TRADEMARKS

What is a trademark?

A trademark is a tool used that differentiates goods and services from each other. It is a very important marketing tool that makes the public identify goods and services. A trademark can be one word, a group of words, sign, symbol, logo, or a combination of any of these. Generally, a trademark refers to both trademark and service mark, although a service mark is used to identify those marks used for services only. Trademark is a very effective tool that makes the public remember the quality of goods and services. Once a trademark becomes known, the public will keep on patronizing the products and services. Utilized properly, a trademark can become the most valuable business asset of an enterprise. In addition to making goods and services distinctive, the owner of a mark may earn revenues from the use of the mark by licensing its use by another or through franchising agreements.

How can you protect your mark?

In the Philippines, a trademark can be protected through registration. Registration gives the trademark owner the exclusive right to use the mark and to prevent others from using the same or similar marks on identical or related goods and services. The right to a trademark is granted to the one who first files a trademark application with the IPOPHL.

How long does the term of protection of a trademark last?

A trademark can be protected in perpetuity if regularly monitored and properly maintained. The period of protection is ten (10) years from the date of issuance and is renewable for a period of ten (10) years at a time.

A certificate of registration remains in force for 10 years provided that the registrant will timely file the required Declarations of Actual Use (DAU). There is no limit as to the number of times the registrant may request for the renewal of his registration provided the request is timely filed together with the prescribed fees.

What may be registered?

Your mark should be able to distinguish your goods or services from those of others. Your mark will not be registered if it is descriptive, misleading, generic, contrary to public order or morality, or confusingly similar to another registered mark.

What may not be registered ?

Section 123.1 of the IP code states that a mark may not be registered if it:

  1. Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
  2. Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;
  3. Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;
  4. Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
    1. The same goods or services, or
    2. Closely related goods or services, or
    3. If it nearly resembles such a mark as to be likely to deceive or cause confusion;
  5. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
  6. Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That 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: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;
  7. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
  8. Consists exclusively of signs that are generic for the goods or services that they seek to identify;
  9. 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;
  10. Consists exclusively of signs or of indications that may serve in trade 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;
  11. Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
  12. Consists of color alone, unless defined by a given form; or
  13. Is contrary to public order or morality.
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What are the requirements for filing a trademark application?

Section 123.1 of the IP code states that a mark may not be registered if it:

  1. Completed and signed Trademark Application Form with the following information:
    1. Name and Address of the Applicant
    2. Citizenship or country of incorporation
    3. Name and address of Philippine resident agent or authorized representative (applicants not domiciled in the Philippines are required to appoint one)
    4. Details of the Mark :
      • Title of the Mark
      • Clear image of the mark
      • Claim of Colors (if any)
      • Translation/Transliteration (if there are any foreign words/characters in the mark)
      • Disclaimers (if any)
      • Claim of Priority (if any) – country, filing date & application number; a photocopy of the Foreign Application and its English translation, if not in English
      • Class/es of the Goods and/or Services (multi-class applications are allowed)
      • Specification/List of Goods/Services for each Class
  2. Signed Power of Attorney (if applicant is filing through a representative)
  3. Sworn statement that the applicant is a small entity (if applicable)

What are the steps and expected timeframe in the prosecution of a trademark application?

Steps in the Prosecution of a Philippine Trademark Application Estimated Time
1 During the examination process, office action/s may be issued by the Examiner and the applicant shall be required to reply to the said office action/s within a specified time limit) 2 to 6 months from filing date
2 IPO issues a Notice of Allowance and Publication of the application for purposes of opposition 2 to 6 months from filing date or from date of last Office Action (if deemed allowable by Examiner)
3 Applicant pays the prescribed publication fee Deadline to pay is within 2 months from mailing date of Notice of Allowance
4 IPOPHL publishes the application in the Official Gazette for purposes of opposition Within 1 month from payment of the publication fee
5 Any person/ entity who may be prejudiced by the registration may file an opposition to the application 30 days from publication of mark in IPOPHL Official Gazette
6 Assuming no opposition is filed, IPOPHL issues a Notice of Issuance and Second Publication 2 to 4 months from publication in the IPO Gazette
7 Applicant pays the fees of the issuance and second publication (for the registration certificate) Deadline to pay is within 2 months from mailing date of Notice of Issuance
8 IPO issues the Certificate of Registration 2 to 4 months from payment of Notice of Issuance fee

A straightforward application (i.e., if no office action/s by the IPOPHL Examiner and/or no opposition filed against it) will normally take about 6 months to 12 months from filing up to issuance of the certificate of registration.

