How can you protect your IP rights?

Protect your trademarks in the Philippines and abroad

There are two routes of protection of marks in Philippines—the national route and the international route or protection via the Madrid Protocol. The national route is excellent if you want to protect your mark only in Philippines, but if you are thinking of protecting your mark abroad, you may consider the Madrid option.

The Intellectual Property Office of the Philippines (IPOPHL) is the national agency in charge of registering trademarks.

The contact details of the office are as follows:

Intellectual Property Office of the Philippines
Intellectual Property Center
28 Upper McKinley Road
McKinley Hill, For Bonifacio
Taguig City 1634
Philippines
Telephone: +632 2386300
Email: mail@ipophil.gov.ph
Website: www.ipophil.gov.ph
Under Philippine law, a mark is defined as any sign that distinguishes the goods or services of one enterprise from those of another. It includes words, numbers, figurative elements, or a combination of any of these. Other marks that can be protected are collective marks, three-dimensional marks, and hologram marks for as long as these can be represented graphically.
  • The application must be filed using the prescribed application form.
  • The filing languages are English and Filipino, but the application form is only made available in English.
  • The Office accepts paper and online applications.
  • The Philippines follows the first-to-file principle.
  • IPOPHL accepts multi-class applications. The Office accepts the Nice classification, the ASEAN List of Goods, and the Common EU-Madrid List of Goods and Services. The terms accepted by IPOPHL may be accessed at www.asean-tmclass.org.

Any natural or juridical person, resident or non-resident, may apply for trademark protection. There is no requirement for residents of the Philippines to be represented by an agent or attorney.

If the applicant is not a national, does not have domicile in, or has no real and effective commercial establishment in the Philippines, such applicant must indicate the name of a Philippine resident, an agent, or attorney for purposes of sending the official communication from the IPOPHL. The power of attorney authorizing the representative, agent, or attorney must be submitted within sixty (60) days from filing the application.

The application shall be accorded a filing date if the following minimum requirements are met:

  • Name of the applicant;
  • Local address of the applicant or the resident representative or attorney;
  • Reproduction of the mark;
  • List of the goods or services for which the registration is sought; and
  • Filing fee.

The other formality requirements are as follows:

  • Name of State of which the applicant is a national, has domicile, or has a real and effective industrial or commercial establishment;
  • If the applicant is a juridical entity, the law under which it is organized and existing;
  • Nam of agent or representative, if the applicant is not domiciled in the Philippines;
  • In case of a priority claim, (i) the country or office where the earlier application was filed; (i) the filing date of the earlier application; and (iii) the application number of the earlier application, if available;
  • Name of color/s, if the application contains a color claim;
  • Indication that the mark is three-dimensional mark, if it is one;
  • Transliteration or translation of the mark or of some parts of the mark, if the mark or some parts of it is/are not in English;
  • Correct classification of the goods or services;
  • Signature, if the application is filed on paper.

Once the application meets the minimum filing requirements, the Office shall examine whether the application meets all the requirements for registrability of the mark. The office has combined formality, search, and substantive examination, all of which are conducted by the same examiner.

A mark cannot be registered if it:

  • 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;
  • 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;
  • 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;
  • is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
    • the same goods or services, or
    • closely related goods or services, or
    • nearly resembling such a mark as to be likely to deceive or cause confusion.
  • 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, the knowledge of the relevant sector of the public shall be taken into consideration, rather than of the public a large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
  • 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 in respect of goods or services which are not similar to those in respect of 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;
  • is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
  • consists exclusively of signs that are generic for the goods or services that they seek to identify;
  • 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;
  • 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;
  • 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;
  • consists of color alone, unless defined by a given form; or
  • is contrary to public order or morality.

Once the application has been examined and found registrable, the mark shall be allowed and published for purposes of opposition in the electronic gazette for a period of 30 days. The required fees must be paid before the mark is published.

Any person who believes that he would be damaged by the registration of a mark may, upon payment of the require fee and within thirty (30) days from publication of the mark, file with the Office an opposition to the application.

When the period for filing the opposition period has expired, or when the opposition shall have been denied, the Office, upon payment by the applicant of the required fee (if this fee was not paid together with the first publication fee), shall issue the certificate of registration and publish the registered mark in the electronic gazette.

The registration is valid for 10 years counted from the registration date of the mark. The trade mark owner may renew the registration of the mark for consecutive periods of ten years, subject to the payment of the renewal fee.

If you are thinking of seeking protection outside Philippines, you may wish to consider the Madrid Protocol option or the “International Route”. This option is crucial if you intend to export your products abroad. In this context, you should familiarize yourself with the key elements of the Protocol Relating to the Madrid Agreement for the International Registration of Marks or the Madrid Protocol, which is undoubtedly very beneficial for SMEs in countries like Philippines, if they wish to protect their marks in other countries.

