Philippines: Trademark Comparative Guide
A. LEGAL FRAMEWORK
What is the legal or other basis for trademark protection?
The IP Code of the Philippines (RA 8293), as amended, is the primary source of trademark rights in the Philippines. The Trademark Regulations of 2017 (Intellectual Property Office of the Philippines (IPOPHL) Memorandum Circular 17-010) should be studied in combination with the IP Code.
How do trademark rights arise (i.e., through use or registration)?
In the Philippines, the first-to-file trademark system is used. The rights to a trademark are gained by proper registration in line with the law. Even if they are not registered in the Philippines, well-known marks are protected in the Philippines.
The application or registration of a trademark does not give ownership; rather, it is the ownership of a trademark that conveys the right to register the same, according to jurisprudence. As a result, in the Philippines, bad-faith registration is prohibited, as the trademark applicant must be the real and legitimate owner of the mark.
What is the statutory or other source of the trademark registration scheme?
The IP Code is the statutory source of the trademark registration scheme in the Philippines. The Trademark Regulations of 2017 should be studied in combination with the IP Code.
B. WHAT CONSTITUTES A TRADEMARK?
Under the law, what forms of designations or other identifiers are allowed to be used as trademarks?
A ‘Trademark,’ according to the IP Code, is any visible indication capable of distinguishing an enterprise’s goods (trademark) or services (service mark), including a stamped or marked container of goods. As a result, any visual symbol, such as the following, can be registered as a trademark in the Philippines:
- Word marks;
- Figurative marks;
- Slogans;
- Composite marks;
- Color marks;
- Three-dimensional marks;
- Position marks;
- Hologram marks;
- Motion marks; and
- Collective marks.
As a result, the following marks cannot be registered in the Philippines since they are not clearly discernible:
- Sound marks;
- Smell marks;
- Touch marks; and
- Taste marks.
What criteria must a designation or other identifier meet in order to be used as a trademark?
To execute the source-identifying role of a trademark, a trademark must be distinctive – that is, it must be able to identify the source of the items to which it is attached, as well as distinguish the owner’s goods or services from those of others. As a result, descriptive marks and generic marks cannot be registered in the Philippines (unless they have gained secondary meaning).
What designations or other identifiers are not allowed to be used as trademarks?
In the Philippines, marks that fall under any of the absolute or relative reasons for rejection cannot be registered. According to the IP Code, a trademark cannot be registered if it:
- consisting of immoral, deceitful, or scandalous stuff, or matter that disparages or falsely suggests a relationship with living or deceased people, institutions, beliefs, or national symbols, or brings them into discredit;
- Consists of the Philippine flag, coat of arms, or other symbols, or any simulation thereof, of the Philippines or any of its political subdivisions, or of any other nation;
- consists of a name, portrait, or signature identifying a specific living individual, except with his or her written consent, or the name, signature, or portrait of a deceased president of the Philippines, except with his or her surviving spouse’s written consent, during the life of the surviving spouse, if any;
- In respect of: is similar to a registered mark belonging to a different owner or a mark with an earlier filing or priority date
- The same goods or services; or
- Closely related goods or services; or
- It is so similar to a trademark that it is liable to deceive or cause confusion;
- is identical or confusingly similar to, or is a translation of, a mark that is considered by the Philippines’ competent authority to be well known internationally and in the Philippines, whether or not it is registered in the Philippines, and is used for identical or similar goods or services, whether or not it is registered in the Philippines. When evaluating whether a mark is well recognized, consideration should be given to the knowledge of the relevant sector of the public rather than the general public, including information gained in the Philippines as a consequence of the mark’s promotion.
- Identical or confusingly similar to, or a translation of, a mark considered well known in accordance with the preceding point that is registered in the Philippines for goods or services that are not similar to those for which registration is sought, where:
- Use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark; and
- The interests of the owner of the registered mark are likely to be damaged by such use;
- Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
- Consists exclusively of signs that are generic for the goods or services that they seek to identify;
- Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;
- consists solely of signs or indications that may be used in commerce to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; consists of shapes that may be necessitated by technical factors, the nature of the goods themselves, or factors that affect their intrinsic value;/
- Consists of color alone, unless defined by a given form; or
- Is contrary to public order or morality.
Nothing prevents the registration of signs or devices described points above if they have become unique in respect to the items sought to be registered as a consequence of their usage in commerce in the Philippines. The applicant’s practically exclusive and continuous use of the mark in commerce in the Philippines for five years prior to the claim of uniqueness may serve as prima facie proof that the mark has become distinctive.
