Trademark Registration in Philippines: An overview In the Philippines, the practice followed for trademark registration is the first-to-file trademark system. The rights associated with the trademark are conferred on the applicant after proper registration of the trademark in accordance with the law. However, well-known marks are recognized in the Philippines even if they are not registered in the Philippines. Therefore, it can be concluded that in the Philippines, it is not the application or registration of the trademark that vests ownership thereof; instead, it is the ownership of the trademark that confers the right to register the same. The procedure of trademark registration is governed by the IP Code of the Philippines, read along with the Trademark Regulations of 2017. What kind of trademarks can be registered in the Philippines A trademark, according to the law of the Philippines, must be distinctive to perform the source identifying function of a trademark which means that the trademark is capable of identifying the source of goods to which it is affixed and distinguishes the owner’s goods and services from those of others. This is the reason why generic marks or descriptive marks (unless they have acquired secondary meaning) cannot be registered according to the laws of the Philippines. The trademark law of the Philippines defines trademark as a mark that is capable of distinguishing the services and goods of an entity from those of others. Thus, any sign that is visual can be registered as a trademark in the Philippines, such as figurative marks, word marks, slogans, colour marks, composite marks, position marks, 3D marks, motion marks, hologram marks and collective marks etc. Therefore, those marks that are not visually perceptible cannot be registered as a mark in the Philippines, such as sound marks, smell marks, taste marks, touch marks, etc. Authority for trademark registration in Philippines The Intellectual Property Office of the Philippines (IPOPHL) is the government agency or the statutory authority that is tasked with the regulation of trademark registration in the Philippines. Within the IPOPHL, the Bureau of Trademarks is the department that is responsible for examining applications for the registration of trademarks and also for issuing certificates of registration. Grounds for refusal of trademark registration in Philippines Those marks that fall within the ambit of any of the absolute or relative grounds of refusal cannot be registered as a trademark in the Philippines. According to the IP Code of the Philippines, a mark cannot be registered as a trademark: If the mark consists of matter that is considered immoral, deceptive or scandalous or a matter which may disparage or falsely suggest a connection with person’s institutions, living or dead or national symbols or bring them to disrepute or contempt; If the proposed mark contains the flag or coat of arms or the insignia of the Philippines or any of Philippines’ political institutions or subdivisions or any of the foreign nations or any simulation thereof; If the mark contains the signature, portrait or name of a living individual, except for his consent, or the signature, portrait or name of a deceased President of the Philippines during the lifetime of his/her surviving spouse, except by the written consent of the surviving spouse; If the mark is identical to a registered mark belonging to a different owner or a mark with an earlier filing or priority date, in respect of: Closely related services or goods; or Same services or goods; or The mark so closely resembles that it is likely to cause confusion or deceive others; If the mark is identical or confusingly similar or constitutes a translation of a mark which, in the opinion of the IPOPHL, is considered to be well-known at the international level and in the Philippines too, whether or not it is registered in the Philippines as being the mark of a person other than the applicant for registration and which is used for identical or similar goods or services. In order to determine whether a particular mark is well-known, emphasis shall be given to the knowledge of the particular sector of the public rather than the public at large, including the knowledge of the people in the Philippines, which has been obtained as a result of the promotion of the trademark. If the mark is confusingly similar or identical to or constitutes a translation of a mark that is considered well known according to the previous point that is registered in the Philippines with respect to the services and goods that are not similar to the one for which the registration is sought where: the use of the mark in relation to the services or goods indicates a connection between the services and goods and the owner of the trademark; and the interests of the trademark are likely to get damaged by the proposed use Where the mark is likely to deceive or mislead the public regarding the nature, quality, geographical origin or characteristics of the services and goods; Where the mark consists exclusively of the signs that are generic for the goods and services that they seek to identify; Where the mark consists exclusively of the signs that have become usual or customary to designate the services and goods in everyday language or in bona fide trade practice; If the mark consists exclusively of indications or signs that serve in the normal trade to designate the quantity, quality, kind, value, intended purpose, geographical origin, time or rendering of the services or production of goods or other characteristics of the services or goods; If the mark consists of shapes that may be necessitated by technical factors or factors that affect their intrinsic value or by the nature of the goods themselves; If the mark is contrary to morality and public order; or If the mark consists of the colour alone unless it is defined by a given form Step-by-step process of filing a Trademark application in the Philippines Following is the 5-step application process of filing an application for Trademark Registration in Philippines: Filing an application for Registration of Trademark/ Collective names Formality and Substantive examination of the application Publication of trademark for inviting opposition Issuance of the Certificate of Registration Publication of the Registered Trademarks or Collective Marks Filing an application for Registration of Trademark/ Collective names - Before making an application for trademark registration, it is suggested by trademark