Trademarks Comparative Guide -

1 Legal framework

1.1 What is the statutory or other source of trademark rights?

The primary source of trademark rights in the Philippines is the IP Code of the Philippines (RA 8293), as amended. The IP Code should be read in conjunction with the Trademark Regulations of 2017 (Intellectual Property Office of the Philippines (IPOPHL) Memorandum Circular 17-010).

1.2 How do trademark rights arise (ie, through use or registration)?

The Philippines follows a first-to-file trademark system. The rights in a trademark are acquired through registration made validly in accordance with the law. Well-known marks are likewise protected in the Philippines, even if they are not registered in the Philippines.

Jurisprudence also provides that it is not the application or registration of a trademark that vests ownership thereof; instead, it is the ownership of a trademark that confers the right to register the same. Hence, bad-faith registration is proscribed in the Philippines, as the trademark applicant must be the true and lawful owner of the mark.

1.3 What is the statutory or other source of the trademark registration scheme?

The statutory source of the trademark registration scheme in the Philippines is the IP Code. The IP Code should be read in conjunction with the Trademark Regulations of 2017.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

The IP Code defines a 'mark' as any visible sign that is capable of distinguishing the goods (trademark) or services (service mark) of an enterprise, including a stamped or marked container of goods. Thus, any visual sign can be registered as a trademark in the Philippines, such as the following:

word marks;
figurative marks;
slogans;
composite marks;
colour marks;
three-dimensional marks;
position marks;
hologram marks;
motion marks; and
collective marks.

Consequently, the following marks, which are not visually perceptible, cannot be registered in the Philippines:

sound marks;
smell marks;
touch marks; and
taste marks.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

A trademark must be distinctive to perform the source-identifying function of a trademark – that is, it must be capable of identifying the source of the goods to which it is affixed, and of distinguishing the owner's goods or services from those of others. Thus, descriptive marks (unless they have acquired secondary meaning) and generic marks cannot be registered in the Philippines.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

Marks that fall under any of the absolute or relative grounds for refusal cannot be registered in the Philippines. The IP Code provides that 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 or her written consent, or the name, signature, or portrait of a deceased president of the Philippines, during the life of his or her surviving spouse, if any, except by written consent of the surviving spouse;
is identical to a registered mark belonging to a different owner 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
it so closely resembles such a mark as to be likely to deceive or cause confusion;
is identical 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 in the Philippines, as being the mark of a person other than the applicant for registration, and which is used for identical or similar goods or services. In determining whether a mark is well known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
is identical or confusingly similar to, or constitutes a translation of, a mark considered well known in accordance with the preceding point that is registered in the Philippines with respect to goods or services that are not similar to those for which registration is sought, where:
- 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; and
- 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 colour alone, unless defined by a given form; or
is contrary to public order or morality.

As for signs or devices mentioned in the 10th to 12th points above, nothing shall prevent their registration if they have become distinctive in relation to the goods sought to be registered as a result of their use in commerce in the Philippines. The applicant's substantially exclusive and continuous use of the mark in commerce in the Philippines, in relation to his or her goods or services, for five years before the claim of distinctiveness is made may serve as prima facie evidence that the mark has become distinctive.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The governing body that controls the registration process is the Intellectual Property Office of the Philippines (IPOPHL). Specifically, the Bureau of Trademarks of IPOPHL is in charge of examining applications for the registration of marks and issuing certificates of registration.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

The fees that IPOPHL charges are as follows:

Filing fee: $54 per class.
Publication fee: $20.
Issuance fee and second publication fee: $45.

Additional fees will be incurred if colour or convention priority is claimed.

3.3 Does the trademark office use the Nice Classification scheme?

Yes. IPOPHL uses the Nice Classification scheme. Each registration shall indicate the goods or services by their names, grouped according to the classes of the Nice Classification, and each group shall be preceded by the number of the class of that classification to which that group of goods or services belongs, presented in the order of the classes of the Nice Classification. The Nice Classification shall pertain to the latest edition published by the World Intellectual Property Organization.

3.4 Are 'class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

Class-wide applications are not allowed. The applicant must indicate 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 to which each group of goods or services belongs.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

A declaration of bona fide intention to use the trademark for the goods or services identified in the application is not required when filing a trademark application. However, a declaration of actual use (DAU) must be filed within the following timeframes:

three years from the filing date of the application;
one year from the fifth anniversary of the date of registration of the mark;
one year from the fifth anniversary of the date of renewal of the mark; and
one year from the date of renewal.