C. REGISTRATION PROCEDURE
What governing authority (for example, the trademark office) is in charge of the registration process?
The Intellectual Property Office of the Philippines is the regulating agency in charge of the registration procedure (IPOPHL). IPOPHL’s Bureau of Trademarks is responsible for assessing applications for trademark registration and providing registration certificates.
What are the fees for filing a trademark application, prosecuting it, and obtaining a registration from the trademark office?
The fees that IPOPHL charges are as follows:
- Filing fee: $54 per class.
- Publication fee: $20.
- Issuance fee and second publication fee: $45.
Additional fees will be incurred if color or convention priority is claimed.
Does the trademark office use the Nice Classification scheme?
Yes. The Nice Classification scheme is used by IPOPHL. Each registration must list the products or services by their names, grouped by the Nice Classification’s classes, and each group must be preceded by the number of the Nice Classification’s class to which that group of goods or services belongs, in the order of the Nice Classification’s classes. The Nice Classification will be based on the World Intellectual Property Organization’s most recent version.
Are ‘class-wide’ applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
Applications for the entire class are not permitted. The applicant must include the products or services for which registration is requested, organized by Nice Classification classes, as well as the number of the class to which each group of goods or services belongs.
To be eligible for registration, an applicant must have a genuine intention to use the trademark for the products or services listed in the application.
When submitting a trademark application, no statement of bona fide intention to use the trademark for the products or services listed in the application is necessary. However, within the following timeframes, a declaration of actual use (DAU) must be filed:
- Three years from the filing date of the application;
- One year from the fifth anniversary of the date of registration of the mark;
- One year from the fifth anniversary of the date of renewal of the mark; and
- One year from the date of renewal.
If a DAU is not filed, the mark will be removed from the Trademark Register. Furthermore, if the registered owner of a trademark fails to use the mark in the Philippines, or causes it to be used in the Philippines by virtue of a license, for an unbroken period of at least three years, the trademark can be revoked at any time.
Is a relative analysis of trademark applications (i.e., a search for prior conflicting marks) performed by the trademark office?
Yes. IPOPHL examines trademark applications on a case-by-case basis. According to the IP Code, a trademark cannot be registered if:
- It is identical to a registered mark belonging to a different owner or a mark with an earlier filing or priority date, in respect of:
- The same goods or services; or
- Closely related goods or services;
- It so nearly resembles such a mark as to be likely to deceive or cause confusion.
Apart from related tests, what other sorts of examinations does the trademark office conduct?
IPOPHL conducts a formality check to see if the application meets the following standards for granting a filing date:
- An express or implicit indication that the registration of a mark is sought;
- The identity of the applicant;
- Indications sufficient to contact the applicant or his or her representative, if any;
- A reproduction of the mark whose registration is sought; and
- The list of goods or s3
- services for which the registration is sought.
Following that, IPOPHL undertakes a substantive assessment to see if the mark falls within any of the absolute reasons for denial, in addition to the relative examination.
Are there any additional grounds for a mark’s ineligibility for registration, such as public policy concerns, other from confusion with a senior mark, descriptiveness, and genericness?
Apart from being confused with a senior mark, being descriptive, and being generic, a mark cannot be registered if it:
- Contains immoral, deceitful, or scandalous material, or material that may degrade or falsely indicate a relationship with living or deceased individuals, institutions, beliefs, or national symbols, or bring them into discredit;
- It consists of the Philippine flag, coat of arms, or other insignia, or a simulation thereof, of the Philippines or any of its political subdivisions, or of any other nation;
- consists of a name, portrait, or signature identifying a living individual except with his or her written consent, or the name, signature, or portrait of a deceased president of the Philippines during the life of his or her surviving spouse, if any, except with the surviving spouse’s written consent;
- Consists of shapes that may be necessitated by technical factors, the nature of the goods themselves, or factors that affect their intrinsic value;
- Consists of color alone, unless defined by a given form; or
- Is contrary to public order or morality.
Is there an additional or separate register where descriptive marks can be registered?
There is no longer a supplementary register in the Philippines where descriptive marks can be filed. IPOPHL permitted descriptive marks to be registered on the supplemental register prior to the implementation of the IP Code. The IP Code, on the other hand, now only allows for one register. Trade names and trademarks registered in the supplementary register under the previous trademark legislation remained in effect when the IP Code was enacted, although they could no longer be renewed.
