The Philippine Intellectual Property Office (“IPOPHL”) recently issued IPOPHL Memorandum Circular No. 2025-009, or the Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks (“Rules”), which took effect on 28 April 2025.
The Rules establish an ex-parte procedure for the declaration of well-known marks which are independent and outside of litigious proceedings, such as inter partes and intellectual property rights violation cases. They also create a Register of Well-Known Marks in the Philippines.
With the Rules in effect, brand owners now have a new way to not only protect their marks, but also to enhance their brand's commercial reputation, increase consumer loyalty, and boost their market share.
Procedure
To be included in the Register of Well-Known Marks, trademark owners may either: (1) file a notarized application to declare their marks as well-known in the Philippines; or, (2) if the marks have been previously declared as well-known by a competent authority in the Philippines or abroad, a manifestation to record such previous declaration in the Philippine Register. Both the application and the manifestation will be evaluated based on the following criteria, wherein (a), (b), (c), and (d) are deemed mandatory:
- The duration, extent and geographical area of any use and/or promotion of the mark, including advertising or publicity and the 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 the inherent or acquired distinction of the mark;
- The quality, image, or reputation acquired by the mark; and
- Any of the following:
- the extent to which the mark has been registered in the world;
- the exclusivity of registration attained by the mark in the world;
- the extent to which the mark has been used in the world;
- the exclusivity of use attained by the mark in the world;
- the commercial value attributed to the mark in the world;
- the record of successful protection of the rights over the mark;
- the outcome of litigations dealing with the issue of whether the mark is a well-known mark, if any; 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 their mark is a well-known mark.
Evidence supporting a mark's inclusion into the Register of Well-Known Marks may pertain to both the Philippines and abroad but cannot be limited to foreign evidence only. It is recommended that the evidence be presented in an affidavit.
After examination of the supporting documents submitted by the applicant, the examiner may issue an office action on the application or allow it to proceed to publication. The applicant will have an opportunity to respond to an office action within two (2) months from the mailing date, after which, the application will be deemed abandoned. Like a regular trademark application, an abandoned application for the declaration of well-known status may be revived within three (3) months from the mailing date of the Notice of Abandonment.
An application or manifestation which complies with the aforementioned criteria will be published in the Philippine E-Gazette for one (1) month, during which period any person who may be damaged by the mark's declaration can file a Notice of Third-Party Observation (“Third-Party Observation”). With the Rules establishing a non-litigious alternative to obtaining a declaration of well-known status, the Third-Party Observation provides one (1) of two (2) opportunities for third parties who may be affected by such declaration to raise their objections and provide counter-evidence – the second being a petition for revocation after the declaration is granted.
Once the mark is declared as well-known, the Bureau of Trademarks (“BOT”) shall issue a Certificate of Well-Known Mark Declaration (“Certificate”) which serves as prima facie evidence of the well-known status of the mark with respect to the goods and services stated in the application. The declaration is valid for ten (10) years, renewable for similar periods. To maintain the declaration, the registrant must periodically prove continuous use of the mark in commerce as well as the continuing well-known status of the mark by submitting a declaration with proof to that effect within one (1) year from the fifth anniversary of the declaration and upon each renewal. If the mark is already registered in the Trademarks Register, only evidence of well-known status is required to be submitted provided that the registrant also complies with the Declaration of Actual Use (“DAU”) requirements to maintain a trademark registration in the Philippines.
Continuous use is established by way of receipts, actual labels, signages, bills of lading, photos of the product bearing the mark, among others. Presumably, the criteria and requirements for continuous use for declared well-known marks are the same as those provided by the Trademark Regulations of 2023, as revised, for the DAU requirements of pending and registered marks in the Philippines. The well-known status of a mark, on the other hand, may be shown by presenting advertisements, certificates of registrations, financial statements, and other similar documents. Evidence of both use and well-known status needed to maintain the declaration or recordal must pertain to the Philippines but may also include foreign evidence.
