TRADE MARKS IN THE PHILIPPINES
09 March 2012
Ignacio S Sapalo of Sapalo Velez Bundang and Bulilan presents a comprehensive guide to prosecuting and protecting trade marks in the Philippines.
1. Who may apply for a trade mark?
All Filipinos or domestic corporations may obtain the registration of a mark in the Philippines.
With regard to foreigners, all people who are domiciled or have a real and effective commercial establishment in a country bound by treaty to grant Filipinos the same right it grants its own nationals, and nationals of these countries, may obtain a registration mark in the Philippines. If the applicant’s country also accepts applications for registration of marks from Filipino nationals then registration is also possible.
2. What is the scope of a normal trade mark?
A mark is defined as any visible sign capable of distinguishing the goods or services of an enterprise and is to include a stamped or marked container of goods.
3. What time constraints are there on registering a trade mark?
The date of filing is important under the first-to-file system. It determines who has the prior right in case of a dispute with another applicant for the same or similar mark.
4. How long does registration take and what are the standard costs?
The expected time frame for registration of a mark is six months to one year if there is no
opposition filed against the subject mark.
For small entities (total assets of less than P20,000,000 ($470,000), the filing fee is P1,080 ($25) per class. An additional fee of P750 ($18) is payable for claiming convention priority and P250 ($6) for claiming colour or distinctiveness, per class. For big entities (total assets of P20 million or more), the filing fee is P2,160 per class. An additional fee of P1,500 is payable for claiming convention priority and P500 for claiming colour or claim of distinctiveness, per class.
5. How are trade marks classified?
Trade marks are classified according to the Nice Classification.
6. Is there anything in particular about the examination process that applicants should be aware of?
Applications filed on-line are processed quickly by our Bureau of Trademarks.
7. What constitutes use of the trade mark? When must this be demonstrated?
Use as a basis for acquiring ownership of trade marks or service marks must be lawful, in commerce, and in the Philippines.
Use must also be demonstrated within three years of the date of application. Furthermore, to maintain the trade mark registration, use should be demonstrated within one year of the fifth anniversary of the date of registration.
8. When is a trade mark considered descriptive?
A descriptive term conveys an immediate idea of the ingredients, qualities, or characteristics of the goods. It is not subject to registration as a trade mark unless it has acquired secondary meaning through long and exclusive use.
9. When is it considered generic?
A generic term refers to the genus to which the product merely belongs as a specie. Courts in the Philippines have ruled that the applicant cannot obtain registration of poster ads as this is a mere generic term in respect of poster advertising – the service performed by the applicant.
10. What aspects of a mark can be considered objectionable or immoral?
Marks considered immoral or scandalous are marks that are shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation. According to the United States’ Trademark Manual of Examining Procedure, Section 12003.01, the meaning imparted by a mark is determined in the context of the attitudes of the day and the relevant marketplace for the goods or services identified in the application, and should be ascertained from the standpoint of not necessarily a majority, but a substantial composite of the general public.
11. Are there grounds for registering as a geographical indication?
Philippines’ law provides that a mark that “is likely to mislead the public as to the geographical origin of the goods or services is not registrable”. In one case, the courts ruled that the geographical indication that is not used to indicate the geographical place of production of the goods on which it is used, is registrable.
12. Can three-dimensional or other unconventional marks be registered?
Philippines’ law provides that a mark that consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value may not be registered as a trade mark or service mark.
13. What constitutes a well-known mark?
A well-known mark must declared as such by a competent authority – the Court, the director general, the director of the Bureau of Legal Affairs of the Intellectual Property Office or other government agencies authorised to hear and adjudicate any enforcement action – to be well known internationally and in the Philippines, taking into account knowledge of the relevant sector of the public, including knowledge in the Philippines obtained through promotion of the mark.
14. Can you trade mark a personal name?
Philippines’ law provides that a mark cannot be registered if it consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased president of the Philippines, during the life of his widow, if any, except by written consent of the widow.
15. How can a mark be amended?
Upon application of the registrant and payment of the prescribed fee, the office may permit any registration to be amended or to be disclaimed in part for good cause, provided that the amendment or disclaimer does not materially alter the character of the mark.
16. How do you appeal against a denied application?
If the trade mark examiner rejects the application, the applicant will have two months, extendible by another two months, within which to appeal the denial. The final refusal by the examiner can be appealed to the director of trade marks within two months, also extendible by two months, of the mailing date of the refusal. The decision of the director of trade marks may be appealed to the director general of the IPO within fifteen days of receipt by filing a notice of appeal and payment of a fee.
17. How do you oppose another’s application?
A notice of opposition to a trade mark application may be filed within 30 days of its publication in the IPO e-gazette and upon payment of the required fee. This opposition must be made in writing and verified by the opposing party or by any person on his behalf who knows the facts, and is to specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition must be included, together with the translation in English, if it is not in the English language.
18. When is a mark considered to be used in bad faith?
In one case, the courts ruled that when a trade mark copycat adopts not only the word but also the word’s exact font and lettering style and in addition, he copies also the logo portion of the trade mark, the slightest doubt vanishes: such adoption was deliberate, malicious and in bad faith.
19. When must registration be renewed and at what cost?
How is a trade mark lost?
A certificate of registration may be renewed for ten-year periods on expiration upon payment of the prescribed fee and filing of a request. Such a request may be made at any time within six months before the expiration of the period for which the registration was issued or renewed, or it may be made within six months after such expiration on payment of the additional fee prescribed.