What are the requirements for the registration of an application claiming priority right?

If there are no grounds for refusal of the mark on substantive issues, the Examiner shall, in the Notice of Allowance, require the applicant to submit a photocopy of the foreign registration within six (6) months from the mailing date of the Notice. The Examiner may waive this requirement if foreign Intellectual Property Office has an online trademark database which he can access to obtain confirmation that the foreign application has been registered.

The period to submit a copy of the foreign trademark registration may be extended for a period of one (1) year, counted from the expiry of the initial period of six (6) months. If the applicant is unable to provide the copy of the foreign registration by the end of the one (1) year extension period, the claim of priority shall be deemed waived. The application in the Philippines will thereafter be published for opposition purposes, upon payment of the required publication fees.

How do I maintain my trademark?

All active and registered marks filed under RA8293 are required to submit a Declaration of Actual Use (DAU) on each of the following deadlines:

  • 3rd Year DAU- Within three (3) years from the filing date of the application (a single extension of 6 months is possible upon payment of required fee);
  • 5th Year DAU- Within one (1) year from the fifth anniversary of the registration;
  • Renewal DAU- Within one (1) year from date of renewal of the registration;
  • Mid-Renewal DAU- Within one (1) year from the fifth anniversary of each Renewal date

Failure to file the required DAU by the deadline dates will cause the mark to be automatically removed from the Trademark Registry, with no possibility of revival.

Aside from the DAU, the registrant must file a Renewal request of the registration within 10 years from registration date. Failure to file the renewal request by the deadline will result in the cancellation of the registration. The renewal request may be made within six (6) months before the expirationof the period for which the registration was issued or renewed, or within six(6) months after such expiration , upon the payment of the prescribed surcharge.

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What are the requirements for filing the DAU?

The applicant must submit the following:

  1. Notarized Declaration of Actual Use form- (IPOPHL has a prescribed DAU form) The name and address of the Philippine outlet must be indicated in the DAU form. If the goods can be purchased by Philippine based consumers from an online store, the website address may be indicated as the address of the Philippine outlet
  2. Proofs of use- in the Philippines for each of the relevant class/es, which can be any one of the following:
    • Clear photos of the product/s or package/s, clearly showing the mark as used in the Philippines;
    • Actual labels of the products bearing the mark as used in the Philippines;
    • Actual brochures or advertising materials evidencing use in the Philippines;
    • Downloaded pages from the registrant's website clearly showing that the goods or services bearing the mark are available or being rendered in the Philippines;
    • For online sale, receipts of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines or that the transaction took place in the Philippines; or
    • Copies of contracts for services showing the use of the mark.

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If the mark has not been used in the Philippines within 3 years from filing of the application, can the applicant file a Declaration of Non-Use (DNU)?

Non-use of a mark may be excused if caused by circumstances independent of the will of its owner, but in no case shall lack of funds be an excuse for non-use of a mark.

The following are the only acceptable reasons for non-use:

  • The applicant or registrant is prohibited from using the trademark because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of the services;
  • There is a restraining order or injunction issued by the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL), courts, or quasi-judicial bodies prohibiting the use of the trademark; or
  • The trademark is the subject of an opposition or cancellation case.

Evidence of non-use may be any of the following:

  • A copy of a Bureau of Food and Drug Administration application;
  • Copies of documents filed with the BLA, if the trademark is under opposition or cancellation; or
  • Copies of the court-issued injunctions (preliminary injunction, restraining order).

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What is the MADRID Protocol of trademark registration?

The Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol (including the Philippines) by filing a single application, called an "international application." The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system.

In the Philippines, the Madrid Protocol became effective on July 25, 2012.

