The ICLG to: Trade Mark Laws and Regulations

Trade Mark Laws and Regulations Philippines 2023-2024

ICLG - Trade Mark Laws and Regulations - Philippines Chapter covers common issues in trade mark laws and regulations – including legislation, application, refusal, opposition and registration.

Published: 18/04/2023

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1. Relevant Authorities and Legislation

1.1       What is the relevant trade mark authority in your jurisdiction?

The Philippine Intellectual Property Office (IPOPHL) is the primary government agency tasked with the regulation of trade marks in the Philippines.

1.2       What is the relevant trade mark legislation in your jurisdiction?

Republic Act No. 8293 ([Hyperlink] ), known as the Intellectual Property Code of the Philippines (IP Code), is the relevant legislation.

2. Application for a Trade Mark

2.1       What can be registered as a trade mark?

Any visible sign capable of distinguishing the goods (trade mark) or services (service mark) of an enterprise, including stamped or marked containers of goods, may be registered as a trade mark.

2.2       What cannot be registered as a trade mark?

The Philippines does not protect non-visually perceptible marks such as sound, touch, taste and smell marks, but recognises other non-traditional visual marks like 3D marks, position marks, hologram marks and motion marks.

2.3       What information is needed to register a trade mark?

A trade mark application must include: (a) the name, address and other contact details, and nationality/citizenship/domicile, or place of incorporation of a juridical applicant; (b) the title of the mark; (c) the list of goods and/or services covered by the application and their corresponding Nice Classifications; (d) where priority is claimed, the country, date and serial number of the earlier foreign application, and a copy of the priority application; (e) where colour is claimed, the names of the colours claimed and an indication of the principal parts of the mark in respect of each colour; (f) where the mark is three-dimensional, a colour mark, a motion mark, a position mark, or a hologram mark, an indication of such; (g) where the mark is a Collective or Certification mark, an indication of such; (h) translation and/or transliteration of the mark or parts thereof; (i) a reproduction of the mark; (j) signed Power of Attorney (POA) if application is filed by a representative; and (k) the name and address of the local agent/authorised representative of the applicant, if any.

2.4       What is the general procedure for trade mark registration?

After filing in complete form, an application will be granted a filing date and an application number.  In case of non-payment or insufficient payment of filing fees, which now includes the Publication for Opposition Fee, the applicant has three calendar days to complete the fees to be accorded the original filing date.  If the application is incomplete, the IPOPHL will inform the applicant, who has two months from the mailing date of the notice to comply; otherwise, the application will be deemed not filed.

The application will then undergo substantive examination.  If there are objections to the mark’s registration, an Office Action will be issued specifying the objections and the applicant has two months from its mailing date to respond.  If a mark is deemed registrable, it shall be published for opposition in the IPOPHL E-Gazette and the applicant shall be notified accordingly of the same.

If no opposition is filed within 30 days from a mark’s publication, a Notice of Issuance shall be issued requiring payment of the Issuance and Second Publication Fee unless the said fee was paid with the filing fees – in which case, the mark will be deemed registered on the next calendar day following the expiration of the opposition period.

2.5       How is a trade mark adequately represented?

The reproduction must substantially represent the mark as actually used or intended to be used in connection with the goods/services of the applicant, and should be in JPEG format, not exceeding 8cm × 8cm, and not more than two megabytes.

2.6       How are goods and services described?

The goods/services must be grouped according to the classes of the latest edition of the Nice Classification.  The use of broad terms is prohibited but class headings are acceptable, provided that they cover only the goods/services as stated and not all the goods/services under such class, and that they do not mislead as to the nature of the goods and/or services.

2.7       To the extent ‘exotic’ or unusual trade marks can be filed in your jurisdiction, are there any special measures required to file them with the relevant trade mark authority?

If a mark is visible, distinctive, and is not prohibited under Section 123.1 of the IP Code, it may be registered in the Philippines without any additional requirements or special measures.  We note, however, that the new Trademark Rules have specified the representation requirements for three-dimensional, colour, position, and motion marks.

For three-dimensional marks, one drawing of the mark in a single perspective view is acceptable if it sufficiently depicts all its features; otherwise, multiple perspectives may be submitted, but not more than six, and they must be properly labelled.

In the case of colour marks not defined by a given form but that have acquired secondary meaning, a reproduction of the colour with a description of the shade in ordinary language is required.  A pictorial representation is also acceptable, but anything not claimed should be presented in broken or dotted lines.  The applicant can also include a designation from an internationally recognised colour matching or identification system to describe the colour.