However, nothing in the IP Code prevents the registration of any descriptive mark that has become distinctive in connection to the applicant’s products or services as a consequence of its usage in commerce in the Philippines. The applicant’s practically exclusive and continuous use of the mark in commerce in the Philippines for five years prior to the claim of uniqueness may serve as prima facie proof that the mark has become distinctive.
Is it possible for a third party to object to the registration of a trademark before it is published (for example, by sending a letter of protest to the trademark office)?
No. Before the application is published in the IPOPHL e-Gazette, a third party cannot object to the registration of a mark. Only after a mark has been published for opposition purposes may an opposition be filed.
Is it necessary for the applicant to use the trademark for commercial purposes in order to secure a registration?
No. The registration of a mark is not contingent on its commercial usage. As a result, even if a mark has not yet been used in commerce, an applicant can submit a trademark application for it. A DAU, on the other hand, must be filed within the following time frames:
- Three years from the filing date of the application;
- One year from the fifth anniversary of the date of registration of the mark;
- One year from the fifth anniversary of the date of renewal of the mark; and
- One year from the date of renewal.
If a DAU is not filed, the mark will be removed from the Trademark Register. Furthermore, if the registered owner of a trademark fails to use the mark in the Philippines, or causes it to be used in the Philippines by virtue of a license, for an unbroken period of at least three years, the trademark can be revoked at any time.
How long does it usually take from the moment an application is filed to the first office action?
IPOPHL typically takes two months to issue the first office action once the application is filed. IPOPHL will issue a notice of allowance in lieu of an office action if no office action is issued.
How long does it usually take from the time an application is filed to the time it is published?
IPOPHL normally takes two to five months from the time the application is filed to the time the notice of authorization for publication of the mark is issued.
D. APPEALS
Can the applicant file an appeal if the trademark office denies registration? If so, to which body and by what method?
The trademark examiner’s final judgment can be appealed to the director of the Philippine Intellectual Property Office’s Bureau of Trademarks (IPOPHL). Within two months after the mailing date of the decision being appealed, the appellant must file a notice of appeal and pay the requisite fees. The appellant or his or her attorney of record must sign the notice of appeal, which must state the reasons for the appeal.
The appellant must provide a brief outlining the authorities and grounds on which he or she bases the appeal within two months of filing the notice of appeal. If the brief is not filed within this deadline, the appeal will be dismissed.
Unless a move for reconsideration is filed with the director or an appeal to the director general of IPOPHL is finalized during that time, the director’s decision becomes final and executory 30 days after receipt of a copy by the appellant. There may only be one move for reconsideration. However, for the purposes of initiating an appeal with the director general, a move for reconsideration is not needed.
What is the procedure for appealing a denial by the trademark office?
The director general of IPOPHL’s decision can be appealed to the Court of Appeals by filing a petition for review within 15 days of the decision’s notice, as per the Rules of Court.
Is it possible to appeal the judgment of the reviewing body? If so, to which body and by what method?
The Court of Appeals’ judgment can be appealed to the Supreme Court by submitting a petition for review on certification within 15 days of the decision’s notice, as required by the Rules of Court.
E. OPPOSITIONS
Is it possible for a third party to object to a trademark application?
Yes. Once a trademark application has been published in the Intellectual Property Office of the Philippines (IPOPHL) e-Gazette for opposition purposes, a third party can file an objection.
Who has the legal right to object to a trademark application?
Anyone who feels that the registration of a trademark will do him or her harm may file an objection to the trademark application.
What is the deadline for filing an opposition to a trademark application?
For opposition purposes, a notice of opposition to a trademark application must be filed within 30 days following the mark’s publication in the IPOPHL e-Gazette. The opposing party, on the other hand, may file up to three applications for 30-day extensions of time to file notices of objection.
If no opposition is filed within 30 days of the mark’s publication, it is deemed registered on the next calendar day after the opposition period has expired.
Which body listens to disagreements?
The Bureau of Legal Affairs is the IPOPHL division that hears and resolves on oppositions to trademark registration applications.
What is the procedure for forming an opposition?
The typical procedure for handling an opposition is as follows:
- Within 30 days of the trademark application’s publication in the IPOPHL e-Gazette, a fully documented verified notice of opposition is filed, subject to extension.
- The responder must submit a fully substantiated verified answer within 30 days after receiving a copy of the notice to answer, subject to extension, with evidence of service to the opposing party.
- If the response is timely filed, the case will be sent to alternative dispute resolution (ADR).
- The hearing/adjudication officer will make an order directing the preliminary conference if the case is not settled or dismissed through ADR.