An international application filed through the IPOPHL as an office of origin may be filed by a natural person or a juridical entity only if said person/entity has an industrial or commercial establishment in, or being domiciled in, or a national of, the Philippines. In such case, the international application should be based on an application (pending or registered) in the Philippines.

If the Philippines is a designated country of an international application filed through the Madrid Protocol:

  • IPOPHL shall undertake substantive examination of the mark in accordance with the Rules and Regulations of the Intellectual Property Code of the Philippines. The trademark prosecution procedures will follow the same procedures as for applications filed directly with IPOPHL.
  • If the mark is found allowable, it shall be published for opposition purposes in the IPOPHL Official Gazette.
  • Opposition proceedings shall be governed by the provisions of the Intellectual Property Code of the Philippines, the Trademark Regulations, the Bureau of Legal Affairs Regulations, and the Uniform Rules on Appeal.
  • The holder of that international trademark registration shall enjoy the same remedies as if the trademark had been filed for registration directly with the IPOPHL.
  • In lieu of a registration certificate, IPOPHL will issued a Statement of Grant of Protection.
  • An international registration lasts for ten (10) years from the date of international filing, and may be renewed for periods of ten (10) years at its expiration by paying a renewal fee to the International Bureau.
  • To maintain registration in the Philippines, the trademark holder must file a Declaration of Use (DAU) on the following deadlines:
    1. 3rd Year DAU- Within three (3) years from the date of the international registration or the date of the recordal of the subsequent designation of the Philippines, subject to a single extension of six (6) months. The use of the trademark in the Philippines must commence within the said period;
    2. 5th Year DAU- Within one (1) year from the fifth (5th) anniversary of the date of the statement of grant of protection of the trademark;
    3. Renewal DAU- Within one (1) year from the fifth (5th) anniversary of the date of each renewal of the registration of the trademark; and
    4. Mid-Renewal DAU- Within one (1) year from the date of renewal of registration of the mark

If the DAU is not submitted within the prescribed periods, the IPOPHL shall remove the mark from the Register and notify the International Bureau accordingly.

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What are the requirements and procedures for opposition and cancellation of trademarks?

