Trademarks and service marks are source identifiers which help identify your goods, services and business from all others. The goodwill one has earnestly built throughout the years is always connected to one’s trademark or service mark. We always advise our clients to register their trademarks and service marks in the Philippines and to enforce their exclusive rights to use their trademarks or service marks.
Our lawyers and trademark specialists can assist you in registering your trademarks in the Philippines and in other countries, whether filed directly or through the Madrid system.
Trademark Availability and Clearance Searches
Before one adopts a trademark or service mark, one must first verify if the proposed mark is available to be registered and if it is not confusingly similar with an earlier filed application or registered trademark. Our trademark specialists can help clients conduct trademark searches to prevent potential issues before a trademark application is filed and check if there are any trademarks or service marks that may be cited by the trademark examiner during the prosecution stage of the application process.
We always advise our clients to register their trademarks and service marks with the Intellectual Property Office of the Philippines. A trademark registration gives to the owner of the mark exclusive rights of use and rights to prevent others from using identical or confusingly similar marks on the same or related goods or services. Also, a trademark registration is required before one can file an action for trademark infringement against third parties. Trademark registration will also allow the trademark owner to record its intellectual property right with the Bureau of Customs to prevent the importation of counterfeit items into the Philippines.
A trademark may be registered directly with the Intellectual Property Office or through the Madrid system. Our lawyers and trademark specialist can assist clients in registering trademarks in the Philippines.
Trademark Prosecution, Maintenance and Renewal
The trademark examiners of the Intellectual Property Office may, from time to time, issue objections to the registration of trademarks, either on the grounds that there are identical or confusingly similar marks earlier filed or registered, or any other ground that affect their registrability. The lawyers of Aumento & Ponce can ably assist clients in overcoming objections raised by trademark examiners.
Once a trademark is allowed and registered, it must then be maintained through the timely filing of Declarations of Actual Use. Also, since registrations expire, it is important that Petitions for Renewal are timely filed. Aumento & Ponce boasts of being proactive in reminding and advising clients of up-coming deadlines for the submission of Declarations of Actual Use and Petitions for Renewal.
Recordal of Title Changes to Trademarks
Title changes affecting the ownership of a trademark need to be recorded with the Bureau of Trademarks of the Intellectual Property Office in order to affect third parties. We assist clients in recording assignments of trademarks or transfers by way of mergers, joint ventures or other modes of transfer of ownership. Moreover, our lawyers can also draw up and review agreements relating to the assignment and transfer of a mark to make sure that they comply with the requirements of the Intellectual Property Code and with applicable Philippine laws and regulations.
Summary of Services for Trademarks
- Trademark availability and clearance searches
- Trademark registration
- Trademark prosecution
- Maintenance of trademark registrations
- Renewal of trademark registrations
- Filing of Declarations of Actual Use
- Monitoring of deadlines for Declarations of Actual Use and renewal
- Monitoring of Intellectual Property Office registry for identical or confusingly similar trademarks
- Filing of cases for opposition or cancellation with Bureau of Trademarks of the Intellectual Property Office