Trademarks Comparative Guide

1 Legal framework

1.1 What is the statutory or other source of trademark rights?

Trademark rights are primarily governed by the IP Code (Republic Act 8293), as amended. The IP Code came into effect on 1 January 1998.

The IP Code should be read in conjunction with the various issuances of the Intellectual Property Office of the Philippines (IPOPHL), such as:

• the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2023 (Memorandum Circular 2023-001); and
• the Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks (Memorandum Circular 2025-009).

1.2 How do trademark rights arise (ie, through use or registration)?

The rights in a mark are acquired primarily through registration made validly in accordance with the law. The Philippines follows a first-to-file system.

However, well-known marks – even if unregistered in the Philippines – may still be entitled to protection against the registration or use of confusingly similar marks for the same or closely related goods and/or services.

In certain instances, prior use may be relevant – particularly in opposition or cancellation proceedings, or in actions for unfair competition, where evidence of earlier commercial use can support certain claims or defences.

1.3 What is the statutory or other source of the trademark registration scheme?

The statutory basis of the trademark registration scheme in the Philippines is the IP Code, which should be read in conjunction with the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2023.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

The IP Code defines a 'mark' as any visible sign that is capable of distinguishing the goods (trademark) or services (service mark) of an enterprise, including a stamped or marked container of goods. Thus, any visual sign that is capable of identifying a source can be registered as a trademark in the Philippines, such as the following:

• word marks;
• figurative marks;
• composite marks;
• slogans;
• colour marks;
• position marks;
• hologram marks;
• motion marks;
• three-dimensional marks;
• certification marks; and
• collective marks.

Non-traditional marks – such as colour, hologram, motion and three-dimensional marks – are registrable provided that they meet the requirement of distinctiveness. Three-dimensional marks are not functional.

The following are not registrable as trademarks under Philippine law because they are not visually perceptible:

• sound marks;
• smell marks;
• touch marks; and
• taste marks.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

The mark must be a visually perceptible sign or indication capable of:

• identifying the source of the goods or services to which it is affixed; and
• distinguishing them from those of other enterprises.

Marks that are merely descriptive, unless they have acquired distinctiveness through secondary meaning, as well as generic terms and customary terms, are not eligible for registration as trademarks in the Philippines.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

Under the IP Code, a mark is not registrable if it falls within the absolute or relative grounds for refusal, as follows:

• It 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.
• It 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.
• It consists of:
• • a name, portrait or signature identifying a particular living individual, except with their written consent; or
  • the name, signature, or portrait of a deceased president of the Philippines during the life of their surviving spouse, if any, except with the written consent of the surviving spouse.
• It:
• • is identical to a registered mark belonging to a different owner or a mark with an earlier filing or priority date, in respect of:
  • • the same goods or services; or
    • closely related goods or services; or
  • so nearly resembles such a mark as to be likely to deceive or cause confusion.
• It is identical 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 in the Philippines, as being:
• • the mark of a person other than the applicant for registration; and
  • used for identical or similar goods or services.
• In determining whether a mark is well known, account will 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.
• It is identical or confusingly similar to, or constitutes a translation of, a mark that is considered well known in accordance with the preceding point 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, where:
• • the 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; and
  • the interests of the owner of the registered mark are likely to be damaged by such use.
• It is likely to mislead the public – in particular, as to the nature, quality, characteristics or geographical origin of the goods or services.
• It consists exclusively of signs that are generic for the goods or services that they seek to identify.
• It 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.
• It 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.
• It consists of shapes that may be necessitated by:
• • technical factors;
  • the nature of the goods themselves; or
  • factors that affect their intrinsic value.
• It consists of colour alone, unless defined by a given form.
• It is contrary to public order or morality.

Registration of the following signs is not precluded if the sign or device has acquired distinctiveness in relation to the goods or services for which registration is sought, as a result of actual use in commerce in the Philippines:

• marks that consist 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;
• marks that consist of shapes that may be necessitated by:
• • technical factors;
  • the nature of the goods themselves; or
  • factors that affect their intrinsic value; and
• marks that consist of colour alone, unless defined by a given form.