For position marks, a drawing or representation that shows the placement of the mark and its size in proportion to the relevant goods or packaging is required.

For motion marks, a clear and correct sequence of still images that corresponds to the movement depicted must be submitted as a single JPEG file, together with a clear description of the movement.  The applicant can also submit a video clip in MP4 format or a series of still images in GIF format.

2.8       Is proof of use required for trade mark registrations and/or renewal purposes?

Proof of use of the mark is not required to file an application for registration and/or renewal.  However, the IP Code requires the submission of a Declaration of Actual Use (DAU) with proof to that effect within certain periods in order for a pending application or a registered mark to retain active status.

DAUs are required within: (a) three years from the filing date of an application; (b) one year from the fifth anniversary of a mark’s registration; (c) one year from the renewal date of a trade mark registration; and (d) one year from the fifth anniversary of a mark’s renewal date.

2.9       What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

A trade mark registration granted by the IPOPHL is valid only within the Philippines, subject to applicable treaties and conventions.

2.10    Who can own a trade mark in your jurisdiction?

The applicant may be a natural or juridical person, local and/or foreign.  Foreign applicants not domiciled or having no real and effective commercial establishment in the Philippines must have a resident representative who shall be served with notices or processes affecting the mark.  An application may also be filed in the name of more than one applicant who shall be considered co-owners of the mark, but any one applicant may sign the application on behalf of the others.

2.11    Can a trade mark acquire distinctive character through use?

Signs or devices that were originally unregistrable for being descriptive may be granted registration after they have become distinctive in relation to the goods or services for which registration is requested.  Proof of substantially exclusive and continuous commercial use of the mark in the Philippines for at least five years before the date on which the claim of distinctiveness is made serves as prima facie evidence of a mark’s acquired distinctiveness.

2.12    How long on average does registration take?

A straightforward application without any Office Actions, revivals or oppositions is usually granted registration within three to six months from filing.

2.13    What is the average cost of obtaining a trade mark in your jurisdiction?

The expected official fee for a straightforward application for one mark in one class without any priority or colour claim is approximately USD115.

2.14    Is there more than one route to obtaining a registration in your jurisdiction?

Trade marks are registered only through the IPOPHL in accordance with the IP Code and the Trademark Regulations of 2017, as amended.  An applicant may register a mark in the Philippines through a national application or a designation/transformation of a Madrid application.

2.15    Is a Power of Attorney needed?

A POA is not required at the time of filing an application, but is needed for an application to proceed to substantive examination.

2.16    If so, does a Power of Attorney require notarisation and/or legalisation?

No attestation, notarisation, authentication, legalisation or other certification of any signature or other means of self-identification is required for the POA, except where the signature concerns the surrender of a registration.

2.17    How is priority claimed?

An application with a priority claim must be filed within six months from the date the earliest foreign application was filed.  If the fact of filing and/or registration can be verified from the official website of the foreign IP office, the applicant does not need to submit a copy of the foreign application/registration with the Philippine application.  Otherwise, the applicant should submit copies of the foreign application and registration with their English translations, if not in English.

If the foreign application is not available by the submission deadline, the Philippine application will be published for opposition in the IPOPHL E-Gazette with its priority claim deemed waived.

2.18    Does your jurisdiction recognise Collective or Certification marks?

The IP Code recognises Collective marks defined as any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises that use the sign under the control of the registered owner.  The new Trademark Rules define Certification marks as any sign used or intended for use in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labour on goods or services was performed by members of a group or association.

An application for a Collective or Certification mark must designate the mark as such, and be accompanied by a copy of the agreement, if any, governing the use of the Collective mark or the copy of the standards set by the certifier governing the use of the Certification mark.

3. Absolute Grounds for Refusal

3.1       What are the absolute grounds for refusal of registration?

A trade mark cannot be registered if it consists of:

  1. immoral, deceptive or scandalous matter, or matter that 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. 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. a name, portrait or signature identifying a particular living individual, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any;
  4. generic signs;
  5. signs that are customary or usual to designate the goods/services in everyday language or in bona fide and established trade practice;
  6. signs that 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/services;
  7. shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
  8. colour alone;
  9. signs likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods/services; or
  10. signs contrary to public order or morality.

3.2       What are the ways to overcome an absolute grounds objection?

The applicant can argue against the applicability of an absolute ground to the mark and/or raise unique circumstances that exempt the mark from the application of the objection.

