Trademark registration is an important task for any business owner as it protects the trademark from use and appropriation by others. Before starting a business, it is highly recommended that the brands or names which are intended to be used on goods or services be protected by filing an application for trademark registration. Registration of trademarks ensures that the owner’s intellectual property rights over them are effectively protected prior to the business going public, and the filing of the trademark application is a crucial first step in the process.
The important questions to ask then in relation to trademark registration in the Philippines are (a) where does one go to have a trademark registered in the Philippines, (b) what basic information and documents are required, and (c) what is the procedure for trademark registration? The subsequent paragraphs may provide short yet helpful answers to these questions.
Where does one go to have a trademark registered in the Philippines?
The agency in charge of trademark registration in the Philippines is the Intellectual Property Office (IPOPHL), with office in Taguig City in Metro Manila. Transactions with the Intellectual Property Office, including trademark filings, can be conducted online at ipophil.gov.ph/online-filing.
What basic information and documents are required for trademark registration in the Philippines?
Trademark registration in the Philippines is a pretty straightforward affair. The filing requirements required by the trademark rules and regulations are quite basic, unlike in other jurisdictions where complex formal requirements are necessary.
For trademark registration in the Philippines, the following are the requirements:
- Name of the applicant;
- Address of applicant;
- Image or representation of the trademark (if a device or logo);
- Goods or services to be covered by the trademark application;
- Power of Attorney signed by the applicant
The signed Power of Attorney may be a scanned copy, as current practice with the Intellectual Property Office of the Philippines no longer requires the submission of the original signed copy. If you are the trademark owner and you are the one filing the application, the Power of Attorney is not required. For foreign applicants, however, a local agent or representative is necessary, hence, the signed Power of Attorney is needed during filing.
What is the procedure for trademark registration?
Once the application for trademark registration is filed, it will then be examined by the examiner for compliance with the formal requirements and for the trademark’s registrability. Substantive issues may be raised during examination, which would then result in the issuance of a registrability report which need to be responded to and sufficiently overcome if the application is to proceed to registration.
A common registrability issue which arises during examination, for instance, is the existence of an earlier filed or registered trademark that is confusingly similar to the one being applied for registration. A business owner should therefore take the extra time to do a prior search to ensure that the trademark to be registered is not similar or confusingly similar to an existing one. One other common issue raised during examination is the generic or descriptive nature of the trademark or some of its elements. This is normally resolved by submitting a disclaimer of the generic or descriptive element, as long as there are other elements in the trademark which are distinctive.
For quick reference, below are the basic stages of the trademark registration process in the Philippines:
- Filing of the application with the Intellectual Property Office
- Examination of the application
- Release of a Notice of Allowance requiring payment of publication and issuance fees
- Publication of the mark in the E-Gazette for opposition
- Issuance of the certificate of registration
The entire trademark registration process in the Philippines takes about five (5) to seven (7) months to be completed, depending on how quick the examination process of the Intellectual Property Office is, and how quick the applicant or its agent acts during the procedure. This estimate assumes that no office actions or objections are issued by the examiner during examination of the trademark application, otherwise, the period to complete the registration will be longer.
Successful registration of a trademark does not ensure its perpetual protection. Make sure you know the period of validity of your trademark registration and the maintenance requirements to be complied with in order to prevent its cancellation.
Should you require assistance in the registration of your trademark in the Philippines, our law firm can competently assist and guide you.