FAQs on TRADEMARKS LAW IN THE PHILIPPINES
A trademark is a source identifier. It is attached to the owner of the products or service to which it is used and identifies the owner as its source. Trademarks are similar to property in that it has value and therefore should be protected by the owner. When unprotected, a trademark may be appropriated and used by others, hence, its registration by the owner is highly recommended. This article tackles the relevant information on the concept of trademarks in the Philippines and the laws or regulations which govern them.
What is a trademark? How is it defined under Philippine law?
A trademark is defined as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise (Republic Act No. 8293 or the Intellectual Property Code of the Philippines [IP Code]). Under this definition, a stamped or marked container of goods also qualifies as a trademark or service mark.
Is it necessary to have a trademark registered in the Philippines?
Yes. The owner of a trademark registration will have the exclusive right to prevent all third parties from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion.
A certificate of registration of a trademark or service mark is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and of 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.
What may be registered as a trademark in the Philippines?
Anything that qualifies as a trademark under the definition in the Intellectual Property Code (IP Code) may be registered as a trademark.
Can colors be registered as trademarks?
The Intellectual Property Code provides that color alone, unless defined by a given form, is not registrable.
Can shapes be registered as trademarks?
Yes, shapes may be registered as trademarks but if the shapes are necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value, they may not be registered as a trademark.
What is a collective mark? Can collective marks be registered in the Philippines?
The Intellectual Property Code defines a collective mark as any visible sign designated as such in an 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.
Collective trademarks can be registered in the Philippines. An application for registration of a collective mark shall designate the mark as a collective mark and shall be accompanied by a copy of the agreement, if any, governing the use of the collective mark.
Who may file an application for registration of trademarks in the Philippines?
The following may file an application for the registration of a trademark:
- Filipino nationals;
- Any person who is a national or who is domiciled or who has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition to which the Philippines is also a party, or extends any reciprocal rights to nationals of the Philippines by law.
Can anyone other than the owner of a trademark file an application for its registration in the Philippines?
No. Only the owner of the trademark may apply for its registration in the Philippines.
Does a foreign applicant for trademark registration require a Philippine agent or representative?
Yes. If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he must appoint and appoint a resident agent or representative.
Where should one file an application for registration of a trademark or service mark?
An application for registration of trademark or service mark is filed before the Bureau of Trademarks of the Intellectual Property Office of the Philippines. The processing of trademark applications and their registration is the function of the Bureau of Trademarks.
Are multiple-class trademark applications allowed in the Philippines?
Yes, multi-class trademark applications are allowed in the Philippines. An applicant can indicate more than one class of goods or services in a trademark or service mark application.
Can an applicant claim convention priority in a trademark application?
Yes, an applicant can claim convention priority in the Philippine trademark application. By virtue of the convention priority claim, an application for registration of a mark filed in the Philippines shall be considered as filed as of the day the application was first filed in the foreign country if the applicant:
- is a national or who is domiciled or who has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition to which the Philippines is also a party, or extends any reciprocal rights to nationals of the Philippines by law; and
- previously filed an application for registration of the same mark in one of those countries
What is the duration of a trademark registration in the Philippines?
A trademark registration is valid for ten (10) years, renewable for periods of ten (10) years after the expiration of the original ten-year term.
When must the petition for renewal of trademark registration be filed?
The renewal must be filed within six (6) months before the expiration of the term of the trademark registration or within the six (6)-month grace period after its expiration, for an additional fee.
Can opposition proceedings be instituted against an application for trademark registration?
Yes. Under Philippine law, any person who believes that he would be damaged by the registration of the mark may, upon payment of the required fee, file with the Bureau of Legal Affairs an opposition to the application. Any opposition to a trademark application should be filed within thirty (30) days after the publication of the application in the IPO Gazette.
Can cancellation proceedings be filed to invalidate an existing trademark registration in the Philippines?
A petition to cancel a trademark registration may be filed with the Bureau of Legal Affairs (BLA) of the Intellectual Property Office by any person who believes that he is or will be damaged by the registration.
The cancellation may be filed:
- Within five (5) years from the date of the registration of the mark.
- At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of the Intellectual Property Code (IP Code), or if the registered mark 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.
- At any time, if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.
Who are liable for trademark infringement under Philippine law?
Under the Intellectual Property Code, any person who commits the following acts without the consent of the owner of the registered mark is liable for trademark infringement:
- Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or 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 to cause mistake, or to deceive
- Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply b. such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.
What are the remedies available to a trademark owner in case of infringement?
In case of trademark infringement, the registered owner may file any of the following cases:
- Civil action to recover from the infringer damages sustained plus attorney’s fees and expenses of litigation, and to secure an injunction for the protection of his rights, provided, no damages may be recovered for acts committed more than four (4) years before the execution of the action for infringement.
- Criminal case for infringement;
- Administrative case before (i) the Department of Trade and Industry pursuant to Department Administrative Order 01, Series of 2000, implementing E.O. 913 and Ministry Order No. 69; or (ii) the Bureau of Legal Affairs of the IPO where the total damages claimed is not less than Php 200,000.00. Provisional remedies may be granted in accordance with the Rules of Court. No damages may be recovered for acts committed more than four (4) years before the execution of the action for infringement.