Failure to file a DAU will result in the removal of the mark from the Trademark Register. Moreover, a trademark can be cancelled at any time if the registered owner of the trademark, without legitimate reason, fails to use the mark within the Philippines, or cause it to be used in the Philippines by virtue of a licence, for an uninterrupted period of at least three years.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes. IPOPHL performs a relative examination of trademark applications. The IP Code provides that a mark cannot be registered if:

it is identical to a registered mark belonging to a different owner 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
it so nearly resembles such a mark as to be likely to deceive or cause confusion.

3.7 What types of examinations does the trademark office perform other than relative examination?

IPOPHL first performs a formality examination to determine whether the application complies with the following requirements needed for the grant of a filing date:

an express or implicit indication that the registration of a mark is sought;
the identity of the applicant;
indications sufficient to contact the applicant or his or her representative, if any;
a reproduction of the mark whose registration is sought; and
the list of goods or services for which the registration is sought.

Subsequently, aside from relative examination, IPOPHL also conducts a substantive examination to determine whether the mark falls under any of the absolute grounds for refusal. See question 2.3 for the list of absolute grounds for refusal.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Aside from confusion with a senior mark, descriptiveness and genericness, 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 or her written consent, or the name, signature, or portrait of a deceased president of the Philippines, during the life of his or her surviving spouse, if any, except by written consent of the surviving spouse;
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 colour alone, unless defined by a given form; or
is contrary to public order or morality.

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

The Philippines no longer has a supplemental register on which descriptive marks may be registered. Before the enactment of the IP Code, IPOPHL allowed descriptive marks to be registered on the supplemental register. However, the IP Code now provides for only one register. Upon enactment of the IP Code, trade names and trademarks registered in the supplemental register under the old trademark law remain in force, but can no longer be renewed.

Nevertheless, the IP Code provides that nothing shall prevent the registration of any descriptive mark that has become distinctive in relation to the applicant's goods or services as a result of use of the mark in commerce in the Philippines. The applicant's substantially exclusive and continuous use of the mark in commerce in the Philippines, in relation to his or her goods or services, for five years before the claim of distinctiveness is made may serve as prima facie evidence that the mark has become distinctive.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

No. A third party cannot object to the registration of a mark before the application has been published in the IPOPHL e-Gazette. An opposition can be brought only once a mark has been published for opposition purposes.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

No. Commercial use of a mark is not a requirement for its registration. Thus, an applicant can file a trademark application for a mark even if the mark is not yet used in commerce. However, a DAU must be filed within the following periods:

three years from the filing date of the application;
one year from the fifth anniversary of the date of registration of the mark;
one year from the fifth anniversary of the date of renewal of the mark; and
one year from the date of renewal.

Failure to file a DAU will result in removal of the mark from the Trademark Register. Moreover, a trademark can be cancelled at any time if the registered owner of the trademark, without legitimate reason, fails to use the mark within the Philippines, or cause it to be used in the Philippines by virtue of a licence, for an uninterrupted period of at least three years.

3.12 How much time does it typically take from filing an application to the first office action?

It usually takes IPOPHL around two months from filing of the application to issue the first office action. If no office action is issued, IPOPHL shall issue a notice of allowance in lieu of an office action.

3.13 How much time does it typically take from filing an application to publication?

It usually takes IPOPHL around two to five months from filing of the application to issue the notice of allowance for publication of the mark.

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

The final decision of the trademark examiner is subject to appeal to the director of the Bureau of Trademarks of the Intellectual Property Office of the Philippines (IPOPHL). The appellant must file a notice of appeal and pay the required fees within two months of the mailing date of the decision that is being appealed. The notice of appeal must specify the grounds on which the appeal is taken and must be signed by the appellant or by the attorney of record.

Within two months of filing of the notice of appeal, the appellant must file a brief of the authorities and arguments on which he or she relies to maintain the appeal. Failure to file the brief within this timeframe shall result in dismissal of the appeal.

The decision of the director shall become final and executory 30 days after receipt of a copy thereof by the appellant, unless during that period a motion for reconsideration is filed with the director or an appeal to the director general of IPOPHL has been perfected. Only one motion for reconsideration is allowed. A motion for reconsideration, however, is not required for the purposes of filing an appeal to the director general.

4.2 What is the procedure for appealing a trademark office refusal?

The decision of the director general of IPOPHL can be appealed to the Court of Appeals by filing a petition for review within 15 days of notification of the decision in accordance with the Rules of Court.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

The decision of the Court of Appeals can be appealed to the Supreme Court by filing a petition for review on certiorari within 15 days of notification of the decision in accordance with the Rules of Court.