The Intellectual Property Office of the Philippines may consider as prima facie evidence of acquired distinctiveness the applicant's substantially exclusive and continuous use of the mark in Philippine commerce for a period of five years preceding the date on which the claim of distinctiveness is made.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

The registration of trademarks in the Philippines is administered and controlled by the Intellectual Property Office of the Philippines (IPOPHL), specifically through its Bureau of Trademarks (BOT).

The BOT performs the following core functions:

• receiving and examining trademark applications;
• issuing office actions and examination reports;
• publishing applications for opposition in the e-Gazette;
• issuing certificates of registration; and
• processing post-registration actions, such as:
• • maintenance;
  • renewals; and
  • cancellations.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

The estimated fees that IPOPHL charges are as follows:

• Filing fee: $47 per class
• Publication fee: $17
• Issuance fee and second publication fee: $40
• If colour is claimed: $11
• If convention priority is claimed: $32 per class.

3.3 Does the trademark office use the Nice Classification scheme?

Yes. The application must specify the goods (Classes 1–34) and/or services (Classes 35–45)

covered, organised under one or more of the 45 classes defined by the latest edition of the Nice Classification system published by the World Intellectual Property Organization. Each group should be:

• preceded by its corresponding class number; and
• arranged in the numerical order prescribed by the classification system.

3.4 Are 'class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

Class-wide applications are not permitted. Applicants:

• must identify and list the specific goods and/or services for which the trademark they intend to register will be used; and
• cannot simply claim rights over an entire Nice Classification class.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

No. An applicant is not required to file a statement of bona fide intent to use the mark at the time of application. IPOPHL allows applications to be filed even if the mark has not yet been used in commerce.

However, registration is contingent on eventual actual use of the mark. To maintain the application or registration, the owner must file:

• a declaration of actual use; and
• proof of use.

Failure to comply results in the removal of the mark from the register.

While a bona fide intent to use is expected in principle, there is no explicit statutory or regulatory requirement to declare it upon filing.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes. IPOPHL conducts a relative examination as part of the substantive review of trademark applications. During this process, IPOPHL examines whether the applied-for mark is identical or confusingly similar to an existing mark with an earlier filing or priority date, in respect of the same or closely related goods and/or services.

If the examiner determines that the applied-for mark is likely to deceive or cause confusion with a prior registration or application, it will issue a registrability report or provisional refusal, giving the applicant an opportunity to respond within a specified period.

3.7 What types of examinations does the trademark office perform other than relative examination?

A formality examination is conducted at the initial stage to ensure that the application meets the minimum requirements necessary to be accorded a filing date. This includes verifying that the application contains the following:

• the identity of the applicant;
• the contact information of the applicant;
• a reproduction of the mark applied for; and
• a list of the goods and/or services for which registration is sought.

Once the application passes the formality check, IPOPHL proceeds with a substantive examination. In this stage, the examiner assesses whether the mark complies with the requirements under Section 123.1 of the IP Code, which include both relative and absolute grounds for refusal.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Yes. In addition to relative grounds, such as likelihood of confusion with a prior mark, and absolute grounds, such as genericness, the IP Code provides several other bases on which a mark may be refused registration, many of which are rooted in public policy considerations (see question 2.3).

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No. A supplemental register used to exist under the previous trademark law (RA 166), but it was abolished with the enactment of the IP Code (RA 8293) in 1997. The current system maintains only a single register for all trademarks.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

No. Third parties cannot object to a trademark application prior to its publication in the IPOPHL e-Gazette. The only formal mechanism for challenging a pending application is by filing an opposition, which may be initiated only after the application has been published. IPOPHL does not recognise pre-publication objections, such as letters of protest.

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

No. Actual use of the trademark is not a prerequisite for registration in the Philippines. An applicant may file a trademark application even if the mark has not yet been used in commerce.

