FREQUENTLY ASKED QUESTIONS ON TRADEMARKS
What is a trademark? How is it defined under Philippine law?
Under Republic Act No. 8293 or the Intellectual Property Code of the Philippines (IP Code), a â€œmarkâ€ is defined as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise.Â Under this definition, a stamped or marked container of goods also qualifies as a trademark or service mark.
Is it necessary to have a trademark registered in the Philippines?
Yes.Â The owner of aÂ trademark registration will have the exclusive right to prevent all third parties from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion.
A certificate of registration of a trademark or service mark isÂ prima facieÂ evidence of the validity of the registration, the registrantâ€™s ownership of the mark, and of the registrantâ€™s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.
What may be registered as a trademark in the Philippines?
Anything that qualifies as a â€œmarkâ€ under the definition in the Intellectual Property Code provision referred to above may beÂ registered as a trademark.
Can colors be registered as trademarks?
The Intellectual Property Code provides that color alone, unless defined by a given form, is not registrable.Â
Can shapes be registered as trademarks?
Yes, shapes may be registered as trademarks but if the shapes are necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value, they may not be registered as a trademark.Â
What is a collective mark?Â Can collective marks be registered in the Philippines?
The Intellectual Property Code defines a collective mark as any visible sign designated as such in an application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark.
Collective marks can be registered in the Philippines.Â An application for registration of a collective mark shall designate the mark as a collective mark and shall be accompanied by a copy of the agreement, if any, governing the use of the collective mark.
What are the requirements for registration of a trademark under Philippine law?
Under the Intellectual Property Code, it is required that the application for trademarkÂ registration be in Filipino or in English and shall contain the following:
(a) AÂ request for registration;
(b) The name and address of the applicant;
(c) The name of a State of which the applicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any;
(d) Where the applicant is a juridical entity, the law under which it is organized and existing;
(e) The appointment of anÂ agent or representative, if the applicant is not domiciled in the Philippines;
(f) Where the applicant claims the priority of an earlier application, an indication of:
i) The name of the State with whose national office the earlier application was filed or if filed with an office other than a national office, the name of that office,
ii) The date on which the earlier application was filed, and
iii) Where available, the application number of the earlier application;
(g) Where the applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which are in that color;
(h) Where the mark is a three-dimensional mark, a statement to that effect;
(i) One or more reproductions of the mark, as prescribed in the Regulations;
(j) A transliteration or translation of the mark or of some parts of the mark;
(k) The names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; and
(l) A signature by, or other self-identification of, the applicant or his representative.
Is there any other requirement that needs to be complied with in a trademark application?
The Intellectual Property Code requires the filing of aÂ Declaration of Actual Use, together with proof of such use, within three (3) years from the date of filing of the of theÂ trademarkÂ application.Â This is a mandatory requirement in an application.Â Otherwise, the application shall be refused or the mark shall be removed from the Register if it was registered in the meantime.
When is the filing date of an application?
The filing date of an application is the date on which the Intellectual Property Office received the following indications and elements:
(a) An express or implicit indication that the registration of a mark is sought;
(b) The identity of the applicant;
(c) Indications sufficient to contact the applicant or his representative, if any;
(d) A reproduction of the mark whose registration is sought;
(e) The list of the goods or services for which the registration is sought;
(f) Payment of the required fee.
Who may file an application for registration of trademarks?
The following may file an application for theÂ registration of a trademark:
(a) Filipino nationals;
(b) Any person who is a national or who is domiciled or who has a real and effective industrial establishment in a country which 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 any reciprocal rights to nationals of the Philippines by law.
Can anyone other than the owner of a trademark file an application for its registration in the Philippines?
No.Â Only the owner of theÂ trademarkÂ may apply for its registration in the Philippines.
Where should one file an application for registration of a trademark or service mark?
An application forÂ registration of trademarkÂ or service mark is filed before the Bureau of Trademarks of the Intellectual Property Office of the Philippines. The processing ofÂ trademark applicationsÂ and their registration is the function of the Bureau of Trademarks.
Does a foreign applicant for trademark registration require a Philippine agent or representative?
Yes.Â If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he must appoint and appoint a resident agent or representative.
Are multiple-class trademark applications allowed in the Philippines?
