Trademarks in Philippines

Legal framework

What is the primary legislation governing trademarks in your jurisdiction?

The IP Code of the Philippines (Republic Act 8293) is the primary legislation governing trademarks in the country.

Which international trademark agreements has your jurisdiction signed?

The Philippines is a party to:

• the Agreement on Trade-Related Aspects of Intellectual Property Rights;
• the Paris Convention for the Protection of Industrial Property; and
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

Which government bodies regulate trademark law?

The National Committee on Intellectual Property Rights (NCIPR) is a 12-member inter-agency body that formulates and implements plans and policies to strengthen the protection and enforcement of IP rights in the Philippines. The IP Office of the Philippines is the primary government agency tasked with the regulation of trademarks in the Philippines, particularly with regard to registration and enforcement. Other members of the NCIPR which specifically enforce trademark laws are:

• the Bureau of Customs;
• the National Bureau of Investigation; and
• the Philippine National Police.

The Food and Drug Administration also deals with trademarks but only in relation to identifying the brand names of products under its regulatory scope.

Registration and use

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.

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.

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.

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.

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.

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.

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. 

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.

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.

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.

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.

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.

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.

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?”).

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.

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.

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.

Licensing and assignment

May a licence be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement (eg, quality control clauses)?

A licence contract involving a trademark application or registration (TLA) must contain quality control provisions in favour of the licensee in order to be valid.

Recordal of a TLA with the IP Office of the Philippines (IPOPHL) is not required for its validity but is required to bind third parties. As a prerequisite for recordal, the TLA must be cleared by the IPOPHL Documentation Information and Technology Transfer Bureau (DITTB) as compliant with Sections 87 (prohibited clauses) and 88 (mandatory provisions) of the IP Code. If the trademarks involved in the TLA are properly registered in the Philippines, the parties may opt not to record the TLA and simply enforce their trademark rights under the IP Code. However, there are certain regulatory bodies that require the submission of proof of recordal of the TLA with the IPOPHL for the issuance of permits or authorisations.

Apart from quality control provisions, the following provisions must be included in a TLA for DITTB clearance and Bureau of Trademarks (BOT) recordal:

• The laws of the Philippines will govern the interpretation of the agreement and, in the event of litigation, the venue will be the proper court in the place in which the licensee has its principal office.
• Continued access to improvements in techniques and processes related to the technology will be made available during the period of the agreement.
• If the agreement provides for arbitration, the procedure of arbitration under the Arbitration Law of the Philippines, the Arbitration Rules of the United Nations Commission on International Trade Law or the Rules of Conciliation and Arbitration of the International Chamber of Commerce will apply and the venue of arbitration will be the Philippines or any neutral country.
• Payment of all Philippine taxes relating to the agreement will be borne by the licensor.

What can be assigned?

A trademark application or registration may be assigned with or without the transfer of the business using the mark. The assignment is null and void if it misleads the public with regard to the nature, source, manufacturing process, characteristics or suitability for their purpose of the goods or services to which the mark is applied.

What documents are required for assignment and what form must they take? What procedures apply?

The trademark assignment document must be:

• in writing;
• signed by the parties; and
• duly notarised.

To be enforceable against third parties, the assignment must be recorded with the IPOPHL BOT. The original assignment document or its certified true copy must be submitted, together with payment of the recordal fee. If granted, a notice of recordal will be issued by the IPOPHL.

Must the assignment be recorded for purposes of its validity?

The recordal of a trademark assignment is not necessary for its validity. 

Are security interests recognised and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

Under Articles 2085 and 2095 in relation to Article 2093 of the Civil Code of the Philippines, incorporeal rights such as trademarks may be pledged by the registrant by delivering the certificate of registration to the creditor. To be enforceable against third parties, the document evidencing the pledge must be notarised and must contain the description of the item pledged and the date of the pledge. Since the IPOPHL requires the recordal of security interests or transactions affecting the ownership of the mark, the original pledge document or its certified true copy must be submitted to the IPOPHL, together with the payment of the recordal fee. Once granted, a notice of recordal is issued by the IPOPHL.

The Personal Property Security Act (Republic Act 11057) came into effect in 2018. Under the act, a security interest over personal property such as an IP right is created through a written security agreement, which need not be notarised. To bind third parties, the security interest may be perfected through the registration of a notice with the Electronic Registry. At present, the Personal Property Security Act has not been implemented as the Electronic Registry is not yet operational. As such, security interests covering trademark rights still follow the requirements of a traditional pledge.

Enforcement

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Cases that may be raised in an IP violation administrative proceeding before the IP Office of the Philippines (IPOPHL) Bureau of Legal Affairs (BLA) include:

• false designation of origin;
• false or fraudulent declaration (in the procurement of a trademark registration);
• trademark infringement; and
• unfair competition.

The IP Code recognises trademark infringement and unfair competition as both criminal and civil actions, which may be filed before the special commercial courts (regional trial courts that are specially designated through Supreme Court resolutions).