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes. A third party can oppose a trademark application once the mark has been published in the Intellectual Property Office of the Philippines (IPOPHL) e-Gazette for opposition purposes.

5.2 Who has standing to oppose a trademark application?

Anyone that believes that he or she would be damaged by the registration of a mark may file an opposition to the trademark application.

5.3 What is the timeframe for opposing a trademark application?

A notice of opposition to a trademark application must be filed within 30 days of publication of the mark in the IPOPHL e-Gazette for opposition purposes. However, the opposing party may request up to three motions for an extension of time to file notice of opposition of 30 days each.

If no opposition is filed within 30 days of publication of the mark, it is deemed registered on the next calendar day following the expiration of the opposition period.

5.4 Which body hears oppositions?

The Bureau of Legal Affairs is the bureau of IPOPHL that hears and decides oppositions to the applications for registration of marks.

5.5 What is the process by which an opposition proceeds?

The normal process by which an opposition proceeds is as follows:

A fully substantiated verified notice of opposition is filed within 30 days, subject to extension, of publication of the trademark application in the IPOPHL e-Gazette.
The respondent files a fully substantiated verified answer within 30 days, subject to extension, of receipt of a copy of the notice to answer, with proof of service to the opposing party.
If the answer is filed on time, the case shall be submitted to alternative dispute resolution (ADR).
If the case is not resolved or dismissed through ADR, the hearing/adjudication officer shall issue an order setting the conduct of the preliminary conference.
Upon termination of the preliminary conference, the hearing/adjudication officer shall issue an order in open court requiring the parties to submit their respective position papers within 10 days of the issuance of the order in open court.
The hearing/adjudication officer shall issue a decision or final order within 60 days of the date on which the case is deemed submitted for decision.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

The appellant can file an appeal to the director of the Bureau of Legal Affairs of IPOPHL within 10 days of receipt of the decision or final order. Within 30 days of receipt of the decision by the director, the appellant may file a memorandum of appeal to the director general of IPOPHL.

The decision of the director general can be appealed to the Court of Appeals by filing a petition for review within 15 days of notification of the decision in accordance with the Rules of Court. The decision of the Court of Appeals can be appealed to the Supreme Court by filing a petition for review on certiorari within 15 days of notification of the decision in accordance with the Rules of Court.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

An unfair competition action is available to owners of marks that are not registered in the Philippines. The IP Code provides that anyone who has identified in the minds of the public his or her business, goods or services from those of his or her competitors – whether or not a registered mark is employed – has a property right in the goodwill of that business, goods or services, which will be protected in the same manner as other property rights.

Well-known marks, even if not registered in the Philippines, are protected under the IP Code. The IP Code provides that a mark cannot be registered if it is identical or confusingly similar to, or constitutes a translation of, a mark that is well known internationally and in the Philippines and that is used for identical or similar goods or services, whether or not the well-known mark is registered in the Philippines.

The IP Code likewise provides that trade names shall be protected – even prior to or without registration – against any unlawful act committed by third parties. In particular, any subsequent use of trade name by a third party – whether as a trade name, trademark or collective mark – or any such use of a similar trade name or trademark which is likely to mislead the public shall be deemed unlawful.

Jurisprudence also provides that it is not the application or registration of a trademark that vests ownership thereof; rather, it is the ownership of a trademark that confers the right to register the same. Hence, bad-faith registration is proscribed in the Philippines, as the trademark applicant must be the true and lawful owner of the mark. Therefore, the true owner of the trademark can file a cancellation or opposition action against marks that are registered or are sought to be registered in bad faith.

6.2 What legal rights are conferred by a trademark registration?

The rights in a trademark shall be acquired through registration made validly in accordance with the law.

Except in the case of imports of drugs and medicines allowed under the IP Code and off-patent drugs and medicines, the owner of a registered mark shall have the exclusive right to prevent third parties from using, in the course of trade, identical or similar marks for identical or similar goods or services, where such use would result in a likelihood of confusion. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. Thus, the owner of a registered trademark can file an infringement action against trademark infringers.