If the ground for objection is that the mark pertains to a living individual or a deceased President, the applicant should obtain the relevant written consents.

If a registrable mark includes unregistrable elements, the mark as a whole can still be registered subject to the disclaimer of the unregistrable portions or elements.

Objections to a mark considered wholly descriptive, or which consist of shapes necessitated by technical factors or by the nature of the goods themselves, or which consist of colours alone, may be overcome by arguing that the mark has acquired distinctiveness through substantially exclusive, substantial and continuous commercial use of the mark in the Philippines for at least five years before the claim of distinctiveness is made.

3.3       What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

The IP Code and Trademark Regulations grant an applicant the right to appeal a final refusal to the Director of Trademarks, whose decision may then be appealed to the Office of the Director General (ODG).

3.4       What is the route of appeal?

A final refusal or decision of a Trademark Examiner can be appealed to the Director of Trademarks by filing a Notice of Appeal within two months from the mailing date of the final refusal or decision, extendible by two months upon request and payment of the extension fee.  The Appellant’s Brief stating the authorities and arguments on which the appeal relies should then be submitted within a non-extendible period of two months from the date of filing of the Notice of Appeal.  The Appellant’s Brief may also be filed together with the Notice of Appeal.  Only one motion for reconsideration is allowed, but is not required for purposes of filing an appeal to the ODG.

The decision or order of the Director of Trademarks may be appealed to the ODG by filing an Appeal Memorandum within 30 days from notice, extendible by 15 days.

The decision of the ODG may be appealed to the Court of Appeals by filing a petition for review under Rule 43 of the Rules of Court within 15 days from notice.  As a last recourse, the decision of the Court of Appeals may be appealed to the Supreme Court through a petition for review on certiorari under Rule 45 of the Rules of Court within 15 days from notice.

4. Relative Grounds for Refusal

4.1       What are the relative grounds for refusal of registration?

A trade mark cannot be registered if it is:

  1. identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date:
    1. in respect of the same goods or services;
    2. in respect of closely related goods or services; or
    3. if it nearly resembles such a mark as to be likely to deceive or cause confusion;
  2. identical with, confusingly similar to, or constitutes a translation of, a mark that is considered by a competent authority in the Philippines to be well known internationally and in the Philippines, whether or not it is registered in the Philippines, as being owned by another, and used for identical or similar goods or services; or
  3. identical with, confusingly similar to, or constitutes a translation of, a mark considered well known, which is registered in the Philippines with respect to goods or services that are not similar to those for which registration is applied.

4.2       Are there ways to overcome a relative grounds objection?

Confusing similarity under the IP Code requires close resemblance of the marks and identity or relatedness of goods and/or services.  To defend against a relative grounds objection, an applicant may assert that the competing marks are not identical or closely similar to each other using the Dominancy Test, and/or that the competing marks do not cover identical or related goods/services due to their different natures, descriptive properties, costs, purposes, qualities, fields of manufacture, conditions for sale/purchase, target markets, and channels of trade.

The applicant may also obtain the consent of the owner of the cited mark, evidenced by a letter of consent or a co-existence agreement, but subject to the Trademark Examiner’s acceptance.

An applicant may also claim better trade mark rights by alleging ownership over the mark and bad faith or fraudulent intent on the part of the senior applicant/registrant and/or that its own mark is well known.  Since the Trademark Examiner has no jurisdiction to address this, the application may be suspended pending the filing and resolution of an appropriate inter partes case with the Bureau of Legal Affairs (BLA).

The foregoing also apply to objections based on a mark’s alleged confusing similarity to a well-known mark.

4.3       What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

The IP Code and Trademark Regulations grant an applicant the right to appeal a final refusal to the Director of Trademarks, whose decision may then be appealed to the ODG.

4.4       What is the route of appeal?

The decision of the Trademark Examiner is appealable to the Director of Trademarks through a Notice of Appeal.  The Director’s decision is appealable to the ODG through an Appeal Memorandum.  The ODG’s decision is appealable to the Court of Appeals via a petition for review, and the decision of the Court of Appeals is appealable to the Supreme Court through a petition for review on certiorari.

5. Opposition

5.1       On what grounds can a trade mark be opposed?

There are no specific grounds for opposition indicated in the IP Code.  It is sufficient that the opposer alleges a recognised superior right that will be damaged if a mark is registered.

