FAQs on trademark registration in the Philippines

In today’s digital marketplace, a name, logo, tagline, or even a distinctive online identity can quickly become one of the most valuable assets of a business or creator. As audiences grow and products or services become more recognizable, protecting that identity or “brand” becomes increasingly important. One way to protect one’s brand in the Philippines is to register it as a trademark.

This article answers common questions about trademark registration in the Philippines.

What can be registered as a trademark?

Generally, you may register any mark as a trademark with the Intellectual Property Office of the Philippines (IPO). A “mark” is any visible sign capable of distinguishing goods or services. A trademark refers to a mark used on goods, while a service mark refers to a mark used on services. For brevity, in this article, both types of marks are referred to as “trademark”.

Is trademark different from a trade name?

Yes. A trade name is registered with the Department of Trade and Industry or the Securities and Exchange Commission. A trade name identifies the enterprise or business engaged in a particular trade or business in the Philippines.

When is a mark not capable of registration?

A mark is not capable of registration when it:

1. consists of immoral, deceptive, or scandalous matter;
2. consists of, or is a simulation of, the flag, coat of arms, or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation;
3. consists of the name, portrait, or signature of a living person, and such person’s consent was not secured for the purpose;
4. consists of the name, portrait, or signature of a deceased Philippine president, during the life of said president’s spouse, if any, and the president’s spouse’s consent was not secured;
5. is identical to a registered mark belonging to a different proprietor, or to a mark with an earlier filing or priority date, in respect of the same goods or services, closely related goods or services, or if it nearly resembles such a mark as to be likely to deceive or cause confusion;
6. is identical to, confusingly similar to, or constitutes a translation of a well-known mark;
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 they seek to identify (i.e., generic marks);
9. consists exclusively of signs or 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 indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or rendering of the services, or other characteristics of the goods or services (i.e., descriptive marks);
11. consists of shapes that may be necessitated by technical factors, by the nature of the goods themselves, or by 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.

What is a well-known mark?

A mark is well-known when a relevant sector of the public has become familiar with it because of its promotion. Well-known marks are protected in the Philippines, whether registered or not.

What are the steps in trademark registration?

Trademark registration involves the following steps:

1. Filing of the application;
2. Formal and substantive examinations of the application;
3. Notice of allowance of application;
4. Publication in the IPO Gazette;
5. Opposition proceedings, if any;
6. Notice of issuance of the Certificate of Registration;
7. Issuance of the Certificate of Registration.

When applying for trademark registration in the Philippines, may one base an application on a previously filed application in another country?

Yes, if the applicant is a national of, domiciled in, or has a real and effective industrial establishment in a country that, like the Philippines, is a party to a treaty or agreement relating to intellectual property rights, or extends reciprocal rights to Philippine nationals by law.

Are there other conditions for basing an application on a previously filed application in another country?

The application for registration in the Philippines should be made within 6 months from the date of the foreign application. Also, the foreign application must not have been withdrawn, abandoned, or otherwise disposed of in the foreign country.

Note that when claiming priority right, the application for registration in the Philippines may be granted only when the mark has been registered in the foreign country.

What is the validity period of a Certificate of Registration?

Assuming that the registrant complies with the periodic requirement to declare actual use, the registration is valid for 10 years. The registration may also be renewed, subject to compliance with the renewal requirements.

When applying for trademark registration, is it necessary for the applicant to prove actual use?

Proof of actual use is not required at the time of application. However, within 3 years from the filing date of the application and within 1 year from the 5^th anniversary of the registration date of the trademark, the registrant must file a declaration of actual use. Otherwise, the mark may be refused registration or removed from the Intellectual Property Office’s register, as may be applicable.

What is the benefit of having a trademark registered?

Having a trademark registered allows the owner of the trademark to prevent other persons from using identical or similar signs for identical or similar goods or services if such use is likely to cause confusion in the mind of the public, or deceive a purchaser as to the goods or services or the origin of such goods or services.

When is trademark infringement deemed committed?

Trademark infringement is committed in the following scenarios:

1. using in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark, the same container, or a dominant feature thereof, in connection with the sale, offering for sale, distribution, or advertising of any goods or services; or
2. reproducing, counterfeiting, copying, or colorably imitating a registered mark or a dominant feature thereof, and applying such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce upon, or in connection with, the sale, offering for sale, distribution, or advertising of goods or services, where such use is likely to cause confusion, mistake, or deception.

The content on this website is for general information only and does not constitute legal or other professional advice. You should not rely on it as a substitute for advice from a qualified lawyer who is familiar with your particular circumstances.

For legal advice, please book an appointment and/or contact us.