Trade and Service Marks
– The Intellectual Property Code of the Philippines, as amended by R.A.s 9150, 9502, and 10372, effective January 1, 1998.
– R.A. 623: Use of Duly-Stamped and Marked Containers (1951), as amended by R.A. 5700.
– Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers of 2017.
– Philippine Regulations Implementing the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (2017).
– Trademark Regulations of 2023, in force since February 14, 2023.
Membership in International Conventions
– Paris Convention, since September 27, 1965, Lisbon Act and Stockholm Act, with the exception of Art. 1 to 12, since July 16, 1980.
– Convention Establishing the World Intellectual Property Organization (WIPO), since July 16, 1980.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since July 25, 2012.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since May 14, 2019.
Applicant: only the owner of a trademark, trade name or service mark may apply for its registration. The owner may be either an ordinary person or legal entity who may be either a resident or non-resident of the Philippines.
Foreigners: a non-resident applicant whose country of origin is a member of the Paris Convention may base his application upon either (a) the certificate of home registration of the mark; or (b) the pending application for registration of the mark in the country of origin. A certified true copy of such home registration or pending application, together with its English translation, if not in the English language, must be submitted together with the application or during the course of the examination. Authentication of the certified true copy is not necessary. The country of origin of the applicant is the country in which he has a bona fide and effective individual or commercial establishment; if he has no such establishment, in the country in which he is domiciled, or if he has no domicile in any of the member countries of the Paris Convention, the country of which he is a national.
Kinds of registrable marks: a mark refers to any visible sign capable of distinguishing the goods (trademarks) or services (service marks) of an enterprise and includes a stamped or marked container of goods. A collective mark refers to any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. A trade name refers to the name or designation identifying or distinguishing an enterprise.
Non-traditional marks: three-dimensional marks, color marks, motion marks, position marks and hologram marks are registrable.
Basis of right: the rights in a mark are acquired through registration made validly in accordance with the provisions of the Intellectual Property Code.
Exceptions to registration: (1) 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; (2) 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; (3) the name, portrait, or signature identifying a particular living person unless with his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, unless with the written consent of the widow; (4) a mark 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 or closely-related goods or services, or which nearly resembles such a mark as to be likely to deceive or cause confusion; (5) a mark identical with, or confusingly similar to, or constituting 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 already the mark of a person other than the applicant, and 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); (6) a mark identical with, or confusingly similar to, or constituting a translation of, a mark considered well-known which is registered in the Philippines with respect to goods or services which would indicate a connection between those goods or services and the owner of the registered mark; (7) a mark which would likely mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; (8) a mark which consists exclusively of signs that are generic for the goods or services that they seek to identify; (9) a mark which consists exclusively of signs or indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; (10) a mark which consists exclusively of signs or 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; (11) a mark which consists of shapes imposed by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (12) a mark which consists of color alone, unless defined by a given form; and (13) a mark contrary to public order or morality. However, when the mark referred to in (10), (11) and (12) has become distinctive in relation to the goods for which registration is requested as a result of its substantially exclusive and continuous use in commerce in the Philippines for five years before the date on which the claim of distinctiveness is made, the said mark may become registrable.
Priority: the Philippines is a member of the Paris Convention. The foregoing may entitle a foreign applicant domiciled in a foreign country which is also a member of the Paris Convention to the following rights: (a) he may have his trademark registered in his home country registered in the Philippines on the basis of the certificate of home registration; (b) he may claim priority rights with respect to an application earlier filed in his home country, provided his application in the Philippines is filed within six months from the date on which the application was first filed in the foreign country, and within three months from the date of filing or within such time as the Director of Trademarks may grant, the applicant shall furnish a copy of the application or registration, together with a translation thereof into English; (c) he may have his trade names protected even if said trade names have not been registered in the Philippines; and (d) he shall be entitled to the benefits and remedies of the law against unfair competition and infringement.