- The hearing/adjudication officer shall make an order in open court following the conclusion of the preliminary conference, ordering the parties to submit their respective position papers within 10 days of the issuance of the order in open court.
- Within 60 days of the matter being declared submitted for determination, the hearing/adjudication officer must make a decision or final order.
Is it possible to appeal the judgment on the opposition? If so, to which body and by what method?
Within 10 days of receiving the judgment or final order, the appellant may submit an appeal with the director of IPOPHL’s Bureau of Legal Affairs. The appellant has 30 days from the date of receipt of the director’s decision to file a memorandum of appeal with IPOPHL’s director general.
The director general’s decision can be appealed to the Court of Appeals by filing a petition for review within 15 days of the decision’s notice, as per the Rules of Court. The Court of Appeals’ judgment can be appealed to the Supreme Court by submitting a petition for review on certification within 15 days of the decision’s notice, as required by the Rules of Court.
F. RIGHTS OF REGISTERED AND UNREGISTERED MARKS
What, if any, protection is afforded to unregistered trademarks?
Owners of trademarks that are not registered in the Philippines might file an unfair competition complaint. Anyone who has distinguished his or her business, goods, or services from those of competitors in the minds of the public – whether or not a registered mark is used – has a property right in the goodwill of that business, goods, or services, which will be protected in the same way as other property rights, according to the IP Code.
The IP Code protects well-known brands, even if they are not registered in the Philippines. The IP Code states that a mark cannot be registered if it is identical or confusingly similar to, or constitutes a translation of, a well-known mark used for identical or similar goods or services both internationally and in the Philippines, regardless of whether the well-known mark is registered in the Philippines.
The IP Code further stipulates that trade names are protected against any unlawful conduct perpetrated by other parties, even if they are not registered. Any subsequent use of a trade name by a third party – whether as a trade name, trademark, or collective mark – or any use of a similar trade name or trademark that is likely to mislead the public is prohibited.
The application or registration of a trademark does not give ownership; rather, it is the ownership of a trademark that conveys the right to register the same, according to jurisprudence. As a result, in the Philippines, bad-faith registration is prohibited, as the trademark applicant must be the real and legitimate owner of the mark. As a result, the genuine owner of a trademark might initiate a cancellation or objection action against registered or sought-after marks.
What legal rights are conferred by a trademark registration?
The rights to a trademark must be secured through a legally recognized registration.
Except in the case of IP Code-authorized imports of drugs and medicines and off-patent drugs and medicines, the owner of a registered mark has the exclusive right to prevent third parties from using identical or similar marks for identical or similar goods or services in the course of trade, where such use would cause confusion. A possibility of confusion must be inferred in the case of the use of an identical sign for identical products or services. As a result, the owner of a registered trademark can sue trademark infringers for infringement.
A certificate of trademark registration also serves as prima facie proof 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 products or services stated in the certificate.
What legal rights are provided by registration in a separate register for descriptive marks if one exists?
No. There is no longer a supplementary register in the Philippines where descriptive marks can be filed. The IP Code currently only allows for one register.
G. ENFORCEMENT AND REMEDIES FOR TRADEMARK INFRINGEMENT
What are the legal options for dealing with trademark infringement?
A trademark infringement might be prosecuted in civil, criminal, or administrative court. The remedies available against a trademark offender vary depending on the type of complaint filed:
- Damages;
- Impoundment of sales invoices and other documents evidencing sales;
- Forfeiture of paraphernalia and all real and personal properties that were used in the commission of the offence;
- Injunction;
- Preliminary injunction; 6.Temporary restraining order;
- Preliminary attachment; 8.Cancellation or suspension of any permit, license, authority or registration that was granted by the Intellectual Property of the Philippines (IPOPHL);
- Destruction or disposal outside channels of commerce of the infringing goods;
- Censure;
- Contempt;
- Imprisonment; and Fine.
What are the options for dealing with trademark dilution?
Despite the fact that trademark dilution was referenced in a Supreme Court decision in 2005, the IP Code does not provision for it.
Is there any legal recourse available to protect trademark rights against losses other than infringement and dilution?
Yes. In addition to infringement, the IP Code allows remedies for additional injuries to trademark rights, including:
- Unfair competition; and
- False designations of origin; and
- False or misleading description or representation of fact.
What is the process for pursuing trademark infringement claims?
A trademark infringement may face administrative, civil, or criminal action, as follows:
Administrative case: A trademark infringement administrative case is initiated by filing a verified complaint with IPOPHL’s Bureau of Legal Affairs (BLA). In administrative cases for infringement of legislation regarding IP rights, the BLA has initial jurisdiction if the total damages sought are not less than PHP 200,000.