However, the applicant must file a declaration of actual use (DAU) together with supporting evidence within the prescribed periods in order to maintain the application or registration. A DAU must be filed:

• within three years of the filing date of the application;
• within one year of the fifth anniversary of the registration date;
• within one year of the date of renewal; and
• within one year of the fifth anniversary of the renewal date.

Failure to file the DAU as required will result in the removal of the mark from the register.

Even after registration, a trademark may be cancelled at any time if the registered owner, without valid reason, fails to use the mark in commerce or fails to have it used in the Philippines by virtue of a licence for an uninterrupted period of three years or longer. This serves to ensure that trademark rights are reserved only for marks that are genuinely used in commerce.

3.12 How much time does it typically take from filing an application to the first office action?

IPOPHL typically issues the first office action approximately two months after the trademark application is filed.

3.13 How much time does it typically take from filing an application to publication?

Assuming that no objections are raised during the examination period, the publication for opposition purposes will be approximately three to four months from the filing date of the trademark application.

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

Yes. The applicant may, upon the final refusal of the examiner to allow registration, appeal the matter to the director of the Bureau of Trademarks (BOT). An appeal may also be made to the director from any adverse action of the examiner in any matter over which the regulations give original jurisdiction to the examiner.

To initiate the appeal, the applicant must file a notice of appeal within two months of the mailing date of the examiner's final decision, along with payment of the applicable fees. The notice of appeal must state the specific grounds for the appeal.

Within two months of filing of the notice of appeal, the appellant must also submit an appeal brief detailing:

• the legal arguments; and
• the authorities relied upon.

Failure to file the appeal brief within the prescribed period will result in the automatic dismissal of the appeal.

The decision issued by the director of the BOT becomes final and executory after 30 days from receipt by the appellant, unless:

• a motion for reconsideration is filed within that period; or
• an appeal to the director general of the Intellectual Property Office of the Philippines (IPOPHL) has been perfected pursuant to the IPOPHL Uniform Rules on Appeal.

Filing a motion for reconsideration is not a prerequisite for appealing to the director general.

4.2 What is the procedure for appealing a trademark office refusal?

The decision or order of the director general of IPOPHL will be final and executory 15 days after receipt of a copy thereof by the parties, unless appealed to the Court of Appeals through a petition for review (under Rule 43 of the Rules of Court) within 15 days of receipt of the decision. No motion for reconsideration of the decision or order of the director general is allowed.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

Yes. A decision rendered by the Court of Appeals may be further appealed to the Supreme Court by filing a petition for review on certiorari. The petition must be filed within 15 days of receipt of the Court of Appeals' decision, in accordance with the Rules of Court.

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes. A third party may file an opposition to a trademark application after the mark is published for opposition purposes in the Intellectual Property Office of the Philippines (IPOPHL) e-Gazette.

5.2 Who has standing to oppose a trademark application?

Any natural or juridical person that believes that it would be damaged by the registration of a mark may file an opposition to a trademark application.

5.3 What is the timeframe for opposing a trademark application?

The opposition must be filed within 30 days of publication in the IPOPHL e-Gazette, subject to a one-time extension of another 45 days upon the timely filing of the motion for extension.

If no opposition is filed within 30 days of publication, the mark is deemed registered on the next calendar day following the expiration of the opposition period. Where a motion for extension for the period to file an opposition is granted by the BLA, the mark is deemed registered on the day following the expiry of the extension period.

If an opposition is filed, a mark will be considered registered on the date on which the decision or final order giving due course to the application becomes final and executory.

5.4 Which body hears oppositions?

The Bureau of Legal Affairs (BLA) hears and decides oppositions to trademark applications.

5.5 What is the process by which an opposition proceeds?

An opposition is initiated by filing either a notice of opposition or a motion for an extension of time to file a notice of opposition with the BLA. The opposition must be:

• in written form;
• verified; and
• accompanied by certification of non-forum shopping.

The supporting documents and evidence, such as affidavits of witnesses, must be attached to the opposition.