The Madrid Protocol enables trademark owners to obtain protection in as many countries as are members of the international agreement by simply filing one application, in one language (including English), with one set of fees and in one currency (Swiss francs). Similar advantages exist when the registration has to be renewed or is assigned to a third party or when other changes, such as in name and/or address, have to be recorded.

In short, the Madrid system is a simple, economical, effective centralized procedure that provides for:

  • A one-stop shop for trademark holders to obtain and maintain trademark protection in export markets;
  • A single set of simple formalities;
  • Lower registration fees;
  • No need to translate the application into several languages;
  • Great ease of post-registration administration of your rights.

The savings achieved, in terms of filing fees, formalities and agent fees abroad, will clearly facilitate the protection of your trademark abroad and therefore the marketing of your products in foreign countries. The good news is that Philippines has been a member of the Madrid Protocol since 2012. This means that if you possess either a commercial or industrial establishment in Philippines, or you are domiciled in or a national of Philippines, then you are entitled to use the Madrid system.

A single international application produces the same legal effects in the various designated countries as if the mark had been filed nationally. In other words, the effects of an international registration are equivalent to those of a national registration. As a consequence, an international registration can be seen as a bundle of national registrations, whose management is centralized within the hands of the International Bureau of WIPO and is greatly simplified.

However, it is important to remember that the Madrid system is merely procedural. The domestic legislations of the designated Contracting Parties set the substantive conditions for the actual granting of the protection. In general, it is recommended to seek professional advice before filing an application.

This is the way you should proceed to use the Madrid system:

  • First of all, if you are using IPOPHL as your so-called “Office of Origin”, you need to have a basic mark—an application or a registration in Philippines. This is what you will use as basis for your international application.
  • You need to use the official WIPO Form (MM2) to file an international application with IPOPHL. The filing language in IPOPHL is English. Note that you cannot file your application directly with WIPO.
  • Your basic mark should match your national application or registration. You may decide to reduce its scope (for example, by eliminating some of the goods/services covered by the national mark), but you cannot expand it.
  • The international application must contain the following:
    • a reproduction of the mark (identical to the mark filed or protected nationally);
    • a list of the goods and/or services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification); and
    • the indication of the Contracting Parties in which protection of the mark is sought (the so-called “designations”); these are the countries where you wish to register your mark and where you intend to do business.
  • An international application is subject to the payment of fees. The standard fee system comprises a basic fee (which is intended to cover the costs of the International Bureau in administering the system of international registration), a supplementary fee (if the list of goods and services involves more than three classes of the International Classification under the Nice Agreement) and a complementary fee (for each Contracting Party for which protection is requested) or an individual fee (instead of the complementary fee), the amount of which is determined by that Contracting Party. The Philippines collects the individual fee.
  • Before forwarding the application to WIPO, IPOPHL, your Office of Origin must certify that the mark that is the subject of the international application is the same as that in the national application or registration, that the applicant or owner of the mark in both the basic mark and the international application is identical, and that the goods and/or services listed in the application are covered by those of the basic registration or basic application.
  • On receipt of the international application, WIPO checks that it complies with the requirements of the Madrid Protocol and of the Common Regulations, including in particular, the requirements relating to the classification of the list of goods and/or services, and that the required fees have been paid. The Office of Origin and the applicant are informed of any irregularities and these must be remedied within the time limit of three months, otherwise the application will be considered abandoned.
  • Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. The International Bureau then notifies each Contracting Party in which protection has been requested.
  • Each designated Contracting Party has the right to refuse protection in its own territory if the mark does not comply with the substantive requirements of its law.
  • A refusal must be notified to WIPO by the Office of the designated Contracting Party concerned within the time limit specified (in principle, 12 months from the date of the notification of the international registration, or 18 months, or even a longer period if the refusal is based on an opposition).
  • If no refusal is notified to WIPO within the relevant period, the mark in question will enjoy the same protection in the Contracting Parties concerned as if it had been registered by the respective Offices of these Contracting Parties. The designated contracting party will then issue a Statement of Grant of Protection.
  • On the contrary, if a refusal is notified, the procedure subsequent to that refusal, such as a review or appeal, is carried out directly between the holder and the national IP Office of the designated contracting party in accordance with domestic legislation and without any involvement on the part of WIPO.
  • An international registration is in effect for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees. The applicant will still need to comply with the maintenance requirements (use requirements) of each of the designated contracting parties, if there are any.

There is only one route protection of industrial designs in the Philippines—the national route. The international route via the Hague Agreement is still not available in Philippines.

