similarity to existing registrations or marks with earlier pending applications. For the purposes of examination, the first-to-file and first-to-register rule applies. Claims of prior use, ownership, well-known status and bad-faith registration cannot be decided by the examiner.

If a registrability report or notification of provisional refusal is issued, the applicant has two months from the mailing date to respond to the examiner’s objections. This period is extendible for another two months on request and payment of the extension fee. The examiner may reiterate their objections or raise new objections in a subsequent action, which should be responded to within two months. A final action or refusal may be appealed to the director of trademarks within two months from the mailing date.

A letter of consent or co-existence may be submitted where an objection is issued based on relative grounds. However, the examiner still has discretion as to whether this is sufficient to overcome the objection, particularly where the likelihood of confusion or deception among the public is high.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

Use of a trademark is not a prerequisite for its registration in the Philippines but is required to maintain an application or registration, whether for national applications or international registrations via the Madrid Protocol. Use is supported through the submission of a DAU within:

  • three years from the filing date, international registration date or date of subsequent designation;
  • one year following the fifth anniversary of the registration or granting of protection;
  • one year from the date of renewal; or
  • one year from the fifth anniversary of each renewal.

The DAU should be accompanied by any of the following acceptable proofs of use:

  • labels of the mark as these are used;
  • pages downloaded from the website of the applicant or registrant clearly showing 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 establishments in which the services are rendered;
  • brochures or advertising materials showing actual use of the mark on goods sold or services 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 that the services are available in the Philippines; or
  • copies of contracts for services showing use of the mark.

Failure to file the DAU and proofs of use within any of the specified periods will cause the automatic refusal of an application or the cancellation of a registration. Unjustified non-use of a registered mark for an uninterrupted period of three years may also be the basis of a cancellation action.

In lieu of the DAU, an applicant or registrant may file a declaration of non-use (DNU) if non-use of the mark is based on any of the following circumstances outside the owner’s control, except for a lack of funds:

  • where the registrant or applicant is prohibited from using the mark in commerce because of a requirement imposed by another government agency before placing the goods in the market or rendering services;
  • where a restraining order or injunction was issued by the Bureau of Legal Affairs (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.

As a rule, the DNU may be submitted only in lieu of the third-year DAU. However, if the use of a mark has been interrupted or discontinued pending litigation, a DNU may be submitted instead of the relevant DAU.

The Philippines accords priority rights to foreign applicants in accordance with the Paris Convention. Thus, a Philippine application may be considered filed as of the filing date of an earlier foreign application, provided that the mark will not be registered in the Philippines until it has been registered in the country of origin of the applicant. To claim convention priority, the Philippine application must be filed within six months from the filing of the priority application.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The use of “registered mark” or “®” is not mandatory. However, knowledge of a likelihood of confusion is presumed on the part of the infringer if the infringed mark contains such terms, which entitles the registrant to recover profits or damages in an infringement action.

Appealing a denied application

Is there an appeal process if the application is denied?

The denial of an application can be appealed by filing a notice of appeal to the director of trademarks within two months from the mailing date of the final refusal. The applicant must then file an appellant’s brief within two months from the filing date of the notice of appeal. 

A director of trademarks decision may be appealed to the Office of the Director General (ODG) within 30 days from receipt of the decision. The applicant may also file a motion for reconsideration with the director of trademarks within the same period, but this is not required for an appeal to the ODG. If a motion for reconsideration is filed and subsequently denied, the appellant has only the balance of the appeal period to perfect an appeal to the ODG.

An appeal to the ODG is perfected by filing an appeal memorandum and paying the appeal fee. An adverse decision of the ODG may be appealed to the Court of Appeals by filing a petition for review within 15 days from receipt of the ODG decision. As a last recourse, the Court of Appeals decision may be appealed to the Supreme Court by filing a petition for review on certiorari within 15 days from receipt of the Court of Appeals decision.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Once an application is approved and the publication for opposition fee is paid, it is published in the IPOPHL e-Gazette. Any party that believes it would be damaged by the registration of the published mark may file an opposition against its registration within 30 days from the publication date, subject to the payment of opposition fees.

