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A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights.
Before you go shouting your brands from the rooftops, there are some important things you need to know about obtaining trademark in Philippines.
Here are 10 questions you need to have the answers to.
1. What can be protected as a trademark in Philippines?
A trademark is a word, a group of words, sign, symbol, logo or a combination thereof that identifies and differentiates the source of the goods or services of one entity from those of others.
The Philippines has yet to accord protection to non-visually perceptible marks such as sound, touch, taste and smell marks, but recognizes other non-traditional marks such as 3D marks, position marks, hologram marks and motion marks.
Get in touch with us if you’d like to find out whether your marks are registrable in Philippines.
2. 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 having no real and effective commercial establishment in the country must have a resident representative who shall be served with notices or processes in proceedings affecting the mark.
3. What are the benefits of trademark registration in Philippines?
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 similar to its own, in respect to the same or similar goods or services for which the mark is 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 of 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 the owner of a registered mark may claim trademark infringement against an identical or confusingly similar mark. The registered owner is also afforded border enforcement measures by the Bureau of Customs.
4. Is a trademark search necessary to be conducted before the trademark filing in Philippines?
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 prior to filing the application.
5. What are the general requirements for filing a trademark application in Philippines?
A trademark application should have the following:
- a completed application form;
- a reproduction of the mark sought to be registered; and
- a copy of the power of attorney (POA) signed by the applicant or its authorised representative.
A POA is not required for an application to be issued a filing number and filing date and may be submitted subsequently, but it is needed for an application to proceed to substantive examination. Attestation, notarisation, authentication, legalisation or other certification of any signature or other means of self-identification is not required for the POA.
A trademark application may be submitted in printed form or electronically through the eTMfile filing system of the Philippine Intellectual Property Office (IPOPHL).
It’s important that you consult and engage a reputable IP firm to ensure that all the requirements in registering your trademark in Philippines have been met and so that you can get approval as quickly as possible.
6. How long does the trademark registration last in Philippines?
The registration will be valid for ten (10) years from the date of filing of the trademark.
7. Is use of the trademark in Philippines required for its maintenance? If so, what proof of use is required?
To maintain a trademark registration in Philippines, a Declaration of Actual Use (DAU) and its accompanying proof of use must be filed within the following periods:
- within three years of its filing date, international registration date or date of subsequent designation;
- within one year of the fifth anniversary of the registration or grant of protection;
- within one year of the date of renewal; and
- within one year of the fifth anniversary of each renewal.
Failure to file the DAU and proof of use within any of the above periods shall 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.
Based on the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2017, the following proof of use is acceptable:
- labels of the mark as these are used;
- downloaded pages 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 establishment(s) where the services are rendered;
- brochures or advertising materials showing actual use of the mark on goods being sold or services being rendered in the Philippines;
- receipts or invoices of sales of the goods or services or other similar evidence of use, showing that the goods are placed in the market or the services are available in the Philippines; and
- copies of contracts for services showing the use of the mark.
8. What words or symbols can be used to indicate trademark use or registration in Philippines? 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 the likelihood of confusion is presumed on the part of the infringer if the trademark infringed contains such terms, which entitles the registrant to recover profits or damages in an infringement action.
9. Can trademarks be protected under other IP rights (eg, copyright or 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 of its packaging or container may be considered distinctive and registered as a trademark or as an industrial design.
10. Is there an appeal process if the application in Philippines is denied?
The denial of a trademark application in Philippines can be appealed by filing a notice of appeal to the director of trademarks within two months of the mailing date of the final refusal. Within two months of the filing of the notice of appeal, the applicant must then file an appellant’s brief.
Get expert help to file your trademark in Philippines
The 10 questions we’ve addressed have given you a lot to think about. And it’s important for you to take the time to weigh the pros and cons before you get too deep into the process and lose valuable money and time. Seek the services of a reputable IP firm like Pintas to help you through the trademark registration in Philippines.