5.2       Who can oppose the registration of a trade mark in your jurisdiction?

Any person who believes that they would be damaged by the registration of a mark may file an opposition case.  Based on reciprocal rights, foreign brand owners, whether or not engaged in business in the Philippines, may oppose the registration of a mark applied for in bad faith by third parties, even if the former do not have trade mark registrations in the Philippines.

5.3       What is the procedure for opposition?

The verified notice of opposition or a motion for extension of time to file the same must be filed within 30 days from the date of publication of a mark.  This period may be extended only once by 45 days upon proper motion.

Once the verified notice of opposition is filed, the BLA will issue a Notice to Answer together with a copy of the opposition or petition.  The respondent-applicant must file a verified answer within 30 days from notice, extendible by a single 45-day period upon proper motion.

After the verified answer is filed, the case shall be referred to mediation.  The parties have 60 days from referral to settle the dispute, which may be extended by 30 days upon joint request of the parties.

If the mediation fails, the case will be raffled to an adjudication officer of the BLA for the conduct of hearings/conferences for the purposes of submission and/or presentation for inspection and comparison of the required documents attached to the pleadings.  The period for the hearings/conferences shall not exceed 45 days from the date the case was raffled to the adjudication officer.

The parties must submit their respective position papers within 10 days from the termination of the 45-day period for hearings/conferences.  The case shall be deemed submitted for decision after the period for submission lapses and the adjudication officer shall issue the decision or final order within 20 calendar days from the said date, which period may be extended by 20 calendar days for justifiable reasons.  No motion for reconsideration of the order of the Adjudication Officer shall be allowed

6. Registration

6.1       What happens when a trade mark is granted registration?

The IPOPHL shall publish the marks registered in the order of their registration and all documents relating to them will be subject to general inspection.

A Certificate of Registration shall be issued to the registrant, which shall serve as prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the same in connection with the goods/services and those related thereto specified in the Certificate.

The owner of a registered mark shall have the exclusive right to prevent all third parties from using marks that are identical or similar to their own, for goods/services that are identical or similar to those for which their marks are registered.

6.2       From which date following application do an applicant’s trade mark rights commence?

The exclusive rights in a mark are acquired only after the mark has been registered, but a registered mark shall have no effect against any person who, in good faith, was using the same or similar mark for purposes of their business or enterprise before the filing or priority date of the registered mark.

6.3       What is the term of a trade mark?

A trade mark is valid for 10 years from its date of registration.  It may be renewed indefinitely every 10 years.

6.4       How is a trade mark renewed?

A trade mark registration is renewed by filing a Request for Renewal and remitting the renewal fees to the IPOPHL within six months before the expiration of the original term of registration or renewal.  The Request can also be filed within a six-month grace period, subject to a surcharge equivalent to 50% of the filing fees.

7. Registrable Transactions

7.1       Can an individual register the assignment of a trade mark?

Trade mark assignments have no effect against third parties until they are recorded with the Bureau of Trademarks (BOT).

7.2       Are there different types of assignment?

Trade mark assignments are generally treated the same regardless of the manner of transfer.  However, the IPOPHL recognises and records transfers only of marks that have active registrations or pending applications before the IPOPHL.

7.3       Can an individual register the licensing of a trade mark?

A trade mark licence agreement has no effect on third parties until it is recorded with the BOT.  Prior to recordation, it must first be submitted to the Documentation, Information, and Technology Transfer Bureau for clearance that it does not violate the prohibited clauses and contains all of the mandatory provisions under Sections 87 and 88, respectively, of the IP Code.

7.4       Are there different types of licence?

The licence can be an ordinary trade mark licence agreement, or a Transfer Technology Arrangement if it includes the transfer of systematic knowledge apart from the right to use the licensed trade marks.

7.5       Can a trade mark licensee sue for infringement?

If the licence agreement grants the licensee the right to sue for infringement, it may do so.  Otherwise, the right is held by the trade mark owner/licensor.

7.6       Are quality control clauses necessary in a licence?

To be valid, a trade mark licence must provide for effective control by the licensor of the quality of the goods/services of the licensee.

7.7       Can an individual register a security interest under a trade mark?

Under the Civil Code of the Philippines, incorporeal rights such as trade marks may be pledged by the registrant by delivering the Certificate of Registration to the creditor.  To be enforceable against third parties, the document evidencing the pledge must be notarised and must contain the description of the thing pledged and the date of the pledge.  The security interests or transactions affecting the ownership of the mark can be recorded with the IPOPHL by submitting the original pledge document or its certified true copy, together with the payment of the recordal fee.  Once granted, the IPOPHL will issue a Notice of Recordal.

