A: The Philippines requires you to submit a Declaration of Use (DAU) for domestic applications. Note that this is also required for international applications via the Madrid Protocol.
In addition, the Madrid Protocol application is a very useful system for trademark registration overseas, but it has disadvantages. Since the registration is dependent on the home country application or registration for five years after the international registration, if the home application or registration is rejected, withdrawn, abandoned or invalid, the international registration will also be revoked. This is called the central attack, in which case the applicant can change to a national application for each designated country within three months after the cancellation of the international registration. In that case, the application will be deemed to have been filed on the international registration date.
A: Different for large and small businesses. A large company is defined as having a total assets of at least 100 million PHP. In addition, when claiming priority, etc., it will cost other than the following.
(1) Application fee (per category): 2,592 PHP (small: 1,200 PHP)
(2) Color claims (per category): 600 PHP (small: 280 PHP)
(3) Publication: 960 PHP (small: 900 PHP)
(4) Registration fee 1,200 PHP (small: 570 PHP)
(5) Submit declaration of use (for the third year) 1,920 PHP (small: 900 PHP) (6) 2nd Publication 960 PHP (small: 900 PHP)
A: The Philippines mainly has the following intellectual property laws.
・Philippine Competition Act
・Universally Accessible Cheaper and Quality Medicines Act
・Personal Property Security Act
・Cybercrime Prevention Act
・Philippine Technology Transfer Act
・Optical Media Act
・Food and Drug Administration Act
・Philippine Plant Variety Protection Act
・Special Law on Counterfeit Drugs
・Foods, Drugs & Devices, and Cosmetics Act ・Use of Duly-Stamped and Marked Containers
A: Regardless of whether the trademarks are registered in your own country or not, if you wish to register the trademark overseas, consider international applications through the Madrid Protocol. Consider it the Madrid Protocol is a treaty that allows the trademark registration in various countries to proceed quickly and smoothly with only one international application for the World Intellectual Property Organization (WIPO). As of April 2019, 104 countries, including the Philippines, are members of the Madrid Protocol.
If you wish to register a trademark in the Philippines, designate the Philippines as an international application via the Madrid Protocol. Upon receiving notice from WIPO, the Intellectual Property Office of the Philippines (IPOPHL) will conduct a substantive examination of the trademark in the same way as a domestic trademark application. Then, if there is no reason for refusal, they will send a letter to WIPO stating that the trademark has been protected in the Philippines. The document giving the protection has the same effect as the registration certificate.
Another advantage of the international registration is that the renewal procedure can be performed collectively at WIPO, and there is no complicated procedure for each country.
A: The right of registered trademark owners is entitled to claim damages for those who infringed the trademark.
In addition, with proper proof, injunction is permitted.
A: For international registration, fill out the required form, specify the country where you want to acquire the trademark right, and apply to the World Intellectual Property Organization (WIPO) International Bureau through the Japanese Patent Office You can do.
The JPO will conduct a formal examination, and if there are no deficiencies, the JPO will send an application to the WIPO International Bureau.
After the review by the WIPO International Bureau is completed, the “International Register”, which is a record of all information related to international registration, will be recorded and “CERTIFICATE OF REGISTRATION” will be mailed.
After that, the examination in the designated country will begin. If protection is granted, it will be protected as a rights authority for 10 years from the date of the international registration. If protection is not granted, a “PROVISIONAL REFUSAL” will be sent via the WIPO International Bureau within one year (18 months depending on the country) from the date when the WIPO International Bureau sends the notification as a designated country will be sent to the applicant.
Trademark owners have exclusive rights to prevent all third parties from using the trademark in any way without the trademark owner’s permission.
The Philippine Trademark Law provides for the following two types of infringement.
- Registered trademark infringement: Use a mark or packaging box similar or identical to a registered trademark
- Well-known trademark infringement: Use of a mark that indicates the relevance of a well-known trademark (even if a designated product or service is different from a registered well known trademark)
A: Yes. The reasons for cancellation are as follows.
- Non-use cancellation system: Registration will be canceled at the request of a third party if it has not been used for three years after trademark registration.
- Invalidity or Cancellation Request: If a trademark is registered against the registration requirements, it is possible to request invalidation or cancellation of registration at any time. In addition, if it is based on the sameness or similarity as the preceding trademark, a claim after 5 years from registration will not be accepted.
A: Applicants who do not have an address in the Philippines must appoint a Philippine attorney (a patent attorney or a lawyer).
A: You can check the “Philippine Trademark Database” on the Intellectual Property Office of the Philippine (IPOPHL) website.