Classification: international, according to the Nice Classification. One application may cover several classes of goods and/or services. Such application shall result in only one registration. The applicant may also opt to divide his application into several applications which shall result in as many registrations.
Filing requirements for an application (to be sent to resident agent):
1. A request for registration indicating the identity of the applicant, and appointing an agent or representative, with full contact information, if the applicant is not domiciled in the Philippines;
2. A reproduction of the mark;
3. The list of goods or services;
4. Copy of home registration or application if application is based on foreign application or registration; can be filed during the course of examination.
Note: the request and copy of home application or registration need not be authenticated. The trademark, trade name or service mark must be in English or Filipino. The applicant or registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three years from the filing date of the application. Otherwise, the application shall be refused or the mark removed from the Register by the Director.
Electronic filing: mandatory.
Electronic signatures: are accepted.
For a change of name or address: a copy of the Commercial extract evidencing such change. A scanned copy is sufficient and no notarization nor legalization required.
For assignment: the original deed of assignment (must be notarized and/or legalized).
Examination: the trademark Examiner examines the application to determine whether it complies with all the requirements of the law and whether the mark or trade name is registrable.
Amendments: may be made to correct informalities, or to avoid objections made by the trademark Examiner or for other reasons arising in the course of examination. Amendments are made by specifying the exact word or words to be stricken out or inserted, and must be on a separate sheet signed by the applicant or his attorney.
Publication: is effected after the trademark Examiner is satisfied that the applicant is entitled to registration, and the purpose of publication is to allow third persons to file their oppositions to the issuance of a certificate of registration. If no opposition is filed within thirty days from the date of release for circulation of the Intellectual Property Office Gazette, the certificate of registration is issued to the applicant.
Opposition: opposition is a proceeding whereby any person who believes that he would be damaged by the registration of the mark or trade name, or of any name or other mark of ownership, files a verified opposition with the Director of Legal Affairs seeking to oppose or prevent the registration of said mark or name. The notice of opposition must be filed within thirty days after the release of the issue of the Intellectual Property Office Gazette where the mark or name was published. The thirty-day period may, for good reasons, be extended by the Director of Legal Affairs. The opposition must contain the name and address of the opposer and of the applicant; the mark or trade name or other mark of ownership opposed; the particular goods, business or services or containers upon which the same is used; the serial number and filing date of the application; the volume, number and page of the Gazette in which the mark or name was published; the grounds on which it is based; and the ultimate facts constituting the opposer’s cause or causes. Such opposition must be verified by the opposer and must furthermore be accompanied by copies of the certificate of registration of the mark in other countries and other supporting documents. The opposer must likewise appoint a resident agent to prosecute said opposition. A copy of the opposition is caused to be served by the Director of Legal Affairs on the applicant, requiring the latter to file his answer. After issues are joined, a hearing is conducted wherein the parties adduce their respective evidence. If, after the hearing, the opposition is found meritorious, the mark or name sought to be registered by the applicant will be refused registration; otherwise, the application will be allowed to pursue its course.
Letters of consent: generally accepted by the Trademark Office. The LoC can be simply signed, must be in original.
Appeals: appeals may be raised to the Director of Trademarks, subsequently to the Director General, subsequently to the Court of Appeals, and in proper cases to the Supreme Court. If, after examination of the application, the trademark Examiner finally refuses to allow registration, appeal from such adverse action may be brought to the Director of Trademarks. Final decision of refusal by the Director of Trademarks is appealable to the Director General. In case of adverse decision by the Director General, either in an original registration or in a renewal registration, or in any interference, opposition, or cancellation, the party affected may appeal to the Court of Appeals within thirty days from the receipt of the Director General’s decision.
Correction of registration: mistakes which may be corrected are those committed either by the Intellectual Property Office or by the registrant. Whenever the mistake, incurred through the fault of the Office, is clearly disclosed by the records, the Office may, upon a written petition by the registrant or assignee, issue a certificate stating the fact and nature of such a mistake. Whenever a mistake has been made in a registration by the registrant in good faith, the Office may, upon written petition, issue a certificate of correction or a new and corrected certificate.