Under the IP Code, trademark infringement occurs through:

• the unauthorised commercial use of a reproduction, counterfeit, copy or colourable imitation of a registered mark which is likely to cause confusion or deception; or
• the unauthorised reproduction, counterfeiting, copying or colourable imitation of a registered mark or its dominant features and the application of this to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce.

Under Section 168 of the IP Code, unfair competition occurs when a party employs deception or any other means contrary to bad faith to pass off its own goods or services for those of another. This includes:

• giving goods the general appearance of another’s, either with regard to the goods themselves or through the packaging, presentation, devices and marks thereon, whether registered or not; and
• making false statements in the course of trade or other acts calculated to discredit the goods, business or services of another.

What is the format of the infringement proceeding?

Infringement may take the form of administrative, civil or criminal actions. The applicable procedural rules depend on the type of case involved. Administrative actions for infringement are filed with the IPOPHL BLA and are governed by the Rules and Regulations on Administrative Complaints for Violation of Laws Involving IP Rights, supplemented by the Rules of Court. However, the technical rules of evidence are not strictly applied to administrative proceedings of infringement. On the first level of administrative infringement actions, the decision is rendered by a BLA adjudication officer whose decision may be appealed to the director of the BLA and eventually to the Office of the Director General (ODG).

For criminal actions of infringement, the complaint must be instituted with the Department of Justice National Prosecution Service for the purposes of preliminary investigation. A criminal case will be filed with the special commercial courts only if probable cause is found.

A civil case of infringement is filed before the special commercial courts and heard by a commercial court judge of that particular jurisdiction. Both civil and criminal infringement actions are governed by the Rules of Procedure for IP Rights Cases, while the Rules of Court apply suppletorily.

All infringement actions take the form of adversarial proceedings with a full-blown trial requiring the presentation of witnesses. Modes of discovery and provisional remedies are available for administrative, civil and criminal actions, but search and seizure proceedings are available for civil and criminal cases only. Complainants in all kinds of infringement action may claim damages against the infringer and require the seizure of the infringing materials and the cessation of the unlawful activity. However, only a criminal conviction may result in the imprisonment of the infringer.

An administrative proceeding is generally cheaper and faster than a civil or criminal proceeding. Judicial proceedings elevated all the way to the Supreme Court usually take between 10 and 15 years to complete, while administrative proceedings usually take five years to obtain a decision from the IPOPHL ODG.

This also applies to unfair competition actions.

What is the burden of proof to establish infringement or dilution?

The burden of proof lies with the claimant, subject to certain disputable presumptions. The quantum of evidence required is determined by the kind of proceeding. An administrative action requires substantial evidence (ie, relevant evidence that a reasonable mind may accept as adequate to support or justify a conclusion). Civil actions require the preponderance of evidence (ie, evidence that is superior to the other), while criminal actions require guilt beyond reasonable doubt to convict the accused (ie, a degree of proof that, excluding the possibility of error, produces moral certainty).

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Only the registered owner of the mark has standing to file an infringement action – whether civil, criminal or administrative. For unfair competition, the owner of a trademark – whether registered or not – may file the civil, criminal or administrative complaint.

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

To aid its monitoring and inspection of imports, the IP rights division of the Bureau of Customs (BOC) maintains an IP rights registry. The importation of counterfeit goods bearing marks recorded with the BOC is monitored. The BOC may also issue alerts or hold orders on its own initiative or on the request of an IP rights owner. Once an alert or hold order has been issued, the suspicious goods will be examined and if there is prima facie basis to subject these to seizure proceedings, a warrant of seizure and detention may be issued against the shipment. Seized counterfeit goods are subject to destruction.

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

The following modes of discovery are available for the limited purpose of obtaining evidence from an adverse party:

• deposition;
• written interrogatories;
• requests for admission; and
• a motion for the production and inspection of documents or things.

Complainants in a civil or criminal infringement action may apply to the court for the issuance of a search warrant and the impoundment of sales invoices and other documents evidencing the sales of the defendant.

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

At first instance, administrative and judicial proceedings take between three to five years to resolve from the time of the filing of the complaint. Appeal proceedings before the director of the BLA and the IPOPHL ODG take at least two years per level to be resolved. Appeal proceedings before the Court of Appeals and the Supreme Court may span several years due to the high volume of pending cases.

The provisional remedy of injunction is typically resolved within three to six months. In cases where the applicant of the injunction is likely to suffer great or irreparable injury, a temporary restraining order (TRO) may be issued by the court within three to five days from the time that it is applied for – this will be valid for 20 days. In cases of extreme urgency and where the applicant for injunction will suffer grave injustice and irreparable injury, a TRO may be issued within one or two days – this will be valid for 72 hours.

What is the limitation period for filing an infringement action?

The prescriptive period for administrative actions and civil actions based on the IP Code is four years from the time the cause of action arose. Criminal actions prescribe after eight years. These periods are counted either from the date of commission of the violation or, if the date is unknown, from the date of discovery of the violation.

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Court fees for filing actions for IP rights violations depend on the amount of damages claimed by the complainant. Costs for legal representation vary depending on the complexity and urgency of the work to be done. For first-level infringement actions, expected costs for legal representation are at least $10,000.