OPPOSITION AGAINST A TRADEMARK APPLICATION
  • Any person or entity who believes that he or it would be damaged by the registration of a mark may file an opposition to an application for a mark published in the IPOPHL e-Gazette.
  • Any foreign national or juridical person whether or not engaged in business in the Philippines may oppose the registration of a mark, provided that the country of which he or it is a national, or domiciled, or has a real and effective industrial establishment is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law.
  • The Opposer in an opposition case proceeding shall be deemed to be in the position of plaintiff. The applicant of the mark shall be the respondent who shall be in the position of defendant in the case.
  • The Verified Notice of Opposition and all supporting documents must be filed the IPOPHL Bureau of Legal Affairs (BLA) within 30 days from the date of the publication of the trademark application in the IPOPHL "Gazette". Upon proper motion anchored on meritorious grounds and the payment of the filing fee for opposition and other applicable fees, the Opposer may be granted an additional period of 30 days within which to file the opposition. Two additional motions for extension of 30 days each may be granted on compelling grounds and upon payment of the applicable fees; provided, that in no case will the filing of the opposition exceed one hundred twenty (120) days from the date of the aforementioned publication
  • The Notice of Opposition shall be in writing and VERIFIED by the Opposer or by any person on his behalf who knows the facts. It shall specify the grounds on which it is based and include statements of the facts relied upon, together with the supporting affidavits of witnesses and originals of documents and other requirements. In case of public documents, certified copies shall be allowed in lieu of the originals, together with the translation in English, if not in the English language. The verification and certification of non-forum shopping as well as the documents showing the authority of the signatory or signatories thereto, affidavits and other supporting documents, if executed and notarized abroad, must be authenticated by the appropriate Philippine diplomatic or consular office.
  • If the Verified Notice of Opposition is found to be in accordance with the rules, the IPOPHL BLA will send a NOTICE TO ANSWER to the Respondent-applicant of the opposed mark. The Respondent-applicant has 30 days from receipt of the IPOPHL Notice to Answer within which to submit the required VERIFIED ANSWER. Respondent is entitled to three (3) extensions of time of thirty (30) days each. The total period, however, must not exceed one hundred twenty (120) days from receipt of the Notice to Answer.
  • The required ANSWER to the Opposition must be verified by the Respondent-applicant or any person in his behalf who knows the facts. The VERIFIED ANSWER should admit or deny the allegations of the Opposer and provide evidence to support counterarguments. All supporting documents must be original copies or, in the case of public documents, certified true copies are allowed in lieu of the originals. Documents not in the English language must be accompanied by an English translation. The verification and the document showing the authority of the signatory thereto, the affidavits and other pertinent documents, if executed and notarized abroad, must be authenticated by the appropriate Philippine diplomatic or consular office. The execution and authentication of these documents must have been done before the filing of the answer.
  • In case the Respondent-applicant fails to file the required Answer in accordance with the IPOPHL rules, or if the Answer is filed out of time, the case shall be decided on the basis of the opposition, the affidavits of the witnesses and the documentary evidence submitted by the Opposer.
  • If the Respondent-applicant’s Verified Answer is found to conform to the Rules, the case shall be referred for mandatory mediation and the parties are required to pay the mediation fees. If the parties are not able to reach an amicable settlement, the mediation will be terminated.
  • If the dispute is not settled by mediation, the case will be assigned to a Hearing Officer for adjudication. The Hearing Officer will call a preliminary conference and thereafter direct the parties to file Position Papers. After Position Papers are filed, the case is deemed submitted for decision.
  • After reviewing all matters contained in the submitted documents, the Hearing Officer with the Director of the Bureau of Legal Affairs shall render the decision on the case. Inter Partes Proceeding is essentially an administrative proceeding. Hence, the quantum of evidence required is substantial evidence. The BLA shall decide the case on the basis of the pleadings, the records and the evidence submitted, and if appropriate, on matters which may be taken up by judicial notice.
  • The decision or order of the Director of the BLA may be appealed to the Director General within thirty (30) days after receipt of a copy of the Decision by the parties. If no appeal is filed on time, the decision or final order becomes final and executory.
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CANCELLATION OF A TRADEMARK REGISTRATION
  • Any person or entity who believes that he or it will be damaged by the registration of a mark may file a petition to cancel such registration.
  • The Petitioner in a cancellation case proceeding shall be deemed to be in the position of plaintiff. The Registrant of the mark intended to be cancelled shall be the respondent in a cancellation proceeding who shall be in the position of defendant in the case.
  • If the Petition to cancel a trademark is based on the ground of confusing similarity, the Petition must be filed within five (5) years from the date of registration. Otherwise, the Petition may be filed at any time if the registered mark becomes the generic name of the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of the IP Code, or if the registered mark 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 if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines during an uninterrupted period of at least three (3) years.
  • The PETITION FOR CANCELLATION shall be in writing and VERIFIED by the Petitioner or by any person on his behalf who knows the facts. It shall specify the grounds on which it is based and include statements of the facts relied upon, together with the supporting affidavits of witnesses and originals of documents and other requirements. In case of public documents, certified copies shall be allowed in lieu of the originals, together with the translation in English, if not in the English language. The verification and certification of non-forum shopping as well as the documents showing the authority of the signatory or signatories thereto, affidavits and other supporting documents, if executed and notarized abroad, must have been authenticated by the appropriate Philippine diplomatic or consular office in the said country.
  • If the Verified Petition for Cancellation is found to be in accordance with the rules, the IPOPHL BLA will send a NOTICE TO ANSWER to the Respondent-registrant of the mark. The Respondent-registrant has 30 days from receipt of the IPOPHL Notice to Answer within which to submit the required VERIFIED ANSWER. Respondent is entitled to three (3) extensions of time of thirty (30) days each. The total period, however, must not exceed one hundred twenty (120) days from receipt of the Notice to Answer.
  • The rules and procedures for cancellation cases are the same as for opposition cases.
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What will it cost to file a trademark?

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