What trademark owners should know: An overview of Philippine registration
Editha R. Hechanova, Noemi P. Rivera, and Joy Marie G. Tolentino of Hechanova Group answer the most important questions relating to the registration of trademarks in the Philippines, including via the Madrid System
1. What laws govern trademarks in your country?
The legislation governing trademarks in the Philippines is Republic Act No. 8293, or the Intellectual Property Code of the Philippines (the ‘IP Code’).
2. Who can register trademarks in the Philippines?
Natural or juridical persons may apply for trademark registrations. If not domiciled in the Philippines, the applicant must appoint a resident agent to whom the notices or processes in proceedings affecting the mark will be served, by issuing a power of attorney (POA) that needs to be signed only. A trademark may also be filed in the name of more than one applicant, who will be treated as co-owners of the mark.
3. How does one obtain trademark registration in the Philippines?
A trademark application may be filed either:
By direct filing before the Intellectual Property Office of the Philippines (IPOPHL), a so-called national filing; or
Through the Madrid System by designating the Philippines.
4. What information and/or documents are needed to register a trademark?
A signed power of attorney. Notarisation or legalisation is not required.
The name of the applicant as well as the country of incorporation and principal place of business, if a juridical entity.
The enumeration of goods and/or services to be covered.
Illustration of the mark (if any, the size should not exceed 1MB, in JPG format with the following dimensions: 2” x 3”).
Colours to be claimed (if any).
If three-dimensional, an indication of such.
If with claim of priority, the date of filing the priority application and the country or IP office where the application was filed.
5. What can be registered as a trademark?
Any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise may be registered as a trademark. A stamped or marked container of goods may likewise be registered as a trademark.
6. What non-traditional marks are registrable in your country?
Non-visually perceptible marks such as sound, smell, touch, and taste are not registrable under the IP Code. However, non-traditional marks such as three-dimensional marks, position marks, holograms, and motion marks may be registered.
7. What marks may not be eligible for registration?
The IP Code prescribes the various grounds for non-registrability of marks. If a trademark falls under any of the absolute or relative grounds under Section 123 of the IP Code, the same will be refused registration.
A mark may be refused because it is immoral, generic, descriptive, non-distinctive, or a customary mark. These are the so-called absolute grounds of refusal. On the other hand, a mark may be refused registration based on relative grounds such as when it is confusingly similar to, or identical with, previously registered marks, or marks with earlier filing or priority dates, and with marks that are well known internationally and in the Philippines.
Section 123.2 of the IP Code, however, recognises the concept of secondary meaning or acquired distinctiveness. Hence, marks that are descriptive, consist of the shape of a good, or comprise a colour may be registered if they become distinctive in relation to the goods for which registration is requested as a result of the use that has been made of it in commerce in the Philippines. In this regard, proof of extensive commercial use in the Philippines for at least five years before the claim of distinctiveness is made may be accepted as prima facie evidence that the mark has become distinctive.
8. How is priority claimed?
An application with a claim of priority right must be filed within six months from the date the earliest foreign application was filed.
If the fact of filing and/or registration is verifiable from the official website of the foreign intellectual property office where the earlier application was filed, the applicant is not required to submit a certified copy of the foreign application or registration that serves as the basis of the priority right. Otherwise, the applicant will be required to submit a photocopy of the foreign registration with an English translation, if not in English.
9. How long does it take to obtain a trademark registration?
Assuming smooth registration and no objections/oppositions, the mark can be expected to be registered within two to three months from the filing date of the application. The issuance of the original certificate of registration (COR), however, may take longer. The COR is issued between three and six months from the date of registration on average.
10. Is proof of use required for a trademark application or registration
While evidence of actual use is not a prerequisite to file an application, the applicant must comply with the use requirement within the periods designated by the rules. There are four types of declaration of actual use (DAU) to be filed to ensure that one’s application or registration remains active.
Type of DAU
Period to file
Within three years from the filing date of the application. This can be extended by six months.
Within one year from the fifth anniversary of the registration. No extension available.
Within one year from the date of renewal. No extension available.
Within one year from the fifth anniversary of each renewal. No extension available.
11. What happens if a trademark owner misses the filing of any of the above DAUs?
Failure to file any of the above DAUs will result in the removal of the trademark from the registry. Trademark applications/registrations abandoned or removed from the registry due to non-filing of the DAU can no longer be revived. The filing of a new application is highly recommended to ensure continuity of protection of the trademark.
12. When can an applicant file a declaration of non-use (DNU)?
Non-use of a mark may be excused if caused by circumstances independent to the will of the trademark owner; for example:
Use is prohibited by another government agency;
A restraining order or injunction issued by the courts or quasi-judicial bodies prohibits use of the mark; or
The mark is the subject of an opposition or cancellation case.
