1. What is the competent office in Philippines in charge of trademark matters?
Bureau of trademarks under Philippines Intellectual Property Office is in charge of Philippine trademark registration, trademark renewal etc. Bureau of Legal Affairs will take charge of trademark opposition, trademark cancellation etc in Philippines.
2. What is the requirement of filing a Philippine trademark registration from an overseas applicant?
According to Section 125 of Philippines IP Code, if the applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he shall designate by a written document filed in the Office, the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark.
3. What is the classification standards of goods/services in Philippines?
Trademark application in Philippines adopts Nice Classification (11th edition). If the designated goods/services items are too broad, the examiners may require a detailed clarification of the items or suggest a standard item.
4. What are the required information/documents for filing a Philippine trademark application?
- Clear trademark sample;
- Class and goods/services items;
- Applicant’s identification documents
- Signed Power of Attorney.
5. What can I do if my Philippine trademark application is refused?
If it is a preliminary refusal in the form an Office Action (OA), you can reply to the OA on basis of the examiner’s opinion within 2 months. If it is a final Rejection, you can file a Notice of Appeal with the Director of Bureau of Trademarks within 2 months.
6. When will the trademark registration certificate be issued in Philippines from filing the application?
In a straightforward case, the certificate can be issued in about 8-12 months from submiting the application.
7. What is the validity period of a Philippine trademark? When can we file the renewal? Is there any grace period for filing the trademark renewal in Philippines?
A Philippine trademark will be valid for 10 years counted from the date of registration. The applicant can file the trademark renewal 6 months before the expiry date, and there is a grace period of 6 months with extra fees.
8. What is DAU? Do we have to submit DAU for a Philippine trademark?
DAU is short for “Declaration of Actual Use”. To maintain the registration of a Philippine trademark, the applicant must submit in time the required DAU together with proof of use. In absence of the DAU, the registered mark will be removed of registration and the trademark application will be refused of registration.
9. When should we submit the required DAU?
DAU is required in the whole process of trademark registration to ensure that mark is actually and continuously used in Philippines. Below is an introduction of when should the trademark applicant submit DAU？
- Third Year DAU: Within three (3) years from the filing date of the application;
- Fifth Year DAU: Within one (1) year from the fifth anniversary of the registration;
- Renewal DAU: Within one (1) year from the date of renewal of registration;
- Within one (1) year from the fifth anniversay of each renewal.
10. Will Intellectual Property Philippine Office issue an official notification to remind the submission of DAU?
No. There is no official notification from Phillippines IPO to remind the submission of DAU. The trademark applicants need to monitor the deadlines on their own. CTPLO will help in monitoring such deadlines and remind you to prepared the required documents if your Philippine trademark applications are filed through us.
11. What are the required documents for submission of DAU?
- Original signed and notarized DAU. You can authorize CTPLO to sign the DAU and notarize the same in Philippines;
- Proof of use of the concerned mark in the Philippines;
- If the trademark application is not filed through CTPLO, we also need a signed Power of Attorney.
12. What are the types of evidence which are acceptable in Philippines?
- Labels of the mark as these are used;
- Downloaded pages from the website clearly showing that the goods are being sold or the services are being rendered in the Philippines;
- Photographs (including digital photographs printed on ordinary paper) of goods bearing marks as these are actually used or of the stamped or marked container of goods and of the establishment/s where the services are being rendered;
- Brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
- Receipts or invoices of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines;
- Copies of contracts for services showing the use of the mark.
13. For a Philippine trademark filed with multiclass, how many DAUs do I need to submit?
Multiclass trademark with one application/registration number only needs to submit one DAU. But the fees will be charged according to the number of classes.
14. Do I need to submit proof of use for all the goods/services items covered?
You could provide proof of use for part, at least of one item, of the goods/services in one Class, and then all the designated goods/services items can be maintained the registered status.
15. What is a Philippines trademark?
A trademark is a word, a group of words, sign, symbol,or a logo that identifies and differentiates the source of the goods or services of one entity from those of others.
16. Why should I register my trademark immediately?
The Philippine trademark system follows a first-to-file rule, meaning the rights to the trademark is given to the party who first filed the mark**. The minimum requirements to secure a filing date for a trademark application are: (a) An express or implicit indication that the registration of a mark is sought; (b) The identity of the applicant; (c) Contact details of the applicant or its agent/representative; (d) A reproduction of the mark; and (e) The list of the goods or service Subject to the provisions on [priority right], the filing date of an application shall be the date on which the Office received the indications above (either in English and Filipino) and the filing fee. The requirements of the application itself is found in the Intellectual Property Code of the Philippines Section 124. It is only when the filing requirements have been fulfilled that the application requirements will be examined for the mark’s registrability.
17. What may & may not be registered?
The Intellectual Property Code of the Philippines does not enumerate what may be registered but does prescribe a negative list, or grounds for non-registrability. See the Intellectual Property Code of the Philippines, Section 123. Generally, the distinctiveness of the mark is the key point of consideration.
18. How to maintain a trademark?
To maintain protection of a trademark, the actual use of the mark in commerce should be exhibited and proven by the mark owner. This is important because having a registered trademark gives the owner exclusive right over its use, and thus bars other competitors or businesses to benefit from it. The exclusionary component of the trademark gives the business a significant edge, and therefore, there is a responsibility to prove that it is being used. A Declaration of Actual Use (DAU) is to be submitted to IPOPHL according to the following schedule: Within three (3) years from the filing of the trademark application; Within one (1) year from the fifth (5th) anniversary of the registration of the mark; and Within one (1) year from the fifth (5th) anniversary of each renewal. As per Rule 204 of IPOPHL MC No. 17-010, a DAU must be submitted for renewed registrations within one (1) year from the date of renewal of the registration. This requirement only applies for registered marks due for renewal on 01 January 2017 and onwards, regardless of the filing date of the Request for Renewal.