The Intellectual Property Office of the Philippines (IPOPHL) is the national agency in charge of registering industrial designs.

The contact details of the office are as follows:

Intellectual Property Office of the Philippines
Intellectual Property Center
28 Upper McKinley Road
McKinley Hill, For Bonifacio
Taguig City 1634
Philippines
Telephone: +632 2386300
Email: mail@ipophil.gov.ph
Website: www.ipophil.gov.ph

Any natural or juridical person, resident or non-resident, may apply for trademark protection. There is no requirement for residents of the Philippines to be represented by an agent or attorney.

An applicant who is not a resident of the Philippines must appoint resident agent or representative in the Philippines upon whom notice or process for judicial or administrative procedure relating to the application for industrial design may be served.

  • The application must be filed using the prescribed application form.
  • The filing languages are English and Filipino, but the application form is only made available in English.
  • The office accepts paper applications only.

The application for the registration of an industrial design shall contain the following information:

  • Information identifying the applicant;
  • An indication of the kind of article of manufacture or handicraft to which the design shall be applied;
  • Description of the industrial design (title, brief description of the different views of the drawings, characteristic feature of the design, claim)
  • A representation of the article of manufacture or handicraft by way of drawings, photographs or other adequate graphic representation of the design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which design protection is claimed; and
  • The name and address of the creator, or where the applicant is not the creator, a statement indicating the origin of the right to the industrial design.
  • The application may be accompanied by a specimen of the article embodying the industrial design.

The prescribed fees must also be paid within one (1) month from the date of filing the application.

More than one embodiment of an industrial design may be included in one application for as long as they relate to the same subclass of the Locarno Classification or to the same set or composition of articles. A “set of articles” which is customarily sold or used together as a set may be made in one application, provided each article is, or has, the same design or substantially similar design. Where two or more articles are used together as a set of articles, the design of the set of articles may be registered, provided that the set of articles constitutes a coordinated whole.

Applicants may opt to file a request for the deferment of publication of the industrial design application. The request may be filed simultaneously with the filing of the application, or at any time prior to its publication. The maximum period allowed for the deferment of publication of an industrial design application shall be thirty (30) months from the filing date or priority date of the application. In case the request for the deferment of publication is made after the filing of the application, the allowable period for the deferment shall not exceed the maximum of thirty (30) months counted from the filing or priority date of the application. The applicant/s may request a specific time for the IPOPHL to publish the application, provided it does not go beyond the maximum period.

The Office shall accord as the filing date the date of receipt of the application if the following requirements are met: (a) indications allowing the identity of the applicant to be established and (b) a representation of the article embodying the industrial design or a pictorial representation thereof.

An application for an industrial design filed by any person who has previously applied for the same design in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application, subject to the following conditions:

  • the local application expressly claims priority;
  • it is filed within six (6) months from the date the earliest foreign application was filed; and
  • a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines.

Only an industrial design that is new or original may be registered, and the design shall be considered new if it does not form part of prior art. An industrial design shall not be considered new if it differs from prior designs only in minor respects that can be mistaken as such prior designs by an ordinary observer.

The industrial design shall still be considered new even if it was disclosed within six (6) months preceding the filing or priority date of the application if such disclosure was made by (a) the applicant or designer; (b) the IPOPHL and the information was contained in another application filed by the applicant and which should not have been disclosed by the Office or in an application filed without the knowledge or consent of the applicant or creator; or (c) a third party who obtained the information directly or indirectly from the applicant or creator.

An industrial design may be registered if it consists of any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors, provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft.

Industrial designs dictated essentially by technical or functional considerations to obtain a technical result, those which are mere schemes of surface ornamentations existing separately from the industrial product or handicraft, or those that are contrary to public order, health or morals shall not be protected.

All applications for the registration of industrial designs are registered without substantive examination provided all the formal requirements are complied with and fees are paid. Applicants may request a registrability report before enforcing their rights for a determination of the novelty or originality of the design by the IPOPHL.

After the Office completes the formality examination and has determined that the industrial design application meets the requirements, the application shall be published in the electronic gazette. If no adverse information is received within 30 days from publication in the gazette, the Office shall issue the Certificate of Registration.

At any time during the term of the industrial design registration, any person upon payment of the required fee, may petition to cancel the industrial design on any of the following grounds:

  • If the subject matter of the industrial design is not registrable;
  • If the subject matter is not new; or
  • If the subject matter of the industrial design extends beyond the content of the application as originally filed.

The registration of an industrial design shall be valid for a period of five (5) years from the filing date of the application.

The registration may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee.

The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. However, a grace period of six (6) months shall be granted for the payment of the fees after such expiration, upon payment of a surcharge.

Last modified: Monday, 5 December 2016, 2:14 PM