FAQs

FAQs

A trademark in Malaysia is signal used to distinguish goods/services of different organizations and individuals.

it can contain: words, names, devices, colors, slogans, holograms, especially a trademark can be sounds, smells, trade dress but it must be reproduced in the graphical form such as musical notation. Therefore, a sign wants to become a trademark, it must satisfy following conditions: It must be visible; It has capability of distinguishing goods/services of different organizations and individuals.

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 canceled if not being used for a period of time.

Knowing rights after trademark registration is an important factor so that the holder can protect their trademark and deal with infringement. Hence, which rights does the holder have when their trademark in Philippines is registered successfully?

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.

Therefore, knowing rights the holder has in practice is very essential for them protect their trademark in Philippines well.

The procedure of trademark registration of each nation is very different, so knowing the procedure of that country is very important to register trademark successfully.

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.

The trademark registration in Philippines is not compulsory, so why does an individual or an organization need to file a trademark registration application in Philippines? And which benefits does this trademark registration bring?

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.

Therefore, the trademark registration in Philippines is very necessary for the holder with their trademark.

Today, taking part in international Agreements and Treaties is an indispensible factor for countries to generate convenience for international individuals and organizations to register their trademark in Philippines.

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.

Therefore, thanks to joining international treaties, Philippines have created convenient conditions for international individuals and organizations to register their trademark in Philippines as well as for national holder with trademark registration in other countries.

“First to file” is the rule to apply to register and protect the trademark in Philippines. It means that that if there are some individuals and organizations who have demand to register a trademark in Philippines, the person who file this trademark application first shall have rights and benefits with such trademark, no matter how long the holder uses their trademark. So, the owners should pay attention to how to register their trademark in order to have rights with such trademark in practice.

Therefore, the holder should file their trademark application as soon as possible to avoid losing their trademark when another person registers the same trademark before them.

Before filing trademark application in the Trademark Office, the holder needs to know whether their trademark satisfies conditions or not in order to be registered in Philippines. Hence, what is the 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. From that, understanding the definition of a trademark and its conditions is very necessary to have a good chance to register trademark in Philippines.

Therefore, the owner wants trademark in Philippines to be protected, at least it must meet the above conditions.

After receiving protection certificate, although the owner does not have to prove the use of their trademark in practice, the trademark needs to be used within the following 3 years. However, others only can require the cancellation of the protection certificate when the time for the non-use of such trademark is 5 years from the date of registration, meaning the date of filling application. Hence, when having a justifiable request, the owner must prove the use of their trademark in fact by providing the evidence of carrying out the trading actions with such trademark such as advertising, establishing business locations or at least providing a single sale during the relevant three-year period with genuine commercial use. Therefore, if not have proof for the use for five consecutive years, the effectiveness of the trademark shall be terminated upon request of other third party.

Therefore, if having request of others, the holders need to prove the use of their trademark in fact. When having evidences of the non-use of such trademark for five consecutive years, they will not have rights with their trademark.

Australia __ Country Guides Essential Information on Trademark Protection Worldwide

Today, more and more trademarks of organizations and individuals are granted certificates in Australia. Hence, after receiving trademark certificates, which rights do owners of trademark have in Australia?

The protection of a trademark in Australia is 10 years from the date of filling the trademark application in Australia. Besides, the holder can make the renewable of the protection certificate for unlimited times with 10 years per time without documentation required. In case of the expiration of the renewable date, a grace period for renewable registration is 6 months for the holder.

In addition, after successful trademark registration, the trademark owner has rights to use the registered trademark, oppose subsequent conflicting applications, bring a cancellation action against a subsequent conflicting registration, sue for infringement against confusingly similar third-party trademark use, license other third parties to use the trademark, apply for seizure by customs authorities for importation of counterfeit goods, obtain damages for infringement.

In conclusion, knowing which rights the owner has for their trademark after successful trademark registration in Australia is very important to protect their trademark and settle the infringement in practice.

[1] Australia __ Country Guides Essential Information on Trademark Protection Worldwide

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