Also, a certificate of registration of a trademark shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and the registrant's exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

No. The Philippines no longer has a supplemental register on which descriptive marks may be registered. The IP Code now provides for only one register.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

A civil, criminal or administrative case may be filed against a trademark infringer. Depending on the type of case filed, the remedies available against a trademark infringer are as follows:

damages;
impoundment of sales invoices and other documents evidencing sales;
forfeiture of paraphernalia and all real and personal properties that were used in the commission of the offence;
injunction;
preliminary injunction;
temporary restraining order;
preliminary attachment;
cancellation or suspension of any permit, licence, authority or registration that was granted by the Intellectual Property of the Philippines (IPOPHL);
destruction or disposal outside channels of commerce of the infringing goods;
censure;
contempt;
imprisonment; and
fine.

7.2 What remedies are available against trademark dilution?

The IP Code does not provide for trademark dilution although trademark dilution was mentioned in a 2005 case decided by the Supreme Court.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

Yes. The IP Code provides for remedies against other harms to trademark rights besides infringement, namely:

unfair competition; and
false designations of origin; and
false or misleading description or representation of fact.

7.4 What is the procedure for pursuing claims for trademark infringement?

An administrative, civil or criminal action may be filed against a trademark infringer, as follows:

Administrative case: An administrative complaint for trademark infringement is commenced by filing a verified complaint with the Bureau of Legal Affairs (BLA) of IPOPHL. The BLA has original jurisdiction in administrative actions for violations of laws involving IP rights where the total damages claimed are not less than PHP 200,000.
Civil case: A civil case for trademark infringement is commenced by filing a verified complaint with the proper court.
Criminal case: A criminal case for trademark infringement is commenced by filing a complaint with the prosecutor. The prosecutor will conduct a preliminary investigation to determine whether there are sufficient grounds to engender a well-founded belief that trademark infringement has been committed, and that the respondent is probably guilty thereof and should stand trial.

7.5 What typical defences are available to a defendant in trademark litigation?

The IP Code provides for the following limitations to actions for trademark infringement:

There shall be no infringement of trademarks or trade names of imported or sold patented drugs and medicines that have been put on the market in the Philippines by the owner of the product, or with the owner's express consent, as well as imported or sold off-patent drugs and medicines, where the trademarks have not been tampered with, unlawfully modified or infringed.
Registration of a mark shall not confer on the registered owner the right to preclude third parties from using in good faith their names, addresses, pseudonyms, geographical name or exact indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply, of their goods or services, provided that such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.
A registered mark shall have no effect against anyone that, in good faith, before the filing date or the priority date, was using the mark for the purposes of its business or enterprise. However, this right may be transferred or assigned only together with the enterprise or business in which the mark is used.
Where an infringer that is engaged solely in the business of printing the trademark or other infringing materials for others is an innocent infringer, the trademark owner shall be entitled only to an injunction against future printing. This defence applies to innocent infringers only.
Where the infringement complained of is contained in or is part of a paid advertisement in a newspaper, magazine or other similar periodical, or in an electronic communication, the remedies of the trademark owner against the publisher or distributor of such newspaper, magazine or other similar periodical or electronic communication shall be limited to an injunction against presentation of such advertising matter in future issues or in future transmissions of such electronic communications. This defence applies only to innocent infringers.

Other defences that are available are as follows:

the marks are not identical or confusingly similar;
the use of the mark is not likely to deceive or cause confusion;
the mark is not used in commerce;
invalidity of the trademark;
abandonment of the trademark;
prescription;
estoppel;
laches; or
lack of intent to deceive the public and defraud a competitor in cases of unfair competition.

7.6 What is the procedure for appealing a decision in trademark litigation?

The decision of the court in criminal and civil cases and the decision of the director general of IPOPHL in administrative cases can be appealed to the Court of Appeals by filing a petition for review within 15 days of notification of the decision in accordance with the Rules of Court. The decision of the Court of Appeals can be appealed to the Supreme Court by filing a petition for review on certiorari within 15 days of notification of the decision in accordance with the Rules of Court.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

A certificate of registration shall remain in force for 10 years and may be renewed for further 10-year periods on its expiration upon payment of the prescribed fee and upon the filing of a request.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

In order to maintain a trademark or renew a registration, a declaration of actual use (DAU) must be filed within the following periods:

three years from the filing date of the application;
one year from the fifth anniversary of the date of registration of the mark ;
one year from the fifth anniversary of the date of renewal of the mark; and
one year from the date of renewal.

Failure to file a DAU will result in removal of the mark from the Trademark Register.