Litigation costs may be awarded to the winning party at the discretion of the court and subject to substantiation.

What avenues of appeal are available?

In administrative proceedings, decisions of the director of the BLA may be appealed in the same manner as appealing a denied application (see “Are applications published for opposition?”).

In civil and criminal proceedings, decisions of the special commercial court are appealable to the Court of Appeals and then the Supreme Court.

What defences are available to a charge of infringement or dilution, or any related action?

Apart from non-infringement, a defendant may claim prescription, lack of notice and good-faith prior use in an infringement action. The owner of a registered mark will not be entitled to recover profits or damages unless the acts have been committed with the knowledge that such imitation is likely to cause confusion, mistake or deception. In addition, the registration of a mark will have no effect against any party that was using the mark for its business and enterprise in good faith before the filing date or priority date of the registered mark.

In unfair competition cases, defendants may claim good faith or the absence of intent to deceive the public and defraud a competitor, which is a material element in the crime. The defence of prescription may also be raised.

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

In all kinds of infringement and unfair competition action, the complainant may request and be granted a preliminary injunction and/or a TRO and preliminary attachment, depending on the circumstances of the case.

A successful complainant for infringement or unfair competition may recover damages, which may be based on reasonable profit or, if the measure of damages cannot be readily ascertained, a reasonable percentage based on the amount of gross sales of the defendant. The amount of damages may be doubled on showing that the defendant had actual intent to mislead the public or defraud the complainant. In addition, moral and/or exemplary damages may be claimed in cases where the acts were committed in a fraudulent or willful manner.

Administrative penalties include:

• the issuance of a cease and desist order;
• the condemnation or seizure of the subject of the offence;
• the forfeiture of paraphernalia and all real and personal properties used in the commission of the offence;
• the imposition of administrative fines; and
• the cancellation or suspension of any permit, licence or registration that may have been granted by the IPOPHL.

The courts may also grant a final injunctive relief and order the disposal of the infringing goods. Independent of the civil and administrative penalties imposed by law, a criminal liability of two to five years’ imprisonment and a fine ranging from P50,000 to P200,000 will be imposed on a person found guilty of infringement.

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Although ADR techniques are available in the Philippines, they are rarely used. For administrative proceedings, mediation is mandatory at the BLA and ODG levels. Court-annexed mediation and judicial dispute resolutions are also available for judicial proceedings.

ADR proceedings have proven to be a quick and cheaper option. However, unlike administrative and judicial proceedings, the results of ADR are not binding against third persons. In addition, the parties’ submission to ADR techniques is often a waiver of their right to any other recourse to judicial authorities. Resolutions through ADR are generally unappealable. Thus, in the absence of available remedies for the review of decisions promulgated through ADR, errors made in these proceedings are incurable, subject to certain exceptions.

Update and trends

Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

In Asia Pacific Resources International Holdings, Ltd v Paperone, Inc Respondent (GR 213365 (2018)), Court Justice Marvic Leonen proposed in his concurring opinion the use of a more objective and scientific framework to determine whether goods and/or services are related as a basis to determining the likelihood of confusion between marks. While current jurisprudence provides a list of factors to be examined, the weight of each factor is relative and may change on a case-by-case basis. Justice Leonen posits that the prevailing rules are too subjective and that the use of economics principles such as the reasonable interchangeability of the goods and cross-elasticity of demand may prove to be more “measurable standards” for the consistency of rulings in the Philippines.

Considering the concerted move of countries in the Association of Southeast Asian Nations towards integration and a more unified IP system, Justice Leonen’s proposal for an objective examination of the likelihood of confusion in trademark infringement and unfair competition cases may find application in future cases. This is also in line with the more consistent use of the dominancy test over the holistic test to determine the likelihood of confusion in trademark infringement cases.

On 2 September 2019 the Rules of Procedure for IP Office of the Philippines (IPOPHL) Mediation Outside of Litigation took effect. The rules allow parties to an IP dispute to immediately request the IPOPHL for mediation without instituting an administrative action. Before this rule took effect, mediation only took place as part of an administrative proceeding. The new rule provides parties with an alternative avenue to settle IP rights disputes without the cost and delay of protracted litigation. 

In November 2018 the IPOPHL submitted to the Philippine House of Representatives its proposed amendments to the IP Code. These include:

• the power of the BLA to declare well-known marks and revoke such declarations;
• use in commerce for three years, rather than five years, as prima facie evidence of distinctiveness;
• increased protection for previously registered marks removed from the register for non-use, by not allowing the registration of identical marks within one year from the removal of the previously registered mark;
• primordial consideration to the dominant feature of the mark in cases of infringement; and
• vicarious liability for trademark infringement for parties that benefit directly or indirectly from the infringing activity with the knowledge and ability to control such activity.

Deliberations of these proposed revisions are being conducted by the relevant committee in the House of Representatives.

Finally, the Special Rules of Procedure on IP Cases is currently undergoing review by the Supreme Court.

Law stated date

Give the date on which the information above is accurate.

2 September 2019.