Under Republic Act No. 11057 or the Personal Property Security Act, an IP security interest may be registered with the Registry to be established and administered by the Land Registration Authority, and such registration shall be considered a means of perfecting a security interest in an intangible asset.

7.8       Are there different types of security interest?

The IP Code is silent on this matter.  Thus, the rules governing property in general apply.

8. Revocation

8.1       What are the grounds for revocation of a trade mark?

The registrant may petition for the voluntary cancellation of a trade mark registration.  No specific grounds must be raised.

8.2       What is the procedure for revocation of a trade mark?

The registrant or their authorised representative must file a petition under oath for the cancellation of the registration.  Prior to the actual cancellation of the registration, however, the fact of voluntary cancellation of the mark will be published in the E-Gazette for 15 days for the public’s information, but the date of cancellation will be the date on which the request was approved.

8.3       Who can commence revocation proceedings?

Only the registrant or their authorised representative may file the petition.

8.4       What grounds of defence can be raised to a revocation action?

None, since the cancellation is a voluntary act of the registrant.

8.5       What is the route of appeal from a decision of revocation?

The decision of the Trademark Examiner may be appealed to the Director of Trademarks in the same manner as final decisions on applications for registration.

9. Invalidity

9.1       What are the grounds for invalidity of a trade mark?

A petition for cancellation may be filed if the registration of a mark will cause/has caused damage to another, if the mark has become generic, been abandoned, or its registration was obtained fraudulently or contrary to the provisions of the IP Code, or is being used by the registrant or with his permission to misrepresent the source of the goods or services covered by the mark, or it has not been used for at least three years or longer without legitimate reason.

Apart from a third-party cancellation case, a registered mark will be automatically removed from the Register if the registrant fails to timely submit the required DAU and proof of use of the mark.

Furthermore, the court or the BLA with jurisdiction over any action to enforce the rights of a registered mark likewise has jurisdiction to determine whether the registration of the said mark may be cancelled in accordance with the IP Code.

9.2       What is the procedure for invalidation of a trade mark?

A cancellation case proceeds similarly to an opposition case except that the period to file the petition for cancellation cannot be extended.

9.3       Who can commence invalidation proceedings?

Any person who believes that they will be damaged by the continued registration of a mark may file a petition for cancellation.

9.4       What grounds of defence can be raised to an invalidation action?

Good faith is an available defence where bad faith registration and/or fraudulent intent is raised.  If the ground raised is that the registration is contrary to the IP Code, the registrant may deny the specific ground(s) raised – i.e., the provisions allegedly contravened.

A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service.  The test for determining whether the registered mark has become the generic name of goods or services on which it has been used is the primary significance of the registered mark to the relevant public rather than purchaser motivation.

If the ground raised is non-use of the mark, it may be excused if caused by circumstances arising independently of the will of the trade mark owner, except for a lack of funds.

9.5       What is the route of appeal from a decision of invalidity?

Decisions of the Adjudication Officer of the BLA may be appealed to the Director of Legal Affairs by filing an Appeal Memorandum within 15 days from receipt, extendible by 15 additional days.  No motion for reconsideration of the decision of the Director is allowed.

The decision of the Director may be appealed to the ODG by filing an Appeal Memorandum within 30 days from notice of the decision or final order, extendible by 15 days upon proper motion and the payment of the applicable fees.

The decision of the ODG may be appealed to the Court of Appeals by filing a petition for review under Rule 43 of the Rules of Court within 15 days from notice.  The decision of the Court of Appeals may be appealed to the Supreme Court through a petition for review on certiorari under Rule 45 of the Rules of Court within 15 days from notice.

10. Trade Mark Enforcement

10.1    How and before what tribunals can a trade mark be enforced against an infringer?

The BLA of the IPOPHL has original jurisdiction in administrative actions for trade mark infringement where the total damages claimed are not less than PHP200,000.  The commencement of an administrative action is independent and without prejudice to the filing of any action with the regular courts.

A civil case for trade mark infringement is filed before the Special Commercial Court (SCC) in the Philippines where the plaintiff or the defendant resides or holds principal office, at the option of the plaintiff.

For a criminal case of trade mark infringement, the complaint must be instituted with the National Prosecution Service of the Department of Justice (DOJ) for purposes of preliminary investigation.  A criminal case will be filed with the SCC only if probable cause is found after the preliminary investigation.  The place of commission of the offence or any of its elements determines which SCC has jurisdiction to try the case.

