Philippines Trademark Law: 07 Legal Notes You Need To Know

Trademark in Philippines, Philippines Trademark, Philippines trademark law

Understanding Philippines trademark law and procedure of Philippines trademark registration is very essential for any individuals and organizations. The following will provide all necessary information of trademark in Philippines.

Firstly, according to the provisions of Philippines Trademark Law, a trademark is defined as a sign used to goods/services of other organizations/individuals. Hence, a sign could be considered as a trademark in Philippines when it meets conditions in accordance with Trademark Philippines Law: 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.

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

Thirdly, according to Philippines Trademark Law Philippines do not request individuals and organizations to register their trademark in the Trademark Office, but Philippines 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 Philippines trademark application as soon as possible is very essential so that the holder has rights with their trademark in fact.

Fourthly, prior to registering Philippines trademark, 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 Philippines trademark registration. It is recommended that have legal advice on the availability of the trademark in Philippines, applicants should hire Philippines Trademark Attorneys to conduct the work.

After searching the trademark carefully, if the holder proceeds to carry out the procedure of trademark registration in Philippines immediately and the trademark application has to be filed directly to the Trademark Office. The Philippines trademark application includes three stages: Formality Examination, Gazette Industrial Property, Substantive examination. These stages are to guarantee that the trademark is not similar with previous registered trademarks in Philippines. ThePhilippines trademark registration takes from 6 to 8 months without any opposition. Finally, the owners can be granted Philippines trademark certificate if they register their trademark successfully.

Moreover, 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 in Philippines 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.

After trademark in Philippines is successfully registered, 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 bring a cancellation action against a subsequent conflicting trademark. Besides, through their rights, they can license third parties to use the trademark in Philippines and claim for priority in other countries signing treaties containing provisions on priority in which Philippines has joined. The registered Philippines trademark is valid within 10 years from the filing date and the holder can renew the process by following trademark renewal procedures. However, the holder needs to note that the holder can 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.

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, Philippines Trademark Law is more and more enhanced to protect national trademarks better and even international trademarks in Philippines.

For procedure of trademark in Philippines, you could see here.

For Fee of trademark in Philippines, you could see here.

For required documents of trademark in Philippines, you could see here.

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