Useful information when protecting trademark rights in the Republic of Philippines (hereinafter referred to as "the Philippines") is presented below.
It is our hope that our clients will find this page helpful in protecting their intellectual property overseas.
< Approximate time from application to registration of trademarks in the Philippines >
(As of March 2018)
Currently, it takes approximately 1-5 months from the date of filing a trademark to the date of decision to grant trademark registration.
• Trademark rights in the Philippines
1. Registerable trademark
(1) Trademark in the Philippines
It is defined that "a trademark indicates a visible sign which can distinguish goods or services, and includes a container of goods on which a seal has been inscribed or put".
(2) Special Trademark
- • Three-dimensional trademark
- • Collective trademark
- • Combination of colors
- • Hologram
* None of sound, smell, taste, single color, and moving trademark is under protection.
(3) Summary of trademark system
- • Substantive examination
- • First-to-file system based on use (a proof of use needs to be filed)
- • System of single trademark on each application
- • There are "Letter of consent" system and the disclaimer statement.
2. Trademark rights
(1) Establishment of trademark rights
- • A trademark application which has been substantively examined is published. A third party can file an opposition within 30 days from the publication of a trademark application.
- • In the case where no opposition has been filed, or no decision of refusal has been issued even if an opposition has been filed, Applicant can have the trademark registered by paying the registration fee.
- •Theprinciple of use
- * In filing a trademark application, the trademark does not need to have been being actually used. It is, however, necessary to file a "Declaration of Actual Use" and a "proof of use" within three years from the filing date.
(2) Duration of registration
- • 10 years from the registration date
- • Renewal is available every 10 years. The term for renewal is for six months before and after the expiration date (renewal after the expiration date needs payment of additional fees).
(3) Classification (goods or services)
- • System of filing a multi-class application
- • Classification according to the Nice Classification (Note that the Philippines has not joined the Nice Agreement)
- • Comprehensive manner of indication is not allowed.
(3-1) Different filing fees, depending on types of Applicant
- • Filing fees differ between a small entity and a large entity.
(4) Documents to be filed (in English or in Filipino)
- 1. Application form
- 2. Trademark sample
- 3. Power of attorney: needs to be filed within 60 days from the filing date, but no need to be notarized or authenticated.
- 4. Payment of filing fee
- * A trademark application should be one based on any one of a "trademark application based on actual use", a "trademark application based on intent to use" and a "trademark application based on registration in the Applicant's own country".
- • In the case of a trademark application which claims priority, necessary are (i) a country (counties) to which a basic application has been filed, (ii) the filing date and the application number of the basic application, and (iii) the priority certificate translated in English. The priority certificate can be filed within three months from the filing date of the trademark application.
- • In the case of a trademark indicated in a language other than English and Filipino, a translation or transliteration of the trademark is necessary.
- • In the case of claiming a color, the color needs to be indicated and designated.
- • In the case of a three-dimensional trademark or a collective trademark, description thereof is necessary.
- • First of all, a formality examination is performed on a trademark application. In the case where the trademark application does not meet the formality requirements, the trademark application needs to be corrected within one month. In the case where the trademark application is not corrected, the trademark application is regarded as being withdrawn.
- • After the formality examination, a substantive examination is performed without a request for examination. It is necessary to file an Argument and/or an Amendment within two months after a notification of reasons for refusal is issued. A two-month extension to respond to the notification can be requested.
- • A priority examination can be performed on a trademark application which meets given conditions, by a formal request based on declaration and by payment of the fee.
(6) Reason for revocation
- 1. System of cancellation of registered trademark not in use: A registered trademark which has not been used for three years is cancelled by a request from a third party.
- 2. Request for invalidation and/or revocation: In the case where a trademark has been registered without meeting the registration requirements, it is possible to request the invalidation and/or revocation of the registered trademark at any time. Note however that it is not allowed to request the invalidation and/or revocation of a trademark which has been already registered for five years, for the reason of the identity or similarity of the registered trademark to a prior trademark.
3. Use of trademark
In filing a trademark application in the Philippines, the trademark does not need to have been being actually used. It is however necessary to file a Declaration of Actual Use (abbreviated as DAU) and a proof of use within three years from the filing date. It is further necessary to file a DAU and a proof of use within one year after five years pass after registration (including registration of renewal).
In addition, since August 1, 2017, it has become necessary to file a DAU and a proof of use within one year after registration of renewal.
4. Measures to right infringement
- The Philippine trademark law provides for the following two kinds of infringement.
- 1. Registered trademark infringement: use of a sign or a packing box which is similar or identical to a registered trademark
- 2. Famous trademark infringement: use of a sign indicative of the relevance to a registered famous trademark even if the sign belongs to the designated goods and/or designated services different from those to which the registered famous trademark belongs.
See below for the Philippines's status of participation in the following major treaties:
|Paris Convention||WTO Agreement||Trademark Law Treaty||Madrid Protocol||Nice Agreement|
|Participated||Participated||Not participated||Participated||Not participated|