The following articles shall comprehensively guide to register trademark in Philippines which the trademark applicant should note prior to officially filing Philippines trademark.
| QUESTIONS | ANSWERS |
| What is trademark rights in PHILIPPINES: first to file or first to use? | “First to file” is the rule to apply to register and protect the trademark in Philippines.
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| What is advantage of trademark registration in PHILIPPINES? | Philippines does not require individuals and organizations to register their trademark in the Trademark Office, but trademark registration is very important and brings many benefits to the holder.
For example, it shall be an essential evidence to prove the ownership of the holder if dispute occurs between the owner and other person who uses the mark illegally; it provides total protection for the mark, area of protection before national and international trademarks. In addition, the rule “first to file” is applied in Philippines so filing trademark application as soon as possible is very essential so that the holder has rights with their trademark in fact.
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| Definition of trademark in PHILIPPINES (i.e. What can be a trademark in PHILIPPINES)? | According to the provisions of Trademark Act in Philippines, a trademark is defined as a sign used to goods/services of other organizations/individuals. Hence, a sign shall be considered as a trademark when it meets conditions in accordance with Trademark Act: It must a visible sign containing factors such as names; devices; certain three-dimensional shapes; colors; slogans; trade dress/getup and the trademark is capable of distinguishing trademarks of other individuals and organizations. |
| Do we need to conduct trademark search in PHILIPPINES before officially filing trademark in PHILIPPINES? and Why? | It is not mandatory. However, it is very useful for applicant to determine the chance of success when filing a trademark application in Philippines.
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| What international treaties PHILIPPINES is a member? | Participating in international treaties and agreements plays an important role for Philippines in improving the national law. Through taking part in many bilateral and multilateral treaties and agreements such as Paris Convention, Madrid Protocol, Nice Agreement, Vienna Agreement and Trips, the law in Philippines is more and more enhanced to protect national trademarks better and even international trademarks in Philippines.
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| What is procedure of trademark registration in Philippines | Prior to registering the trademark in Philippines, trademark search is not mandatory but necessary to ensure that their trademark is not similar to others through several search tools such as Global Brand Database and Madrid Monitor. This shall help the holder have a better chance for trademark registration in Philippines. After searching the trademark carefully, if the holder carries out the procedure of trademark registration immediately and the trademark application has to be filed directly to the Trademark Office.
The application needs to endure three stages which are Formality Examination, Gazette Industrial Property. Substantive examination. These stages are to guarantee that the trademark is not similar with previous registered trademarks. The trademark registration spends from 6 to 8 months without opposition. Finally, the owner can be granted certificate if they register their trademark in Philippines successfully.
Therefore, grasping exactly the procedure of trademark registration in Philippines is an important factor for the owner to register a trademark successfully. |
| When is opposition to trademark application in PHILIPPINES? | Any parties have the right to file the opposition against an applied trademark before it has been granted the protection. |
| Do we need Proof of use for trademark in PHILIPPINES? | Proving the use of the trademark in Philippines is not mandatory, but the holder must submit proof of use with the first Declaration of Actual Use (DAU) within three years from the filing date and with the second DAU within five years from the date of issuance of the registration.
Besides, other individuals and organizations can ask the Trademark Office to cancel the effectiveness of the protected certificate if such individuals and organizations prove that the holder does not use their trademark within following three years. However, the holder can file documents to prove the use of their trademark such as advertising, establishing business locations and especially providing customers with their items/services. Hence, the holder needs to use their trademark to guarantee their rights and benefits.
Therefore, although a trademark in Philippines is successfully registered, validity of the trademark can be cancelled if not being used for a period of time. |
| What rights do owners of trademark have after getting trademark registration in PHILIPPINES? | After registering trademark in Philippines successfully, the owner can use exclusively their trademark. This means that they have rights to deal with the infringement of the third party and subsequent conflicting applications and rights to follow a cancellation action against a subsequent conflicting trademark. Besides, through their rights, they can license third parties to use the trademark and claim for priority in other countries signing treaties containing provisions on priority in which Philippines has joined. The protection certificate of the trademark is valid within 10 years from the filing date and the holder can renew the process by doing renewal procedures. However, the holder needs to note that the holder shall pay renewable fees within no more 6 months before the certificate is expired and within the grace which is 6 months after the expired date. In this case, the holder needs to pay a fine for the late filing. |
| What is term of trademark in PHILIPPINES? | A trademark should be protected in Philippines for ten years starting from the registration date. |
| What is use requirement after trademark registration in PHILIPPINES?
What actions could be considered as use of trademark in PHILIPPINES?
Could we stop validity of trademark registration certificate based on non-use for a period of time?
How many years of non-use? |
The trademark is required to be used in Philippines and it must be used within three years from the registration date. The use of trademark must be on commercial scale.
If there is no use on the Philippines for a consecutive period of 3 years, then there is a risk of the mark being cancelled if a party files a Petition for Cancellation based on non-use. |
| Is cancellation of trademark registration in PHILIPPINES available?
What is the foundations for such cancellation? |
The cancellation of trademark registration in Philippines is available. A trademark may be cancelled where: – The registered trademark conflict with the earlier trademark; – The trademark consists the signs are indistinguible such as the sign indicates the kind, quality, quantity, intended purpose or value of goods/services or other characteristics of goods or services. – The marks that breach the copyright of another parties. – The mark that are similar or identical with the well-known trademark. – The mark that are similar or identical with the armorial bearings, flags and other state emblems. – The mark that are conflict with the protected industrial design or geographical indication. – The mark is generic. – The mark is against the public policy or morality of the social. – The mark that are deceive the public. |
| What is required documents for renewal trademark in PHILIPPINES?
Is grace period after renewal date allowed? |
The grace period is 06 months from the expire date of the trademark registration. The power of attorney is required for renewing a trademark in Philippines. |