Category: Philippines

A: Before filing an application, first confirm that similar or identical marks are not registered through the Intellectual Property Office of the Philippines (IPOPHL) website and fill out the application form. After that submit it.
The flow of examination after submitting the application is as follows;

(1) Formal examination
(2) Substantive examination
(3) Publication of Application
(5) Payment of registration fee
(6) Registration

A: Documents required for trademark application are as follows.
It must be written in English or Filipino.

(1) Application form
(2) Trademark sample
(3) Power of attorney (can be submitted within 60 days from the filing date)
(4) Prescribed application fee

* The following is if only necessary

・ Priority certificate
・ Translation of priority certificate
・ In the case of a trademark displayed in a foreign language: Translation of the trademark or display of transliteration
・When claiming color: Display and designation of color
・ In the case of a three-dimensional trademark or a collective trademark: Explanation of the trademark

If the trademark application is based on the applicant’s home country registration, a certified copy of the home country registration must be submitted within 12 months from the filing date.
Since this 12-month period can be extended by 12 months, the deadline for submitting a certified copy of home country registration is 24 months from the date of application.

A: The period of protection is ten (10) years from the date of issuance and is renewable for a period of ten (10) years at a time.
The renewal procedure period is 6 months before and after the registration expiration date, and an additional fee is required for renewal after the registration expiration date.
The request shall contain the following indications:

a. An indication that renewal is sought;
b. The name and address of the registrant or his successor-in-interest, hereafter referred to as the “right holder”;
c. The registration number of the registration concerned;
d. The filing date of the application which resulted in the registration concerned to be renewed;
e. Where the right holder has a representative, the name and address of that representative;
f. The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice Classification to which that
group of goods or services belongs and presented in the order of the classes of the said Classification; and
g. A signature by the right holder or his representative.

※Nice classification is a classification table that is created based on the Nice Agreement and is common to all member countries regarding goods and services for mark registration. It is also called the international classification table for goods and services.

A: A mark cannot be registered if it:

(1) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;

(2) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;

(3) 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;

(4) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: cd
i. The same goods or services, or
ii. Closely related goods or services, or
iii. If it nearly resembles such a mark as to be likely to deceive or cause confusion;

(5) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

(6) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for:
Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark:
Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use;

(7) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;

(8) Consists exclusively of signs that are generic for the goods or services that they seek to identify;

(9) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;

(10) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;

(11) 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;

(12) Consists of color alone, unless defined by a given form; or

(13) Is contrary to public order or morality.

Trademark means visible sign such as word, a group of words, sign, symbol, logo or a combination thereof that identifies and differentiates the source of the goods or services of one entity from those of others.
It is defined to include a container of stamped or stamped goods.

All issued trademarks are subject to maintenance fees or annual fees, which must be paid to maintain the trademark in force.
A Declaration of Actual Use (DAU) is to be submitted to IPOPHL according to the following schedule:

(1) Within three (3) years from the filing of the trademark application or within 3 years from the international registration date or subsequent designation date.
(2) Within one (1) year from the fifth (5th) anniversary of the registration of the mark or within 1 year from the 5th anniversary of the statement of grant of protection.
(3) Within one (1) year from the fifth (5th) anniversary of each renewal.
(4) As per Rule 204 of IPOPHL MC No. 17-010, a DAU must be submitted for renewed registrations within one (1) year from the date of renewal of the registration. This requirement only applies for registered marks due for renewal on 01 January 2017 and onwards, regardless of the filing date of the Request for Renewal.
Costs differ between large entity (total assets over 100 million PHP) and small entity. The actual costs are set as follows.

3rd year DAU 1,920PHP (small entity: 900PHP)
5th year DAU 2,400PHP (small entity: 1,100PHP)
Renewal DAU 2,400PHP (small entity: 1,100PHP)
Mid-Renewal DAU 2,400PHP (small entity: 1,100PHP)