Upon receipt of the opposition, the BLA will then issue a notice to answer, addressed to the respondent-applicant or its agent on record. The respondent must file a verified answer within 30 days of receipt of the notice. The answer must likewise be:

• in writing;
• verified; and
• accompanied by certification of non-forum shopping.

The respondent must attach:

• the affidavits of witnesses; and
• other supporting evidence.

If the answer is filed on time and any formality defects are rectified, the case will be referred to alternative dispute resolution (ADR) in accordance with the applicable rules.

If the case goes through ADR but is not resolved or dismissed, the adjudication officer will, upon receiving the case records, issue an order to conduct a preliminary conference for the purposes of submission and/or presentation for inspection and comparison of the required documents attached to the opposition or answer. The parties or their duly authorised representatives are required to attend this conference.

At the conclusion of the preliminary conference, the adjudication officer will issue an order in open court directing the parties to submit their respective position papers within 10 days.

Once the period for filing the the position papers has elapsed, whether the parties have submitted these or not, the case is submitted for decision. The adjudication officer will issue a decision or final order within 20 calendar days of the date on which the case is deemed submitted for decision.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

Within 15 days of receipt of the decision or final order, a party may file a memorandum of appeal to the director of the BLA. The period for filing an appeal may be extended only once for another 15 days upon the motion of the party concerned, which must:

• state meritorious grounds;
• be filed within the period for filing the appeal; and
• be accompanied by the applicable fees.

Within 30 days of receipt of the decision of the director of the BLA, the appellant may file an appeal memorandum before the director general of IPOPHL.

The decision of the director general can be appealed to the Court of Appeals by filing a petition for review within 15 days of receipt of the decision, in accordance with the Rules of Court.

The decision of the Court of Appeals may be further appealed to the Supreme Court by filing a petition for review on certiorari, which must be filed within 15 days of notice of the Court of Appeals' decision.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

Although the Philippines follows a first-to-file system, which means that rights are generally acquired through registration, unregistered trademarks may still receive protection under specific provisions of the IP Code and related laws.

An unregistered mark may be protected if it qualifies as a well-known mark under Section 123.1(e). In determining whether a mark is well known, account will 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.

Unregistered marks may also be protected under Section 168 of the IP Code, which allows the owner of an unregistered mark to bring an action for unfair competition. This remedy applies when another party:

• passes off its goods or services as those of another – such as by using confusingly similar marks, trade dress or packaging; and
• deliberately exploits the goodwill or reputation associated with the other's mark or business identifier.

While prior use does not confer registrable rights under the first-to-file rule, it may still be relevant in opposition or cancellation actions. An unregistered user may oppose a later application or seek to cancel a registered mark if it can prove:

• earlier and continuous commercial use in the Philippines; and
• that the applicant acted in bad faith by copying or imitating its mark.

After all, it is not the application or registration of a trademark that vests ownership thereof. It is the ownership of a trademark that confers the right to register the same.

6.2 What legal rights are conferred by a trademark registration?

A trademark registration in the Philippines confers upon the registrant a comprehensive set of rights designed to:

• safeguard brand integrity;
• protect consumers; and
• enforce ownership of marks.

A certificate of registration of a mark is prima facie evidence of:

• the validity of the registration;
• the registrant's ownership of the mark; and
• the registrant's exclusive right to use the same in connection with the goods or services and those related thereto as specified in the certificate.

The registrant may prevent third parties from using identical or confusingly similar marks on the same or closely related goods or services without authorisation, if such use is likely to cause:

• confusion;
• mistake; or
• deception.

Trademark registration enables the owner to bring administrative, civil and/or criminal actions for trademark infringement or unfair competition. Remedies include:

• injunctions;
• damages;
• accounting of profits; and
• in appropriate cases, seizure or destruction of the infringing goods.

Registered trademarks may be recorded with the Bureau of Customs, enabling the brand owner to request the seizure of counterfeit or infringing goods at the border.