Civil case: A trademark infringement legal action is started by submitting a verified complaint with the appropriate court.
Criminal case: A trademark infringement criminal prosecution is started by submitting a complaint with the prosecutor. The prosecutor will undertake a preliminary investigation to establish if there are adequate reasons to believe that trademark infringement has occurred and that the respondent is most likely guilty and should face trial.
In trademark litigation, what are the common defenses available to a defendant?
Actions for trademark infringement are subject to the following limits under the IP Code:
- There shall be no infringement of trademarks or trade names of imported or sold patented drugs and medicines that have been put on the market in the Philippines by the product’s owner, or with the owner’s express consent, as well as imported or sold off-patent drugs and medicines that have not had their trademarks tampered with, unlawfully modified, or infringed.
- The registered owner of a mark does not have the right to prevent third parties from using their names, addresses, pseudonyms, geographical names, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or supply of their goods or services in good faith, provided that such use is confined to the purposes of mere identification or information and cannot mislead the public as to the sourness of their goods or services.
- A registered mark has no impact on anybody who was using the mark in good faith for the purposes of their company or activity prior to the filing date or the priority date. This right, however, can only be transferred or assigned in conjunction with the firm or business where the mark is utilized.
- In the case of an innocent infringer who is simply in the business of printing trademarks or other infringing materials for others, the trademark owner is only entitled to an injunction against future printing. Only innocent infringers are eligible for this defense.
- If the infringement is contained in or is a part of a paid advertisement in a newspaper, magazine, or other similar periodical, or in an electronic communication, the trademark owner’s remedies against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication are limited to an injunction against the presentation of such advertising matter in future issues or transmissions of such electronic communication. Only innocent infringers are eligible for this defense.
Other defenses that are available are as follows:
- The marks are not identical or confusingly similar;
- The use of the mark is not likely to deceive or cause confusion;
- The mark is not used in commerce;
- Invalidity of the trademark;
- Abandonment of the trademark;
- Prescription;
- Estoppels;
- Laches; or
- Lack of intent to deceive the public and defraud a competitor in cases of unfair competition.
What is the procedure for appealing a trademark court decision?
The court’s judgment in criminal and civil matters, as well as the director general’s decision in administrative cases, can be appealed to the Court of Appeals by submitting a petition for review within 15 days of notification of the decision, as required by the Rules of Court. The Court of Appeals’ judgment can be appealed to the Supreme Court by submitting a petition for review on certiorari within 15 days of the decision’s notice, as required by the Rules of Court.
H. MAINTENANCE AND REMOVAL OF REGISTRATIONS
What is the duration of the first registration term, as well as the renewal terms?
A certificate of registration is valid for ten years and can be renewed for another ten years after it expires by paying the appropriate fee and filing a request.
To maintain or renew a trademark registration, what, if anything, must be submitted to the trademark office?
A declaration of actual use (DAU) must be made within the following time frames in order to keep a trademark or renew a registration:
- Three years from the filing date of the application;
- One year from the fifth anniversary of the date of registration of the mark;
- One year from the fifth anniversary of the date of renewal of the mark; and
- One year from the date of renewal.
If a DAU is not filed, the mark will be removed from the Trademark Register.
What are the reasons for a trademark registration being cancelled?
The IP Code allows for the cancellation of a trademark for the following reasons:
- Within five years of the date of the registration of the mark;
- At any time, if the registered mark:
- Has become the generic name for the goods or services, or a portion thereof, for which it is registered;
- Has been abandoned;
- Was registered fraudulently or contrary to the IP Code; or
- Is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or
- At any time, if the registered owner of the mark without legitimate reason fails to use the mark in the Philippines, or to cause it to be used in the Philippines by virtue of a license, for an uninterrupted period of at least three years.
In what circumstances does the trademark office have the authority to revoke a registration on its own?
The Philippines’ Intellectual Property Office (IPOPHL) cannot revoke a trademark registration on its own. Anyone who feels that the ongoing registration of a trademark would do them harm must file a trademark cancellation petition.
What is the procedure for a third party to request that a trademark registration be cancelled?
The cancellation petition must be in written, validated, and supported by a non-forum shopping certification. The petition must be submitted in duplicate and include proof of service to the respondent, as well as the following information:
- The names and addresses of the petitioner and the other parties, including the respondent;
- The assigned registration number, the name of the registrant and the date of registration of the trademark whose cancellation is sought; and
- The ultimate facts constituting the petitioner’s cause or causes of action and the relief sought.