Certificate of registration: a duplicate of the original certificate of registration is issued to the applicant, the original thereof being kept in the Intellectual Property Office.
Duration: ten years from the date of registration, provided a declaration of actual use is filed within one year from the fifth anniversary of the date of registration of the mark.
Ownership: the certificate of registration is prima facie evidence of the validity of the registration of the registrant’s ownership of the mark or name, and of the registrant’s exclusive right to use same in connection with the goods, business or services specified in the certificate.
Marking: the registrant must give notice that his mark or name has been registered by displaying with the same as used the words “Registered Mark” or the symbol ®. If the registrant fails to give such notice, he cannot, in case of an infringement suit, recover damages, unless the defendant has actual notice of the registration.
Renewals: each registration may be renewed for periods of ten years from its date of expiry, upon the filing of a request for renewal by the registrant or his assignee. The request must be filed within six months before the expiration of the period for which the last registration was made or renewed. It may also be filed within six months after the registration has expired. As of August 1, 2017, a declaration of actual use must be filed within one year from the date of renewal for registered marks due for renewal on January 1, 2017 and onwards, regardless of the filing date of the request for renewal.
Assignments: possible with or without the business; must be recorded at the Intellectual Property Office. Assignments and transfers have no effect against third parties until they are recorded.
Modification of Protection after Registration
Rights of prior user: since a duly issued certificate of registration is prima facie evidence of the right of ownership of the registrant, any person who is a prior user of the mark or name and has not abandoned the same must seek a judicial and/or administrative remedy to protect his rights. Such a remedy may consist of any of the following: filing a petition for cancellation of the registration with the Office, alleging that the registrant has obtained the registration thereof fraudulently and that the petitioner is the owner of the mark or name, he being the prior user of the mark or name. If after the hearing, it appears that the petition is meritorious, the registration will be cancelled. Any party adversely affected by the decision of the Bureau of Legal Affairs has the right to appeal to the Director General, then to the Court of Appeals, and under certain circumstances to the Supreme Court; The courts, in such an event, have the authority to determine the right to registration, to order the cancellation of registrations, in whole or in part, to restore cancelled registrations and otherwise rectify the Register as regards the registration of any party to the action.
Nullification: registered marks may likewise be cancelled and protection thereof refused by a proper petition for cancellation of the registration if (1) the registered mark or name has become the generic name of an article or substance for which the patent has expired; (2) the registered mark or name has been abandoned; and/or (3) the registered mark or name is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods, business or services in connection with which the mark or name is used. The registrant, on his own, may likewise voluntarily seek the cancellation of his mark. If the affidavit of use or non-use is not filed within the required periods, the Director General will cancel the registration, and a notice of cancellation will be sent to the registrant. A notice of cancellation will also be published in the Gazette.
Re-registration: cancelled registered mark or name may be the subject of an application for re-registration. The application will be treated in the same manner as if it were an original application, subject to all the requirements pertinent to any ordinary application. Once a certificate of registration is reissued, the statutory protection accorded to any registered mark or name will be extended to the re-registered mark or validated mark or name.
Infringement: any person who shall without the consent of the registrant, use in commerce any reproduction, counterfeit, copy or colorable imitation of a registered mark, or use the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on, or in connection with which such use is likely to cause confusion or cause mistake or to deceive; or reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce in connection with the sale, offering for sale, distribution, advertising of goods or services on or in connection with which such use is likely to cause confusion or cause mistake or to deceive. The penalties may be civil or criminal in nature. The courts may likewise order the destruction of the infringing materials. Criminal liability may result from a proper criminal case filed against the infringer, the penalty being imprisonment or fine or both. Trademark owners who are nationals of a treaty member country, even if they are not duly licensed to do business in the Philippines, have the right to file infringement and/or unfair competition cases before the courts.