Notwithstanding the issuance of the Certificate, a declaration of well-known status may be revoked based on the following grounds:
- Motu propio, for failure to renew the declaration prior to its expiration or within the six (6) month grace period after its expiration;
- Motu propio, for failure to submit the required evidence of continuous use; and
- By petition, due to the loss of the well-known status of the mark.
Benefits
After all requisites have been complied with and a Certificate is issued, a brand owner may enjoy all the benefits of securing a declaration and being included in the Register of Well-Known Marks. The Certificate may be used to establish the prima facie notoriety of the mark in various administrative and court proceedings without the need to present voluminous evidence in support of such allegations. In other words, a declaration of well-known status lightens the evidentiary burden on the owner of a well-known mark in opposition or cancellation cases or in infringement or unfair competition suits.
It must be emphasized that a declaration of well-known status does not replace the full legal benefits that a trademark registration accords a mark. Registration remains to be the primary mode to both acquire and protect trademark rights in the Philippines. A Certificate of Trademark Registration is prima facie evidence not only of the status of the mark, but of the validity of its registration, the registrant's ownership of the mark, and of the registrant's exclusive right to use the same in connection with the covered goods or services. In order to file a trademark infringement case in the Philippines, a registered mark is required. Most e-commerce platforms require the submission of Certificates of Registration as proof of the holder's right to proceed with enforcement actions. Similarly, recordals with the Bureau of Customs (“BOC”) for purposes of monitoring and seizure of infringing items require copies of the Certificates or Registration to support a claim of ownership. Thus, to fully protect a mark, registration remains essential.
A declaration or recordal of well-known status streamlines the enforcement of the IP Code's protective provisions against dilution, misuse, and bad-faith applications/registrations. Originally, only earlier filed and registered marks in the Trademarks Register are automatically considered during the ex-parte examination of trademark applications, resulting in the rejection of problematic marks without the need to undergo litigious proceedings. However, with the effectivity of the Rules, marks in the Register of Well-Known Marks are now also considered during examination. By registering and having their marks declared as well-known, brand owners would ultimately save on time and expenses by avoiding having to file oppositions and cancellations against such marks.
A formal declaration of well-known status of a mark may likewise act as a deterrent against infringers. Of course, inclusion in the Trademarks Register already serves as public notice of a registrant's claim of ownership of a mark. But inclusion in the Register of Well-Known Marks takes this a step further. The Register of Well-Known Marks serves as notice not only of a mark's well-known status, but also of its prior appropriation and actual ownership. Given the public nature of both Registers, the publication of a mark as part not only of the Trademarks Register but also of the Register of Well-Known Marks creates a presumption of notice which is essential in infringement suits for purposes of acquiring damages, as well as suits alleging fraud like unfair competition actions.
A declaration of well-known status also reinforces the market position of established brands, boosts consumer trust and loyalty, and ultimately enhances a brand's commercial value. Registration of a mark affirms its ownership and legitimacy, while a declaration of well-known status further signifies to consumers that a brand has solidified popularity, which necessitates a high-level of recognition, importance, and loyalty within a relevant industry or population segment, endurance, and high commercial value. Thus, a declaration can be seen as a self-perpetuating popularity mechanism that helps retain existing constituents by affirming their choice while encouraging new consumers based on its formalized reputation.
As of 10 July 2025, there are eighty-one (81) marks listed in the Well-known Register, including Lacoste, Gucci, In-N-Out Burger, Apple, and GQ, among others.
Overall, having a mark declared as well-known in the Philippines: (1) simplifies administrative and judicial enforcement proceedings; (2) enhances legal protection; (3) deters against potential infringement; and (4) enhances brand value. Thus, brand owners are strongly encouraged to register their well-known marks to bolster their brand reputation and expedite time-consuming litigation proceedings as well as avoid them altogether. Hence, it is strongly recommended that both local and international brand owners review their IP portfolios and consider applying for a declaration of well-known status under the new Rules to strengthen their rights and market presence in the Philippines.
Should your company/client be interested in filing an application for the declaration of well-known status, or the recordal of a previous declaration of such status, V&A Law's Intellectual Property Department would be happy to assist. You may contact us at ip.department@thefirmva.com.
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.
