Trademark registration in the Philippines

The registration of a trademark is an important step to help protect the rights and reputation of businesses in the international market. In the context of a globalized economy, the Philippines has become an attractive destination for many international businesses looking to expand their business. Trademark registration in the Philippines is not only the legalization of intellectual property rights that helps businesses protect their trademarks but also brings various benefits. This helps prevent brand copying, counterfeiting, counterfeiting, enhancing brand value and creating a healthy competitive environment. Viet An Law would like to guide customers preliminarily through the procedures for trademark registration in the Philippines through the article below.

Legal basis

• Philippine Intellectual Property Code (Republic Act No. 8293) of 2015
• Related circulars

Conditions for trademark registration in the Philippines

Distinguishability:

• The trademark must be able to distinguish the applicant’s goods or services from those of other businesses.
• A trademark cannot be generic, descriptive, or already used by another company.

Non-functionality

• A trademark cannot serve a technical purpose or be necessary for the functionality of the applicant’s product or service.
• Trademarks should only be used to identify the origin of goods or services.

Availability

• The trademark must be available for registration.
• A trademark cannot be identical or confusing to a trademark that already exists in the same or related product categories.

Statement of Actual Use (DAU)

In addition, within three years from the date of filing, the applicant must file a Statement of Factual Use with the Philippine Intellectual Property Office, proving that the trademark is actually being used for commercial purposes.

Trademark filings in the Philippines

• Trademark Application Form 400: The application form can be downloaded from the website of the Philippine Intellectual Property Office (IPOPHL). Customers can download the form via the following link:

https://drive.google.com/file/d/1ZSq6q_iOMzp40dfaaBGcwNRiwFCJQqtL/view

• Trademark copy: The trademark copy must be clear and easily visible. Preferably printed on a white background
• List of goods or services to be protected: This list must be listed by the applicant according to the Nice International Classification.
• Fee payment receipt
• Power of attorney (if applicable): If the application is filed by an intellectual property representative, a power of attorney is required.

Trademark Registration Processing in the Philippines

Step 1: Apply

To file for trademark protection in the Philippines, you can file using the following filing methods:

• Direct Submission: You can visit the office of the Philippine Intellectual Property Office at Intellectual Property Center #28 Upper McKinley Road McKinley Hill Town Center Fort Bonifacio, Taguig City, 1634 Philippines to file your application and related documents.
• By Post: You can send your application and all required documents via postal service or courier service to the address of the Philippine Intellectual Property Office.
• Submit online via website: https://www.ipophil.gov.ph/online-filing/ When applying online, you should pay attention to the payment of the relevant fee in accordance with the instructions of the Philippine Intellectual Property Office.

Step 2: Due Diligence

The applicant’s application will be evaluated to comply with the legal requirements of Philippine Intellectual Property Law.

Legal requirements for trademarks include:

• The trademark must be able to distinguish the applicant’s goods or services from those of other businesses.
• Trademarks must not be generic, descriptive, or have been used by another company.
• The trademark must not serve a technical purpose or be necessary for the functionality of the applicant’s product or service.

Step 3: Post the Gazette

If the applicant’s application is approved after due diligence, the applicant’s trademark will be published in the official gazette within 30 days. Within 30 days from the date of publication, anyone may object to the registration of the applicant’s trademark.

Step 4: Grant protection certificate

If no objection is filed within 30 days of publication, the applicant’s trademark will be registered and the petitioner will be granted a certificate of protection.

Trademark registration fees in the Philippines

Validity of protection titles in the Philippines

The term of protection of a trademark protection title in the Philippines is 10 years from the date of filing of the application. The protection title can be extended for another 10 years, up to a maximum of 20 years.

To renew a protection title, the owner needs to apply for renewal at least 6 months before the expiration date.

Holders of protected titles can apply for renewal online or in person at the Philippine Intellectual Property Office (IPOPHL).

When applying for an extension, the owner needs to submit the following documents:

• Renewal Form
• Trademark Registration Certificate
• Renewal fee

The renewal fee for protection titles in the Philippines is PHP 3,1000 for small businesses and PHP 6,6000 for large enterprises for each group of goods/services.

Note:

• If the owner does not apply for renewal within the stipulated period, the protection title will expire and the trademark will become public property.
• The owner may apply for re-registration of the trademark after the protection title expires. However, in this case, the owner may face competition from other businesses that already use similar marks.

Trademark registration service in the Philippines of Viet An Law Firm

• Perform the search and notify customers in writing the results of trademark search in the Philippines;
• Draft the application and file directly on behalf of the trademark owner and monitor the status of the filing of the trademark application in the Philippines;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in the Philippines;
• Assist in monitoring, representing the resolution of objections and feedback with intellectual property representatives performing procedures in the Philippines.
• Receive dispatches, certificates and hand over to customers (if any).

If customers need to file a trademark application in the Philippines, please contact Viet An Law Firm for the most effective support.