For small entities, the renewal fee is P500, while the renewal fee for large entities is P1,000.
A trade mark may be lost if the registration is allowed to lapse or the applicant or registrant fails to file a declaration of actual use within three years of the date of filing or within one year of the fifth anniversary of the date of registration.
20. How are trade marks jointly owned, transferred or assigned?
Under the Rules and Regulations of the IPO, if there is more than one applicant, all of them should be named as applicants but anyone may sign the application for and on behalf of the applicants. Also in cases where aliquot portion or undivided interest in the mark is assigned, each of the joint owners will sign the application.
An application for registration of a mark, or its registration, may be assigned or transferred with or without the transfer of the business using the mark.
The assignment of the application for registration of a mark, or of its registration, must be made in writing and requires the signatures of the contracting parties. Transfers by mergers or other forms of succession may be made by any document supporting such a transfer.
Assignments and transfers of registration of marks shall be recorded at the Office on payment of the prescribed fee.
21. What are the different avenues for infringement? What is the procedural format and timing for each?
Judicial, criminal and administrative actions are all possible. A civil action for damages and injunction should be filed after determining that infringement of the mark is taking place, and after the identity of the infringer and the place where he manufactures and stores the infringing products are located. The registrant of the mark in the
Philippines must prove that the mark infringed is registered in the Philippines, is still in force and the defendant is using an identical or similar sign likely to deceive or confuse consumers that the goods of the infringer are the products of the registrant. A presentation of the goods or labels using the registered mark and the goods or labels bearing the infringing mark may be necessary.
In addition, a preliminary injunction can be issued to quickly prevent the infringer from causing damage to the mark owner’s business. At the early stage of the trial of the case, the court can be asked to issue such an injunction. The court usually grants this request if the case for infringement is strong.
After obtaining information on the operations of the infringer, the next step is to apply to the court for the issuance of an order to search the places where the infringement is being carried out and to seize the infringing goods. The police will then conduct the raid and the infringing goods will be placed under the custody of the court. A complaint will then be filed with the state prosecutor. If the state prosecutor decides to charge the alleged infringer with trade mark infringement, information will be filed in the regional trial court.
If the amount of damages is over P200,000, the registrant may choose to seek redress against the infringer by filing an administrative action against the infringer with the Bureau of Legal Affairs. The registrant may likewise ask the Bureau to stop the sale and manufacture of the infringing goods.
22. How can counterfeiting be contested?
The remedies against counterfeiting are the same as that of trade mark infringement.
23. What rules cover passing off or unfair competition?
Any person who, in selling his goods, gives them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon or in any other feature of their appearance, which would probably influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, constitutes passing off or unfair competition.
24. Is parody considered a valid defence?
There is neither law nor jurisprudence in the Philippines on the legal effects of parody. It may, however, be raised as fair use in the context of copyright law and may be a valid defence if the requirements of the law to prove fair use are met.
25. How about descriptive use, fair use, or use in good faith?
A descriptive use can be a defence when it has acquired a secondary meaning, where a word or phrase originally incapable of exclusive appropriation with reference to an article on the market might nevertheless have been used so long and so exclusively by one particular producer with reference to his article that in that trade, and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.
Fair use is a defence under Philippines’ copyright law. The concept of fair use in the Philippines is similar to that of US law.
Good faith is a defence in a criminal action but not in a civil action.
26. When is it worth conducting a survey to provide evidence of reputation?
A survey to provide evidence for reputation is worth conducting in cases of infringement of well known marks which are not registered in the Philippines, and in cases of unfair competition to establish passing off.
27. How do you appeal an enforcement decision? What other remedies are available?
For civil and criminal cases filed with the courts, decisions may be appealed to our Court of Appeals and then to our Supreme Court.
For administrative cases, the decision of the director of the Bureau of Legal Affairs may be appealed to the director general of the IPO. Then the decision of the director general may be appealed to the Court of Appeals and then to the Supreme Court.
We are not aware of any other alternative appeal procedure.
28. What arrangements are there for trade marks in bankruptcy?
We do not have a bankruptcy law as it is understood in the United States.
29. How does this jurisdiction interact with international treaties?
To comply with its commitments as a member of the convention, treaties and agreements relating to IP and the repression of unfair competition, particularly, the Paris Convention for the Protection of Industrial Property, the Berne Convention for the Protection of Literary and Artistic Works, and TRIPs Agreement, the Philippines enacted the Intellectual Property Code of the Philippines, Republic Act 8293, which came into force on January 1 1998, adopting standards of protection of IP rights that comply with the mandate of the TRIPs Agreement.
IGNACIO S. SAPALO
Ignacio S Sapalo is the managing partner at Sapalo Velez Bundang and Bulilan. He obtained a bachelor of science major in engineering in 1963 and a bachelor of law from Ateneo de Manila in 1967. He was director of the Philippine Bureau of Patents, Trade Marks and Technology Transfer
from 1987 to 1996. During this time, he led the group that drafted the 1998 IP Code of the Philippines. Ignacio is the author of Background Reading Material on the Intellectual Property System of the Philippines (WIPO, 1994) and has been a professor of IP at the Ateneo School of Law since 1991. He is the founder and president of the Intellectual Property Foundation, President of IProbe, an IP investigation and consulting firm, and a member of the executive board of the International Chamber of Commerce of the Philippines. Ignacio is also a member of the Integrated Bar of the Philippines, the Philippine Bar Association, Association Internationale pour la Protection de la Propriété Intellectuelle, the Asian Patent Attorney’s Association and Intellectual Property Association of the Philippines.
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