TRADEMARKS FILING AND PROSECUTION IN PHILIPPINES
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Philippines may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. Aside from differentiating from others, source identifier or the indicator of quality, a protective mark can also be used as income to the owner through licensing or franchising.
|Relevant office||Intellectual Property Office of the Philippines (IPOPHL)|
|Multi class system||Yes|
|Documents required for filing a trade mark application||Filled out trademark application form, copy of the mark, goods and services covered by the application|
|Prosecution process||Filing publication of the mark in the trade mark journal opposition(within 30 days from the publication date) registration renewal|
|Registration term||10 Years from the date of registration|
|Renewal term||10 years|
Trademark searches in Philippines
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Philippines can be conducted for word marks, device marks, numeral and labels. Trademark searches in Philippines can be conducted through an official website of the Intellectual Property Office of the Philippines as it provides two modes of conducting trademark searches. First mode is Trademark search (Global brand database) as this service is available on WIPO; second mode is ASEAN Trademark search (ASEAN TMview) this platform provides all the data of ASEAN member state.
Trademark word search edition of Philippines follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Philippines to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Philippines. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Philippines can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark applications in Philippines
A person may file multi-class or single class trademark applications in Philippines.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Philippines
Ordinary trademark applications filed in Philippines are applications without claiming any priority. Ordinary applications for the registration of trademarks in Philippines can be filed anywhere, anytime. The eTMfile allows the online filing of the trademark application. The eTMfile is linked to two other modes, ASEAN TMclass and ASEAN TMview, which makes the classification of goods and services much easier and provides search reports which can be used by the applicants for their reference prior to filing. Multi class trademark applications may also be filed in Philippines. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Philippines/Convention trademark applications Philippines:
A priority trademark application may be filed in Philippines. A priority trademark application should be filed in Philippines within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Philippines within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Philippines follows the nice classification of classes. Intellectual property office of Philippines uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark examination in Philippines
When the application for the registration of trademark is submitted it goes through the examination process. The office will examine the application as if it has met all the legal requirements for the registration. If the office finds that the application has fulfilled all the requirements for the registration, on the payment of the prescribed fee it will publish the application.
In case the applicant is not entitled to registration, the office will advise the applicant and also states the reason for the same. The applicant is given 4 months time to reply or to make necessary amendments in the application, which shall be re-examined.
Once the final decision is taken by the examiner and the applicant is aggrieved by the decision of the examiner, he can appeal the final decision by the examiner before the director of trademarks.
The final decision of refusal of the director of trademark can also be appealable before the director general in according to the procedure fixed by the regulations.
Trademark Opposition in Philippines
On the successful completion of the examination stage, the application for the registration is accepted and published in the trade mark journal for third party observation. Any interested party who is of the opinion that the registration of the particular mark will cause damage to them, within 30 days from the date of publication may file notice of opposition. If the good cause is shown by the opponent the time period for filing the notice of opposition can be extended by the director of legal affairs.
If no opposition is filed or the period for filing the opposition is over or the director of legal affairs denied the opposition after hearing and submissions, the office upon the payment of the required fee issue the certificate for registration to the applicant.
Trademark registration in Philippines
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of registration and the registration certificate is issued.