Legal Framework and Competent Authorities

Legal Framework

The current trademark regulations in the Philippines are mainly based on the Intellectual Property Code of the Philippines, which came into effect on January 1, 1998. The Revised Rules and Regulations Concerning Trademarks, Service Marks, Trade Names, and Marks or Stamps on Containers, which came into effect on February 14, 2023, further refine and supplement these regulations.

Competent Authorities

The Intellectual Property Office of the Philippines (IPOPHL) is responsible for managing trademark affairs. It has functions such as supervision, law enforcement, adjudication, and policy - making. Its official website is: https://www.ipophil.gov.ph/.

International Treaties

The Philippines is a member of the WTO. It joined the World Intellectual Property Organization (WIPO) in 1980, the Paris Convention in 1965, and the Madrid Protocol on July 25, 2012. However, it has not joined the Madrid Agreement yet. This enables the Philippines to integrate with international practices in the field of intellectual property such as trademark protection, and follow the provisions of relevant international treaties in trademark applications, claiming priority rights, and handling international trademark affairs.

Trademark Protection Principles

Trademark registration in the Philippines follows the "first - to - file" principle. To obtain trademark rights in the Philippines, it is necessary to apply for trademark registration. Trademark applications are submitted through the Intellectual Property Office of the Philippines (IPOPHL).

However, citizens of Paris Convention member states can file trademark registration applications with the Intellectual Property Office of the Philippines based on trademark applications or registrations in their home countries, without the need to be based on the earliest commercial use in the Philippines.

Trademark Classes and Protection Scope

Currently, the Philippines uses the 11th edition of the Nice Classification for the description of goods and services and accepts multi - class applications for a single mark. If the applicant does not reside in the Philippines, he/she must entrust a specialized local agent to handle the application.

Trademark Types Eligible for Registration

In the Philippines, the types of trademarks that can be registered include: words; graphics; graphics with words; 3D marks; containers with stamps or marks.

Generally, for any of the above types, the distinctiveness of the trademark is a key consideration for approval of registration. Please note that according to the current Intellectual Property Code of the Philippines (RA8293), other forms of trademarks such as sound trademarks and scent trademarks cannot be registered with the Intellectual Property Office of the Philippines yet.

Non - Registrable Trademarks

Article 123 of the Philippine Intellectual Property Law stipulates a detailed list of non - registrable trademarks or reasons for non - registration. These mainly include:

• Composed of the flag or emblem of the Philippines or any of its political subdivisions or any foreign country;
• Including the name, portrait, or signature identifying a specific living individual;
• (Based on the principle of first - to - file) Identical to a registered trademark belonging to a different owner or a trademark with an earlier application or priority date;
• (Well - known trademarks at international level) Identical to, deceptively similar to, or constituting a translation of a trademark that is considered well - known internationally and in the Philippines by the relevant Philippine authorities;
• (Descriptive and misleading) Likely to mislead the public, especially regarding the nature, quality, characteristics, or geographical origin of the goods or services;
• (Generic marks) Consisting solely of generic marks identifying the product or service;
• (Descriptive marks) Consisting solely of marks or indications used to designate the kind, quality, quantity, intended purpose, value, geographical origin, production time of the goods, or the services provided by the goods, or other characteristics of the goods or services;
• Violating public order or morality.

Information and Documents Required for Applying for Trademark Registration

The basic materials required for a trademark application are as follows:

• A trademark drawing;
• Specific classes and goods/services items;
• The name and address of the applicant;
• If claiming priority, priority - proof documents and their corresponding English translations are required. If claiming priority, a registration certificate from the home country must be submitted within one year from the date of official notice (an extension of one year can be applied for).
• Submission of a Declaration of Use: The applicant needs to submit a notarized "Declaration of Use of Trademark" to the Philippine Trademark Office within 3 years from the application date, along with corresponding evidence of use. The evidence of use can be the actual label of the trademark in use or pictures/photos of the product packaging clearly showing the trademark.