The registrant has the legal authority to license the use of the trademark to third parties or assign ownership of the mark, subject to proper documentation and recordation with the Intellectual Property Office of the Philippines.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

None. The Philippines no longer maintains a supplemental register on which descriptive marks may be registered.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

A civil, criminal or administrative action may be initiated on the grounds of trademark infringement. The trademark owner is entitled to a wide range of remedies to enforce its rights and seek redress against infringers, such as:

• damages;
• condemnation or seizure of products which are subject of the offence;
• forfeiture of paraphernalia and all real and personal property used in the commission of the offence;
• impoundment of sales invoices and other documents evidencing sales;
• injunctions;
• preliminary injunctions;
• temporary restraining orders;
• cease-and-desist orders;
• preliminary attachment;
• cancellation or suspension of any permit, licence, authority or registration that was granted by the Intellectual Property of the Philippines (IPOPHL);
• destruction or disposal outside channels of commerce of the infringing goods;
• censure;
• contempt;
• imprisonment; and
• fines.

7.2 What remedies are available against trademark dilution?

The IP Code does not provide for trademark dilution. However, the concept of trademark dilution was discussed by the Supreme Court in the following cases:

• Levi Straus & Co v Clinton Apparelle (GR 138900, 20 September 2005);
• Suyen Corporation v Danjaq LLC (GR 250800, 6 July 2021); and
• Lacoste SA v Crocodile International Pte Ltd (GR 223270, 6 November 2023).

The Supreme Court defined 'trademark dilution' as the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of:

• competition between the owner of the famous mark and other parties; or
• likelihood of confusion, mistake or deception.

The court further held that, subject to the principles of equity, the owner of a famous mark is entitled to an injunction against another person's commercial use in commerce of a mark or trade name if such use:

• begins after the mark has become famous; and
• causes dilution of the distinctive quality of the mark.

This is intended to protect famous marks from subsequent use that:

• blurs the distinctiveness of the mark; or
• tarnishes or disparages it.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

Yes. In addition to infringement, the IP Code provides legal remedies for other forms of harm to trademark rights. These include:

• unfair competition, where a party attempts to pass off its goods or services as those of another and deliberately exploits the goodwill associated with the latter's products or business (Section 168);
• false designations of origin (Section 169); and
• false description or representation (Section 169).

Trademark owners may invoke the Consumer Act of the Philippines (RA 7394) to pursue remedies for deceptive labelling, false advertising or misleading trade practices that:

• infringe on brand reputation; and
• mislead consumers.

7.4 What is the procedure for pursuing claims for trademark infringement?

The trademark owner may file a criminal, civil or administrative action against an infringer.

An administrative action for trademark infringement may be filed with the BLA within four years of:

• the date of commission of the violation; or
• if that date is unknown, the date of discovery of the violation.

The total amount of damages claimed should be PHP 200,000 or more.

The trademark owner may file a civil action to recover damages from any person that infringes its rights. The damages awarded will be either:

• the reasonable profits that the trademark owner would have made had the infringer not infringed its rights; or
• the profit that the infringer actually received from the infringement.

If such damages cannot be ascertained with reasonable certainty, the court may award as damages a reasonable percentage based on the amount of gross sales received by the infringer in connection with the use of the trademark owner's trademark.

A criminal action may be initiated by filing a complaint-affidavit with the prosecutor. The prosecutor then conducts a preliminary investigation. After filing of the criminal information, the court will issue a warrant of arrest. The accused has the option to post bail. Once the accused is arrested and/or posts bail, they will be arraigned. The court will then proceed to try the criminal case and if the accused is found guilty of infringement beyond a reasonable doubt, it will issue a decision of conviction.

7.5 What typical defences are available to a defendant in trademark litigation?

The defendant may raise several defences, depending on the nature of the claim. Common defences include the following:

• The plaintiff's trademark is not registered with IPOPHL.
• The competing marks are not confusingly similar.
• The mark is used on unrelated and non-competing goods.
• The use of the mark is unlikely to deceive or cause confusion.
• The plaintiff's mark or the defendant's mark is not used in commerce.
• There was prior use in good faith.
• The plaintiff's mark is invalid.
• There was no intent to:
• • deceive the public; or
  • defraud a competitor in cases of unfair competition.
• The mark was used with the consent of the trademark owner or its assignee.
• One of the following defences applies:
• • prescription;
  • estoppel;
  • laches;
  • lack of jurisdiction; or
  • procedural defects.