consultants at Enterslice to conduct a comprehensive trademark search to ascertain the availability of the trademark, the existence of already registered trademarks in order to avoid the chances of objections and oppositions with respect to the proposed mark. Along with the mark, it is also advised to do a comprehensive company search and domain name search regarding the trademark. In the Philippines, the applicant has the option of filing multi-class or single class trademark applications in the Philippines. Trademark applications in the Philippines can be filed using any one of the following two methods, viz. ordinary applications (without claiming priority) and convention applications (where priority is claimed from a convention country). Philippines uses the NICE classification of classes for goods and services classified into 45 classes where Classes 1-34 are reserved for goods and Classes 35-45 are assigned to services. The minimum cost per filing per class is PHP 1200 in the case of small entities and PHP 2529 in the case of big entities. Formality and Substantive examination of application - After filing the application for trademark, the application undergoes the process of the examination process. The IPOPHL examines the application to check whether all the legal requirements have been met or not. If the IPOPHL finds that the application meets all the requirements for registration purposes, then it will publish the application on payment of the applicable prescribed fee. If the IPOPHL finds that the applicant is not entitled to registration, the office will state the reasons for the same and also advise the applicant to rectify the deficiencies. The applicant is given a period of 4 months time to reply or to make the necessary amendments to the application post which the application is again re-examined. Once the final decision has been given by the trademark examiner and the applicant is aggrieved by the decision of the examiner, then the applicant has the option of filing an appeal before the director of trademarks. Further, the final decision of the director regarding the refusal of the trademark registration can also be appealed before the Director General. Publication of trademark for inviting opposition - After the successful completion of the examination stage, the application for trademark registration is accepted and published in the trademarks journal for 3rd party observation. The publication is made in the trademarks journal because the office wants to give an interested party an opportunity to file opposition if such a party believes that registration of the proposed mark will cause damage to them. The opposition from the interested party has to be made within a period of 30 days from the date of publication of the trademark. Where the interested party shows a good cause for the opposition, then the period of filing the notice of opposition can be extended by the Director of Legal Affairs. Issuance of the Certificate of Registration - In case no notice of opposition is filed or the time period for filing the opposition is over, or the director of legal affairs denies the opposition claims after hearing the opponent’s submissions, the office can proceed further with the issuing of a certificate of registration to the applicant, provided the applicant has paid the required fee. Publication of the Registered Trademarks or Collective Marks - In case no opposition is made, or where the opposition was raised and decided in favour of the applicant, the application shall proceed towards registration of the trademark. The trademark is registered for a period of 10 years from the date of registration, and the certificate of registration is issued in favour of the applicant. Thereafter, the trademark gets published in the Trademarks Register. What are the factors that can affect the process duration of registration of a trademark in Philippines? Following are the factors that can affect the process duration of registration of the trademark in the Philippines: Incomplete documents or requirements in the application for trademark registration Where the applicant fails to respond to the objections and oppositions raised against the trademark Time duration can be affected due to the number of oppositions raised against the decisions of the board Time duration can also be affected due to the appeals made to the Director General Applicable fee for the registration of trademark in the Philippines Following is the list of statutory fee that is applicable for trademark registration in Philippines for both small entities and big entities: Serial No. Type Small Entity Big Entity 1. Filing fee (per class) PHP 1200 PHP 2592 2. Claim of Color (per class) PHP 280 PHP 600 3. Publication of the mark PHP 900 PHP 960 4. Issuance of Certificate of Registration PHP 570 PHP 1200 5. Declaration of Actual Use (3rd Year) PHP 900 PHP 1920 6. 2nd Publication (Publication of Registration) PHP 900 PHP 960 All the required documents along with the abovementioned fee has to be paid to the IPOPHL cashier. Small entities are those that have assets worth PHP 100 million or less and big entities are those that have a value worth more than PHP 100 million. It must be noted that the total charges for trademark registration may vary depending on the number of claims, embodiments and the classes applied. Information to be submitted with the application for Trademark registration in Philippines The following information has to be submitted along with the application form for trademark registration in Philippines: Full name and address, nationality/citizenship or the place of registration of the applicant (in case the applicant is a juristic entity) Fill out 2 copies of the Trademark application form. Drawings of the mark The title of the trademark The list of services and goods covered by the application and their corresponding NICE classification In case priority is claimed, then the country, date and serial number, of the previous application, along with a copy of the priority application Where the applicant wants to claim colours, the name of the colours should be mentioned In case the proposed mark is 3 dimensional, then the indication of such 3D mark Where the application is not filed by the applicant, then a signed Power of Attorney (POA), which authorizes the filer to file the application on behalf of the applicant, has to be filed; and The full name and address of the local agent/ authorized representative of the applicant have to be provided.