What is the procedure for contesting a registration cancellation decision?
Within 10 days of receiving the judgment or final order, the appellant may submit an appeal with the director of IPOPHL’s Bureau of Legal Affairs. The appellant has 30 days from the date of receipt of the director’s decision to file a memorandum of appeal with IPOPHL’s director general.
The director general’s decision can be appealed to the Court of Appeals by filing a petition for review within 15 days of the decision’s notice, as per the Rules of Court. The Court of Appeals’ judgment can be appealed to the Supreme Court by submitting a petition for review on certification within 15 days of the decision’s notice, as required by the Rules of Court.
I. LICENSING
Are there any specific conditions for a trademark license to be valid, such as licensor quality control?
According to the IP Code, any licensing contract relating to the application or registration of a mark must include provisions allowing the licensor to effectively regulate the quality of the licensee’s products or services in connection with which the mark is used. If the license contract does not allow for such quality control, or if such quality control is not carried out properly, the license contract is void.
Is it necessary to register trademark licenses with the trademark office or another regulating body?
A license contract does not need to be filed with the Philippine Intellectual Property Office. A license contract, on the other hand, has no legal impact against third parties until it is properly registered.
Is it possible for a licensor to lose its trademark rights if it fails to meet its duties under the license, such as maintaining quality control?
Any licensing contract must allow for effective control by the licensor of the quality of the licensee’s goods or services in connection with which the mark is used, according to the IP Code. If the license contract does not allow for such quality control, or if such quality control is not carried out properly, the license contract is void.
To keep a trademark in the Philippines, a declaration of actual use (DAU) must be filed. The mark will be removed from the registry if a DAU is not filed. Furthermore, if the registered owner of a trademark fails to use the mark in the Philippines, or causes it to be used in the Philippines by virtue of a license, for an unbroken period of at least three years, the trademark can be revoked at any time.
Thus, if the licensor does not utilize the trademark in the Philippines and the licensing contract does not allow the licensor to effectively regulate the quality of the licensee’s goods or services, the usage of the local licensee will not benefit the licensor. As a result, the trademark may be subject to cancellation or revocation if it is not used in the Philippines.
J. PROTECTION OF FOREIGN TRADEMARKS
In what circumstances (e.g., under unfair competition legislation) may international trademarks that are not registered in the jurisdiction be enforced?
In the Philippines, unregistered well-known trademarks are protected. The IP Code states that a mark cannot be registered if it is identical or confusingly similar to, or is a translation of, a well-known worldwide and Philippine mark that is used for identical or comparable products or services, regardless of whether the mark is registered in the Philippines.
The following factors, or any combination of them, may be used to determine if a mark is widely known:
- The duration, extent and geographical area of any use of the mark – in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity, and presentation at fairs or exhibitions of the goods and/or services to which the mark applies;
- The market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
- The degree of inherent or acquired distinctiveness of the mark;
- The quality, image or reputation acquired by the mark;
- The extent to which the mark has been registered worldwide;
- The exclusivity of registration attained by the mark worldwide;
- The extent to which the mark has been used worldwide;
- The exclusivity of use attained by the mark worldwide;
- The commercial value attributed to the mark worldwide;
- The record of successful protection of the rights in the mark;
- The outcome of litigations dealing with the issue of whether the mark is a well-known mark; 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.
Owners of trademarks that are not registered in the Philippines can also file an unfair competition complaint. Anyone who has distinguished his or her business, goods, or services from those of competitors in the minds of the public, whether or not a registered mark is used, has a property right in the goodwill of the business, goods, or services, which will be protected in the same way as other property rights, according to the IP Code.
The application or registration of a trademark does not give ownership; rather, it is the ownership of a trademark that conveys the right to register the same, according to jurisprudence. As a result, in the Philippines, bad-faith registration is prohibited, as the trademark applicant must be the real and legitimate owner of the mark.
Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Yes. Because the Philippines are a signatory of the Paris Convention, the Intellectual Property Office of the Philippines allows the registration of a mark based on a foreign or international registration. According to the Paris Convention, a foreign applicant can claim the priority date of a preceding foreign application provided the application is filed within six months of the foreign application’s filing date.
The Philippines is also a signatory to the Protocol Relating to the Madrid Agreement Concerning International Trademark Registration. By naming the Philippines in the application for international registration, a foreign applicant might seek protection in the Philippines under the Madrid Protocol.