Yes, multi-class trademark applications are allowed in the Philippines.Â An applicant can indicate more than one class of goods or services in a trademark or service mark application.
Can an applicant claim convention priority in a trademark application?
Under Philippine law, an application forÂ registration of a markÂ filed in the Philippines shall be considered as filed as of the day the application was first filed in the foreign country if the applicant:
(a) is a national or who is domiciled or who has a real and effective industrial establishment in a country which 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 any reciprocal rights to nationals of the Philippines by law; and
(b) previously filed an application for registration of the same mark in one of those countries
What is the duration of a trademark registration in the Philippines?
A trademark registration is valid for ten (10) years.
What is required to maintain a trademark registration?
After the registration of a trademark, the registrant is required to file aÂ Declaration of Actual UseÂ with proof of such use within one (1) year from the fifth anniversary of the date of the registration of the mark. Â Otherwise, the mark shall be removed from the Trademark Register by the Intellectual Property Office.
What are the instances where non-use of a trademark is excused?
Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Â The Intellectual Property Office, under Office Order No. 13-056, Series of 2013, declared that in the following cases, a Declaration of Non-Use may be filed within three years from filing of theÂ application, or in lieu of the 5thÂ anniversary Declaration of Actual Use:
(a) where the applicant or registrant is prohibited from using the mark in commerce because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of the services;
(b) where a restraining order or injunction was issued by the Bureau of Legal Affairs, the courts or quasi-judicial bodies prohibiting the use of the mark; or
(c) where the mark is the subject of an opposition or cancellation case.
What proof of actual use of a trademark is acceptable for purposes of filing the Declaration of Actual Use?
The Intellectual Property Office declared that the following shall be accepted as proof of actual use of a mark in the Philippines:
(a) labels of the mark as these are used;
(b) 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;
(c) photographs (including digital photographs printed on ordinary paper) of goods bearing theÂ marks as these are actually used or of the stamped or marked container of goods and of the establishment is where the services are being rendered;
(d) brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
(e) 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;
(f) copies of contracts for services showing the use of the mark.
Are trademark registrations in the Philippines renewable?
Yes.Â A trademark registration may be renewed for periods of ten (10) years after the expiration of the original ten-year term, upon payment of the prescribed fee and upon filing of aÂ petition for renewal of registration.
When must the petition for renewal of trademark registration be filed?
The renewal must be filed within six (6) months before the expiration of the term of the trademark registration or within the six (6)-month grace period after its expiration, for an additional fee.
Can opposition proceedings be instituted against an application for trademark registration?
Yes. Under Philippine law, any person who believes that he would be damaged by the registration of the mark may, upon payment of the required fee, file with the Bureau of Legal Affairs anÂ opposition to the application.Â Any opposition to a trademark application should be filed within thirty (30) days after the publication of the application in the IPO Gazette.
What is the procedure for cancellation of trademark registration in the Philippines?
A petition to cancel aÂ trademark registration may be filed with the Bureau of Legal Affairs (BLA) of the Intellectual Property Office by any person who believes that he is or will be damaged by the registration.
The cancellation may be filed:
(a) Within five (5) years from the date of the registration of the mark.
(b) At any time, if the registered mark becomes the generic name for 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 Intellectual Property Code (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.
(c) At any time, if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.
Who are liable for trademark infringement under Philippine law?
Under the Intellectual Property Code, any person who commits the following acts without the consent of the owner of the registered mark is liable for trademark infringement:
(a) Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive
(b) Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply b. such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.
What are the remedies available to a trademark owner in case of infringement?
In case of trademark infringement, the registered owner may file any of the following cases:
(a) Civil action to recover from the infringer damages sustained plus attorneyâ€™s fees and expenses of litigation, and to secure an injunction for the protection ofÂ his rights, provided, no damages may be recovered for acts committed more than four (4) years before the execution of the action for infringement.
(b) Criminal case for infringement;
(c) Administrative case before (i) the Department of Trade and Industry pursuant to Department Administrative Order 01, Series of 2000, implementing E.O. 913 and Ministry Order No. 69; orÂ (ii) the Bureau of Legal Affairs of the IPO where the total damages claimed is not less than Php 200,000.00. Provisional remedies may be granted in accordance with the Rules of Court. No damages may be recovered for acts committed more than four (4) years before the execution of the action for infringement.