The period to file an opposition may be extended for two 30-day periods based on meritorious grounds and on payment of the extension fee. A final 30-day extension may be granted only on compelling grounds. The opponent must also remit an opposition filing fee of $290, together with the first motion for extension.

A petition for the cancellation of a trademark registration on the ground that it causes damage to the petitioner must be filed within five years from the date of registration. Otherwise, the petition may be filed at any time based on the following grounds:

  • The mark has become generic.
  • The mark has been abandoned.
  • Registration of the mark was obtained fraudulently or in violation of the IP Code.
  • The mark is being used by the registrant, or with the registrant’s permission, to misrepresent the source of the goods or services that it covers.
  • The registrant has failed to use the mark in the Philippines for an interrupted period of three years or longer without legitimate reason.

Once the verified notice of opposition and/or petition for cancellation is deemed to be formally complete, the BLA will issue a notice to answer requiring the respondent to file its verified answer within 30 days from receipt thereof, which may be extended for three 30-day periods. If the respondent fails to file an answer in a timely manner, it will be declared in default and the opposition or cancellation case will be decided based solely on the pleadings and evidence submitted by the opponent or petitioner.

If an answer is filed in a timely manner, the case will be referred to the alternative dispute resolution services of the IPOPHL for mediation. If the case is resolved through mediation, the BLA adjudication officer will issue a decision based on the settlement agreement. Otherwise, the case will be referred back to the BLA for adjudication proceedings.

On termination of the mediation proceedings, the parties will be called to a preliminary conference to facilitate the resolution of the case through:

  • stipulations, clarifications and simplification of issues; and
  • the submission or presentation of original or certified true copies of relevant documents.

The parties have 10 days from the termination of the preliminary conference to submit their respective position papers. After this period, the case will be submitted for decision with or without the parties’ submissions.

Costs for legal representation in opposition proceedings vary depending on the complexity of the issues involved and are usually based on hourly rates.

Based on reciprocal rights, foreign brand owners – irrespective of whether they are engaged in business in the Philippines – may bring an opposition or cancellation case before the IPOPHL based on a bad-faith application or registration of their marks by another party, even if they have no trademark registrations in the Philippines. This is because the Philippines recognises prior use as a mode for the acquisition of trademark ownership. Where 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 that the local applicant or registrant knew of or should have reasonably known of such use, the local application or registration will be considered made in bad faith and, thus, invalid.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration is valid for 10 years from the date of registration. To maintain a trademark registration, a DAU and its accompanying proofs of use must be filed (see “Does use of a trademark or service mark have to be claimed before registration is granted or issued?”).

Surrender

What is the procedure for surrendering a trademark registration?

A trademark registrant must file with the IPOPHL a petition under oath for the cancellation of a trademark registration. If granted, a notice of surrender will be published in the IPOPHL e-Gazette. The government fee for the voluntary surrender of a trademark registration, including publication costs, is $31.50.

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

A logo or device (excluding word elements) may be considered an artistic work and subject to copyright protection. The shape of a product, part of a product or its packaging or container may be considered distinctive and registered as a trademark or an industrial design.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

The protection granted to trademarks under the IP Code is sufficiently broad to cover all commercial use of trademarks, including online use. This protection is expanded by other laws and regulations concerning online use of IP rights, such as:

  • the Consumer Act of the Philippines and the Joint DTI-DOH-DA Administrative Order 1/2008;
  • the Cybercrime Prevention Act 2012; and
  • the Electronic Commerce Act 2000.

A domain name may be registered as a trademark under the IP Code, which affords its owner all the rights of a trademark owner. The acquisition of a domain name in contravention of another party’s IP rights constitutes cybersquatting under the Cybercrime Prevention Act 2012.

 

Law stated date

Correct on

Give the date on which the information above is accurate.

2 September 2019.