13. What is the term of protection of a trademark registration? Is there a grace period for the filing of a renewal application?
Ten years, renewable every ten years subject to the filing of a fifth-year DAU, and a mid-renewal DAU. The request for renewal may be made at any time within six months before the expiry of the period for which the registration was issued or renewed, or it may be made within six months after such expiry upon the payment of surcharge fees. There is a grace period of six months for the filing of a renewal application.
Applications filed via the Madrid route
14. When is the date of reckoning of the third-year DAU deadline for marks filed via the Madrid route?
If the Philippines has been originally designated, the date of reckoning is the international registration (IR) date, which is also the indicated filing date. If the Philippines has not been originally designated, or when the Philippines has been subsequently designated, the date of reckoning is the date of subsequent designation.
15. Can a trademark filed via the Madrid System be revived if the third-year DAU has not been filed?
If a mark has been removed from the registry for failure to file the third-year DAU, the same may no longer be revived. However, the registrant has the following options to maintain protection over the subject mark:
Option 1 – File a subsequent designation of the IR for the Philippines before the International Bureau or through the office of origin of the registrant (Madrid System); or
Option 2 – File a fresh application for the subject mark through the national route directly with the IPOPHL (direct filing).
Between re-designation of the mark through the Madrid route and re-filing of the mark through the national route, Option 2, or re-application through the national route to facilitate the registration of the subject mark, is recommended. Please note that if the registrant decides to re-designate the subject mark, it will still be evaluated by the office of origin, the International Bureau, and, finally, the IPOPHL. The examination of the application by the IPOPHL will commence only upon receipt of notice of the recording of a subsequent designation from the International Bureau.
16. After submission of a response to a provisional refusal, are there any payments/submissions that have to be made to the IPOPHL?
There are no further payments/submissions to be made. No notice of allowance/issuance will be issued since the allowance and issuance fees have already been paid at the time of filing before the World Intellectual Property Organization (WIPO).
17. Assuming that there is no opposition against a trademark filed via the Madrid route, what is the notice expected to be issued by the IPOPHL?
A statement of grant of protection.
18. For provisional refusals wherein the only issue is a disclaimer or clarification as to colour claim and where the examiner indicated that for failure to respond to the refusal, the disclaimer will be automatically entered and the mark will be published in colour, is it still necessary to file a response? Will the application be abandoned for failure to file a response?
It is no longer necessary to file a response. However, filing a response is highly recommended, along with the submission of a power of attorney so that a local agent will be recorded, where future notices will be directly sent.
If the applicant has a local agent, it is easier to follow up on the status of the application. In the event of opposition, the applicant will also be notified through its local agent. Another advantage of having a local agent is to ensure that timely reminders on the filing of maintenance requirements will be sent.
Recent developments in trademark cases
19. Who may oppose a trademark application? When is the deadline to oppose an application?
Any person who believes that they would be damaged by the registration of a mark may, upon payment of the required fee, file with the Bureau of Legal Affairs (BLA) of the IPOPHL an opposition to the application.
The opposition must be filed within 30 days from the date of its publication in the E-Gazette. A one-time extension of 45 days is available. This period also applies to cancellation actions, and the filing by the respondent of its verified answer. It used to be three extensions of 30 days each or a total of 90 days under the old rules. The period was shortened to speed up the registration process and resolve cases more expeditiously.
20. Between the prior user and the first-to-file registrant, who has a better right to a trademark?
In the landmark case of Zuneca Pharmaceuticals v. Natrapharm (G.R. 21850) in 2020, the Supreme Court clarified and unequivocally pronounced that ownership of a mark is acquired through registration made validly under the IP Code. This overturned its rulings in 2010 in the cases of Berris Agricultural v. Abyadang (G.R. 183404) and E.Y. Industrial Sales v. Shen Dar Electricity and Machinery (G.R. 184850), in which it stated that the rights of a prior user of a mark prevail over the rights of a first registrant of a confusingly similar mark.
21. What test is used by the courts in determining confusing similarity of trademarks?
There were two tests applied in determining whether the competing marks are confusingly similar: the dominancy test and the holistic test.
In the 2021 case of Kolin Electronics v. Kolin Philippines International (G.R. 228165), the Supreme Court abandoned the use of the holistic test. The dominancy test takes precedence as it is the only test incorporated in the IP Code. This test focuses on the similarity of the prevalent features of the competing trademarks that might cause confusion or deception. If the competing trademark contains the main, essential, or dominant features of another, and confusion or deception is likely to result, infringement takes place.