Frequently Asked Questions (FAQs) on Philippine

Trademark*

*ndvlaw.com

If you are interested in filing a trademark application in the Philippines or

wish to protect your business brand or trademark, it is necessary that you
learn about trademarks in general and how to seek protection. Stated below
are commonly asked questions about trademarks in the Philippines.

1. What is a Trademark?
The Philippine Intellectual Property Code (IP Code) broadly defines a
trademark as “any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall include a
stamped or marked container of goods.” Thus, a mark (1) must be a visible
sign and (2) must be capable of distinguishing one’s goods and services from
those of another.

2. What law governs trademarks?

Republic Act No. 8942, otherwise known as the Intellectual Property Code of
the Philippines primarily governs intellectual property rights in the
Philippines. In addition, the Philippines adheres to the Paris Convention for
the Protection of Industrial Property Rights and the Agreement on Trade-
Related Aspects of Intellectual Property Rights also known as the TRIPS
Agreement.

3. What marks cannot be registered?

A trademark cannot be registered if it:
(a) 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;
(b) 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;
(c) Consists of a name, portrait or signature identifying a particular living
individual except by his written consent, or the name, signature, or portrait of
a deceased President of the Philippines, during the life of his widow, if any,
except by written consent of the widow;
(d) Is identical with a registered mark belonging to a different proprietor or a
mark with an earlier filing or priority date, in respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive or cause
confusion;
(e) Is identical with, 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 here, as being already the mark of a person other than the applicant
for registration, and used for identical or similar goods or services: Provided,
That 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;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a
mark considered well-known in accordance with the preceding paragraph,
which is registered in the Philippines with respect to goods or services which
are not similar to those with respect to which registration is applied for:
Provided, That 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: Provided further, That the interests of the owner of the
registered mark are likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature, quality,
characteristics or geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services that
they seek to identify;
(i) 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;
(j) 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;
(k) 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;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
But as regards signs or devices mentioned in paragraphs (j), (k), and (l),
nothing shall prevent the registration of any such sign or device which has
become distinctive.

4. Why should you register your trademark?

—Your trademark distinguishes your goods from others. It represents your
business identity, image, and reputation that sets it apart from your
competitors.
—Your trademark is your asset and property. It is worth a lot of money!
—Registration of your trademark will protect your business and shield it from
unscrupulous persons who want to ride on the goodwill which your business
has painstakingly created through the years.
—There are remedies available to owners of registered marks from infringers
such as Civil and criminal actions for infringement, unfair competition, false
or fraudulent declaration and false designation of origin. There are also
Administrative Actions before the Bureau of Legal Affairs of the IPO for
violation of IP (infringement, unfair competition, false designation of origin)
under Section 10.2 of the IP Code and Inter Partes Cases (opposition,
cancellation) and/ or Border Measure before the Bureau of Customs.

5. What is the difference between a Trademark and a Service Mark?

A trademark pertains to goods and those under International Class 1 to 34
while service marks refer to services under International Class 35 to 42.

6. Is it required that my trademark cover goods or services that I am

presently selling? What if I am not yet using my trademark? Can I file an
application already?
No. An application for registration may be based on actual use or intended
use of a mark in Philippine commerce. Prior use of a mark in the Philippines
is not necessary to file an application. The use of mark becomes necessary
only after the application for its registration has been filed because a
Declaration of Actual Use (“DAU”) in Philippine commerce is required to be
submitted within 3 years from filing date. Hence, you may already file an
application for registration.
7. How are rights to the mark acquired?
Under the Philippine IP Code, rights to a trademark are acquired through
registration with the Bureau of Trademarks of the IPO. Generally, protection
against infringement is accorded only to marks duly registered with the IPO.
Also, priority of rights in a trademark is not anymore based on prior actual
use but on prior filing of an application for registration.

8. Why is it important to file an application with the IPO immediately?

We observe the first-to-file rule. Thus, if you filed an application for a mark,
no one can file an application for the same mark anymore.

9. May we file multiple classes in one trademark application?

Yes. One application may relate to several goods and/or services, whether
they belong to one class or to several classes of the Nice Classification. Where
goods and/or services belonging to several classes of the Nice Classification
have been included in one application, such an application shall result in one
registration.

10. What is the period of protection of a trademark registration?

The period of protection is ten (10) years from the date of issuance and is
renewable for a period of ten (10) years at a time.
If you are interested in filing a trademark application, it is highly
recommended that you consult a Philippine trademark lawyer first so that
you can lodge the application properly.