19. What is a trade mark?
A mark is any visible sign capable of distinguishing the goods of an enterprise and includes a stamped or marked container of goods.
20. How can you protect your trade mark in Philippines, and what rights are conferred on the owner of a registered trade mark?
A mark is protected by means of registration under the Intellectual Property Code of the Philippines (IP Code). The registrant acquires the exclusive right to use the mark for the covered goods or services and those that are related thereto and to prevent others from using an identical or similar mark for identical or similar goods or services. If a mark registered in the Philippines is recognised as ‘well- known’, the exclusive right of the owner extends to goods and services which are not similar to those for which the mark is registered, provided that use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark, and that the interests of the owner of the registered mark are likely to be damaged by such use. Certain marks are unregistrable, including: generic marks; descriptive marks; infringing marks (marks that are identical or confusingly similar to a registered mark, an earlier- filed mark, or a well- known mark); and immoral, deceptive, or scandalous marks.
21. What acts are considered trade mark infringements?
Trade mark infringement occurs when, without the consent of the owner of a registered mark, a person: (a) uses in commerce any reproduction or colourable imitation of a registered mark, a dominant feature thereof, or the same container; or (b) reproduces or colourably imitates a registered mark or a dominant feature thereof, and applies such reproduction or colourable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce. These acts must be in connection with the sale, offering for sale, distribution, or advertising of goods or services, and must be likely to cause confusion, error, or deception.
22. What constitutes ‘use’ of a trade mark?
Owners of registered marks are required to file a Declaration of Actual Use with evidence to that effect covering given periods to prevent the cancellation of the registration. The following are acceptable proofs of use of a mark: (a) labels bearing the mark; (b) downloaded pages from a website clearly showing that the covered goods are being shipped to and sold in, or the covered services are being offered or rendered in, the Philippines; (c) photos of the covered goods being sold in the Philippines bearing the mark or their stamped or marked container; (d) photos of the establishment where covered services are being rendered in the Philippines; (e) brochures, advertising materials, or contracts for services showing that the covered services are being rendered in the Philippines; (f) receipts or invoices showing the sale of the covered goods, or the rendering of the covered services, in the Philippines; and (g) other similar evidence.
23. What types of contract exist for the use of trade marks?
Marks may be covered by technology transfer arrangements (TTA) which include licence contracts. A TTA is any contract or agreement involving the transfer, assignment, or licensing of a mark. A TTA need not be recorded with the Philippine Intellectual Property Office (IPO) to be enforceable. However, if a TTA does not conform to the IP Code, it must be approved by and registered with the IPO, or it will be unenforceable. A license contract involves the licensing of a registration or application of a mark. To be valid, it must provide for the effective control by the licensor of the quality of the goods or services of the licensee for which the licensed mark will be used. It must also be recorded with the IPO to bind third parties. Marks may also be covered by franchise agreements which may or may not involve licenses and TTAs.
24. What is an industrial design?
An industrial design is any composition of lines or colours, or any three-dimensional form, whether or not associated with lines or colours, that gives a special appearance to, and can serve as a pattern for, an industrial product or handicraft. Only industrial designs which are new or ornamental benefit from protection under the IP Code.
25. How can you protect your industrial design in the Philippines?
An industrial design is protected by means of registration made in accordance with the IP Code.
26. Which objects can and cannot be registered as industrial designs?
n order to be registrable, an industrial design must be new or ornamental. The following industrial designs, however, are not registrable: (a) those that are dictated essentially by technical or functional considerations to obtain a technical result; and (b) those which are contrary to public order, health, or morality.
27. Does a registered industrial design need to be used to retain protection?
Unlike marks, industrial designs need not be used to retain protection. Once an industrial design is registered, it may be renewed for up to two consecutive periods of 5 years each for a maximum 15-year term, by simply applying for renewal and paying a renewal fee. What acts are considered industrial design infringements? Industrial design infringement comprises any of the following: the making, using, offering for sale, selling, or importing of products bearing or embodying a design which is a copy of, or substantially similar to, a protected design, without authorisation of the registrant.
28. What is a geographical indication?
A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. The IP Code considers a GI as an IP right. However, there is currently no registration system specific to GIs and the closest mechanism available to protect GIs is through the registration of a collective mark. A collective mark may not fully protect GIs since marks consisting exclusively of descriptive indications as to geographical indication of the goods are not registrable under the IP Code. Thus, in addition to the name of the place of origin (which must be disclaimed), a distinctive sign may be added to identify a good as originating from that place.
29. When does a geographical indication become a generic name?
Since a GI can at best be registered as a collective mark in the Philippines, the rules on marks apply. The IP Code does not specify circumstances when a mark, including a collective mark, becomes generic, but it provides that the primary significance of the registered mark to the relevant public, rather than the purchaser’s motivation, must be the relevant test. A registered mark is not deemed generic solely because that mark is also used as a name of, or to identify, a unique product or service.
30. What acts are considered geographical indication infringements?
The IP Code does not expressly provide for acts constituting GI infringement. Therefore, in the absence of a law punishing the act, there can be no GI infringement. However, the following constitute unfair competition and false designation of origin or false representation: 1) passing off, by means of deceit, one’s goods as those of another who has established goodwill in the goods or business or 2) acts that would tend to mislead as to, or misrepresent, the geographical origin of the goods.