The IP Code, as amended, sets forth the following limitations applicable to actions for trademark infringement:

• Registration of the mark will not confer on the registered owner the right to preclude third parties from using in good faith their names, addresses, pseudonyms, a geographical name or exact indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply of its goods or services, as long as such use:
• • is confined to the purposes of mere identification or information; and
  • cannot mislead the public as to the source of the goods or services (Section 148).
• A registered mark will have no effect against any person that, in good faith, before the filing date or the priority date, was using the mark for the purposes of its business or enterprise. However, this right may only be transferred or assigned:
• • together with its enterprise or business; or
  • with that part of its enterprise or business in which the mark is used (Section 151(a)).
• Where an infringer that is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer, the trademark owner will be entitled as against such infringer only to an injunction against future printing (Section 151(b)).
• Where the infringement complained of is contained in or part of a paid ad in a newspaper, magazine or other similar periodical, or in an electronic communication, the remedies of the trademark owner as against the publisher or distributor of such newspaper, magazine or similar periodical or electronic communication will be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines or similar periodicals, or in future transmissions of such electronic communications. These limitations will apply only to innocent infringers. Such injunctive relief will not be available to the trademark owner with respect to an issue of a newspaper, magazine or similar periodical or an electronic communication containing infringing matter where:
• • restraining the dissemination of such infringing matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue; or
  • transmission of such electronic communication is customarily conducted in accordance with sound business practice and not due to any method or device adopted to:
  • • evade the law; or
    • prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter (Section 151(c)).
• There will be no infringement of trademarks or trade names of imported or sold patented drugs and medicines that have been put on the market in the Philippines by the trademark owner or with its express consent, as well as imported or sold off-patent drugs and medicines, as long as drugs and medicines bear registered marks that have not been tampered with or unlawfully modified, and that do not infringe Section 155 (Section 147.1).

7.6 What is the procedure for appealing a decision in trademark litigation?

In both criminal and civil cases, as well as in administrative cases decided by the director general of IPOPHL, an appeal may be brought before the Court of Appeals by filing a petition for review within 15 days of receipt of the decision, in accordance with the Rules of Court.

A decision rendered by the Court of Appeals may, in turn, be elevated to the Supreme Court through a petition for review on certiorari, to be filed within 15 days of notice of the decision.

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

A trademark registration is initially valid for a period of 10 years from the date of registration. It may be renewed for successive 10-year terms upon:

• filing of a renewal request; and
• payment of the prescribed fees.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

The applicant must file a declaration of actual use (DAU) together with supporting evidence within the prescribed periods in order to maintain the application or registration. A DAU must be filed:

• within three years of the filing date of the application;
• within one year of the fifth anniversary of the registration date;
• within one year of the date of renewal; and
• within one year of the fifth anniversary of the renewal date.

Failure to file the DAU as required will result in the removal of the mark from the register.

8.3 What are the grounds for cancelling a trademark registration?

A petition to cancel a trademark registration may be filed by any person that believes it is or will be damaged by the registration of a mark:

• within five years of the date of registration of the mark;
• at any time, if:
• • the registered mark has become the generic name for the goods or services, or a portion thereof, for which it is registered;
  • the registered mark has been abandoned;
  • the registration was obtained fraudulently or contrary to the IP Code; or
  • 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; or
• at any time, if the registered trademark owner, 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 licence, for an uninterrupted period of three years or longer.

If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed.

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

The Intellectual Property Office of the Philippines (IPOPHL) does not have the authority to cancel a trademark registration on its own initiative. Cancellation must be initiated through an adversarial proceeding. Any person that believes it is or will be damaged by the continued registration of a trademark may file a petition for cancellation before the BLA, in accordance with the rules on inter partes cases.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

The petition for cancellation must be:

• in writing;
• verified; and
• accompanied by certification of non-forum shopping.