Trademark Application Process and Time Required

• Submission of Application: The applicant can submit a trademark registration application to the IPOPHL or apply through the Madrid System. The application will be accepted within 1 - 2 weeks after submission.
• Formal Examination: This mainly examines whether the documents are complete and in compliance with the legal format. The examiner will issue an application date and application number to the applicant. If the trademark application documents are incomplete, the applicant must complete the missing documents within 60 days from the date of submitting the trademark application. If the applicant fails to complete the missing documents within this period, with sufficient reasons, the applicant can be granted a 30 - day extension. The application date of a trademark application with missing documents will be calculated from the date when the documents are completed. If the documents are still not completed within the above - mentioned period, the application will be deemed to be automatically abandoned.
• Substantive Examination: This includes the examination of the distinctiveness of the trademark, compliance with the prohibited registration and use provisions, and potential conflicts with prior trademarks.
• If the examination is not passed, the applicant will receive a rejection notice and is required to supplement or amend the relevant materials within the specified time. If no amendment is made within the time limit, the application will be deemed to be abandoned. Common reasons for rejection include: conflicts with the prior rights of another owner; conflicts with well - known trademarks; non - distinctive trademarks; descriptive trademarks; generic, customary, or common signs or indications.
• Publication of Opposition Notice (Trademark Public Notice): If the examiner does not find reasons to reject the application or the rejection reasons have been amended, a decision to approve the trademark registration will be made.
• Subsequently, the trademark will be published in the IPO Gazette for one month. During this period, anyone who believes that they may be damaged by the trademark registration can file an opposition within 30 days after the publication. The trademark registration process will be suspended until the final result of the opposition procedure is obtained.
• Opposition: Any interested party can file an opposition against a published trademark, business name, or trade name within 30 days from the date of trademark publication. When filing a trademark opposition, the opponent needs to pay the relevant fees to the official and submit a sworn trademark opposition statement. With sufficient reasons, a 30 - day extension can be obtained, but the opponent must pay the relevant extension fees.
• The Philippine trademark law allows the full - power agent of the opponent to submit an unsworn trademark opposition statement during the trademark opposition period. However, this opposition statement must be sworn by the opponent within 60 days from the date of submission. With sufficient reasons and payment of the relevant extension fees, a 30 - day extension can be approved.
• Appeal: If the applicant is not satisfied with the review rejection by the trademark examiner of the Philippine Patent, Trademark, and Technology Transfer Office, he/she can file an appeal with the Court of Appeals of the Philippines within 15 days from the date of receiving the review rejection notice. The Court of Appeals will make a ruling.
• If the applicant is not satisfied with the ruling of the Court of Appeals, he/she can file an appeal with the Supreme Court of the Philippines within 10 days from the date of receiving the ruling. The Supreme Court will make a final ruling.
• Issuance of Registration Certificate: If there is no opposition or the opposition result is in favor of the applicant, the applicant will receive a trademark registration certificate issued by the IPOPHL. The registered trademark will enjoy a 10 - year protection period.

Trademark Protection Period and Renewal

Protection Period

The validity period of a registered trademark in the Philippines is 10 years, calculated from the application date.

Renewal Provisions

When the validity period of a trademark expires, if the trademark owner wishes to continue using the trademark, he/she needs to apply for renewal within 6 months before the expiration. Each renewal registration is also valid for 10 years. If the 6 - month renewal period before the expiration is missed, there is a 6 - month grace period, but additional grace - period fees need to be paid. For renewal, the original or a copy of the trademark registration certificate, a fully completed renewal application form, and proof of payment of renewal fees are required. If there have been changes to the trademark, corresponding change - proof documents are also needed. If the application is made through an agency, a power of attorney is also required. In addition, each time a renewal is applied for, a Declaration of Actual Use (DAU) and evidence of the use of the corresponding trademark in the Philippines need to be submitted to prove that the trademark is still in use. Failure to submit on time will result in the invalidation of the trademark.

Non - Use Cancellation System

The owner of a Philippine trademark should independently submit the DAU and evidence of the use of the corresponding trademark in the Philippines within the following periods. Otherwise, the trademark may be cancelled:

• 3 - Year DAU: To be submitted within 3 years from the application date. During this period, the trademark applicant can request an extension of 6 months to submit the DAU, but this application must be made within 3 years from the trademark application date and relevant fees need to be paid.
• 5 - Year DAU: To be submitted within 1 year from the 5 - year anniversary of trademark registration.
• Renewal DAU: To be submitted within 1 year from the expiration date of each renewal; also to be submitted within 1 year from the 5 - year anniversary of trademark registration renewal (this requirement applies to all trademarks that need to be renewed as of January 1, 2017, regardless of the date of the renewal request).

Special Circumstances for Non - Use Cancellation

If the non - use is caused by circumstances independent of the will of the trademark owner, such as government regulations prohibiting sales, etc., the non - use can be excused. However, lack of funds cannot be used as an excuse for non - use. If the form of trademark use is different from the registered form but does not change its distinctive features, it will not be a reason for cancellation or removal of the trademark, nor will it weaken the protection of the trademark. In addition, the use of a trademark in connection with some of the goods or services in the registered class can prevent the cancellation of the trademark for other goods or services in the same class; the use of a trademark by related companies, if not deceiving the public and under the control of the trademark owner, can be regarded as the use by the trademark owner and will not affect the validity of the trademark and its registration.