8.3 What are the grounds for cancelling a trademark registration?

The IP Code provides that a mark may be cancelled based on the following grounds:

within five years of the date of the registration of the mark;
at any time, if the registered mark:
- has become the generic name for the goods or services, or a portion thereof, for which it is registered;
- has been abandoned;
- was registered fraudulently or contrary to the IP Code; or
- 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; or
at any time, if the registered owner of the mark without legitimate reason fails to use the mark in the Philippines, or to cause it to be used in the Philippines by virtue of a licence, for an uninterrupted period of at least three years.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

The Intellectual Property Office of the Philippines (IPOPHL) cannot cancel a trademark registration on its own initiative. Anyone that believes he or she or will be damaged by the continued registration of a trademark must file a petition for cancellation of the trademark.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

The petition for cancellation must be in writing, verified and accompanied by a certification of non-forum shopping. The petition must be filed in duplicate with proof of service to the respondent, and must indicate the following:

the names and addresses of the petitioner and the other parties, including the respondent;
the assigned registration number, the name of the registrant and the date of registration of the trademark whose cancellation is sought; and
the ultimate facts constituting the petitioner's cause or causes of action and the relief sought.

8.6 What is the procedure for appealing a decision cancelling a registration?

The appellant may file an appeal to the director of the Bureau of Legal Affairs of IPOPHL within 10 days of receipt of the decision or final order. Within 30 days of receipt of the director's decision, the appellant may file a memorandum of appeal to the director general of IPOPHL.

The decision of the director general may be appealed to the Court of Appeals by filing a petition for review within 15 days of notification of the decision in accordance with the Rules of Court. The decision of the Court of Appeals can be appealed to the Supreme Court by filing a petition for review on certiorari within 15 days of notification of the decision in accordance with the Rules of Court.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

The IP Code provides that any licence contract concerning the application or registration of a mark shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If the licence contract does not provide for such quality control or if such quality control is not effectively carried out, the licence contract shall not be valid.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

A licence contract need not be recorded with the Intellectual Property Office of the Philippines. However, a licence contract shall have no effect against third parties until it is recorded accordingly.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

The IP Code provides that any licence contract shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If the licence contract does not provide for such quality control or if such quality control is not effectively carried out, the licence contract shall not be valid.

In the Philippines, a declaration of actual use (DAU) must be filed in order to maintain the trademark. Failure to file a DAU will result in removal of the mark from the register. Moreover, a trademark can be cancelled at any time if the registered owner of the trademark, without legitimate reason, fails to use the mark within the Philippines, or cause it to be used in the Philippines by virtue of a licence, for an uninterrupted period of at least three years.

Thus, if the licensor is not using the trademark in the Philippines and the licence contract does not provide for effective control by the licensor of the quality of the goods or services of the licensee, then the use of the local licensee will not redound to the benefit of the licensor. This makes the trademark susceptible to removal or a cancellation action for non-use of the mark in the Philippines.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

Unregistered well-known trademarks are protected in the Philippines. The IP Code provides that a mark cannot be registered if it is identical or confusingly similar to, or constitutes a translation of, a mark that is well known internationally and in the Philippines and is used for identical or similar goods or services, regardless if the mark is not registered in the Philippines.

In determining whether a mark is well known, the following criteria or any combination thereof may be considered:

the duration, extent and geographical area of any use of the mark – in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity, and presentation at fairs or exhibitions of the goods and/or services to which the mark applies;
the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
the degree of inherent or acquired distinctiveness of the mark;
the quality, image or reputation acquired by the mark;
the extent to which the mark has been registered worldwide;
the exclusivity of registration attained by the mark worldwide;
the extent to which the mark has been used worldwide;
the exclusivity of use attained by the mark worldwide;
the commercial value attributed to the mark worldwide;
the record of successful protection of the rights in the mark;
the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and
the presence or absence of identical or similar marks validly registered for, or used on, identical or similar goods or services and owned by persons other than the person claiming that the mark is a well-known mark.

An unfair competition action is likewise available to owners of marks that are not registered in the Philippines. The IP Code provides that anyone who has identified in the minds of the public his or her business, goods or services from those of his or her competitors, whether or not a registered mark is employed, has a property right in the goodwill of the business, goods or services, which will be protected in the same manner as other property rights.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Yes. The Intellectual Property Office of the Philippines permits the registration of a mark based on a foreign or international registration, as the Philippines is a member of the Paris Convention. The Paris Convention allows a foreign applicant to claim the priority date of a prior foreign application if filed within six months of the filing date of the foreign application.

The Philippines is also a member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The Madrid Protocol allows a foreign applicant to seek protection in the Philippines by designating the Philippines in the application for international registration.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Philippines: Trademarks Comparative Guide