The petitioner must attach to the petition:

• the affidavits of witnesses;
• the supporting evidence; and
• requisite documents, such as the power of attorney.

The petition must:

• be filed in duplicate with proof of service on the respondent; and
• indicate:
• • the names and addresses of the petitioner and the respondent;
  • the assigned registration number, the name of the registrant and the date of registration of the trademark whose cancellation is sought; and
  • the facts constituting the petitioner's cause/s of action and the relief sought.

8.6 What is the procedure for appealing a decision cancelling a registration?

Within 15 days of receipt of the decision or final order, a party may file a memorandum of appeal to the director of the BLA. The period for filing an appeal may be extended only once for another 15 days upon the motion of the party concerned, which must:

• state meritorious grounds;
• be filed within the period for filing the appeal; and
• be accompanied by the applicable fees.

Within 30 days of receipt of the decision of the director of the BLA, the appellant may file an appeal memorandum before the director general of IPOPHL.

The decision of the director general can be appealed to the Court of Appeals by filing a petition for review within 15 days of receipt of the decision, in accordance with the Rules of Court.

The decision of the Court of Appeals may be further appealed to the Supreme Court by filing a petition for review on certiorari, which must be filed within 15 days of notice of the Court of Appeals' decision.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

The IP Code explicitly states that trademark licence agreements provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used. If the licence contract does not provide for quality control or if such quality control is not effectively carried out, the licence contract is not valid.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

Yes. A trademark licence contract or agreement must be submitted to the Intellectual Property Office of the Philippines for recording. Recordation is necessary to ensure the enforceability of the licence against third parties.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

Yes. Failure by the licensor to exercise adequate quality control over the goods or services covered by the licence may, in certain circumstances, undermine the distinctiveness of the trademark.

If the licensed use leads to consumer confusion or deception regarding the origin or quality of the goods or services, the trademark may be deemed to have lost its source-identifying function. This could result in the weakening or even the loss of enforceable trademark rights.

As such, it is advisable for licensors to maintain reasonable oversight to preserve the integrity and value of their marks.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

Foreign trademarks that are not registered in the Philippines may still be enforced under certain circumstances, such as when the mark is considered well known by a competent authority in the Philippines.

The recent circular issued by the Intellectual Property Office of the Philippines (IPOPHL) provides 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. The following criteria or any combination thereof may be taken into account in determining whether a mark is well known, but which must include the first four points at minimum:

• the duration, extent and geographical area of any use of the mark – in particular, the duration, extent and geographical area of any promotion of the mark, including:
• • advertising or publicity; and
  • presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
• the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
• the degree of inherent or acquired distinctiveness of the mark;
• the quality, image or reputation acquired by the mark;
• the extent to which the mark has been registered worldwide;
• the exclusivity of registration attained by the mark worldwide;
• the extent to which the mark has been used worldwide;
• the exclusivity of use attained by the mark worldwide;
• the commercial value attributed to the mark worldwide;
• the record of successful protection of the rights over the mark;
• the outcome of litigations dealing with the issue of whether the mark is a well-known mark, if any; and,
• the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that their mark is a well-known mark.

If the foreign trademark does not meet the above threshold to be considered well known, relief may still be available on the grounds of unfair competition. To succeed in such a claim, the plaintiff must demonstrate that the other party is:

• passing off its goods or services as those of the foreign brand; and
• deliberately exploiting the goodwill and reputation associated with the foreign brand.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Yes, IPOPHL allows the registration of trademarks based on foreign or international applications. As a signatory to the Paris Convention, the Philippines recognises the right of a foreign applicant to claim priority from an earlier foreign application, provided that the Philippine application is filed within six months of the date of the original filing abroad.

Further, the Philippines is a member of the Madrid Protocol, which enables foreign applicants to extend protection to the Philippines simply by designating the country in their international trademark application filed through the World Intellectual Property Organization.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.