The owner of a registered mark may also record its rights with the Bureau of Customs (BOC), on the basis of which the BOC will monitor and inspect on its own initiative suspect imports to determine whether they are liable to seizure and forfeiture pursuant to law.

10.2    What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

In an administrative proceeding, after the complaint is filed, the case will be raffled to a Hearing Officer and a summons or Notice to Answer will be issued to the respondent.  Once an answer is filed, the case shall be referred to mediation.  If the mediation fails, the case will be referred back to the BLA for adjudication and a pre-trial conference will be conducted.  The case will then be set for successive and continuous hearing for the reception of evidence.  Assuming that the case will be immediately raffled to an available Hearing Officer and the mediation proceedings are not extended, an administrative infringement case should proceed to trial proper within three months from commencement.

In a civil case, the proceeding will commence upon the filing of a verified complaint and the supporting judicial affidavit(s) with the SCC having jurisdiction over the case.  Thereafter, a summons will be issued to the defendant requiring the filing of an answer.  After the answer is filed, the case will be set for pre-trial and the parties shall be required to submit their pre-trial briefs.  After termination of the pre-trial, the case shall be referred to mediation.  If the mediation fails, trial before the original court shall proceed.  Assuming a straightforward proceeding, a civil infringement case should proceed to trial proper within three to six months from commencement.

A criminal case is commenced by filing a complaint with the appropriate office of the DOJ or of the Office of the Prosecutor.  The investigating prosecutor may dismiss the case outright or issue an order requiring the respondent to file their counter-affidavit and evidence.  After the expiration of the period for submission, the investigating prosecutor will determine whether or not there is sufficient ground to hold the respondent for trial.

After the preliminary investigation, the information shall be filed in the court of appropriate jurisdiction.  The judge shall evaluate the information to determine whether there is probable cause to continue with the case and to issue a warrant of arrest against the accused.  Once the court has acquired jurisdiction over the person of the accused, the arraignment and pre-trial shall be set simultaneously.  After the pre-trial terminates, the case shall be referred to mediation for its civil aspect.  Thereafter, the trial will proceed.  Considering the need for preliminary investigation before the case is properly filed in court, a criminal infringement case may take several months or even years before proceeding to trial proper.

10.3    Are (i) preliminary, and (ii) final injunctions available and if so, on what basis in each case?

The complainant may be granted a preliminary injunction if the following are established:

  1. the applicant is entitled to the relief demanded, and the whole or part of such relief consists in restraining the commission or continuance of the act(s) complained of, or in requiring the performance of an act(s) either for a limited period or perpetually;
  2. the commission, continuance or non-performance of the act(s) complained of during the litigation would probably cause injustice to the applicant; or
  3. a party is doing, threatening, or attempting to do, or is procuring, some act probably in violation of the rights of the applicant respecting the subject of the action or proceeding, and tending to render the judgment ineffectual.

The courts may also grant a final injunctive relief and order the disposal of the infringing goods.  If, after the trial, it appears that the plaintiff is entitled to have the act(s) complained of permanently enjoined, the court shall grant a final injunction effective perpetually.

10.4    Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so, how?

Upon ex parte motion of a party, the testimony of any person may be taken by deposition upon oral examination or written interrogatories.  The deponent may be examined regarding any matter that is not privileged, including the existence, description, nature, custody, condition, and location of any tangible things and the identity and location of persons having knowledge of relevant facts.

Upon motion of any party, the court may also order any party to: (a) produce and permit the inspection and copying or photographing of any designated tangible things, not privileged, that constitute or contain material evidence; or (b) permit entry upon designated property for the purpose of inspecting, measuring, surveying, or photographing the property or any designated relevant object or operation thereon.

10.5    Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

Evidence is initially submitted in writing in the form of judicial affidavits.  During trial proper, witnesses are presented to testify orally and both parties are given the opportunity to cross-examine, redirect and re-cross-examine the witnesses.

10.6    Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

The filing of a suit to enforce a registered mark will exclude another court or agency from assuming jurisdiction over a subsequently filed petition for cancellation against the same mark; however, an earlier filing of a petition to cancel a trade mark registration with the BLA of the IPOPHL will not constitute a prejudicial question that must be resolved before an action to enforce the rights to the same registered mark may be decided.

10.7    After what period is a claim for trade mark infringement time-barred?

Administrative and civil actions for trade mark infringement must be filed within four years from the commission of the offence or from its discovery.  Criminal actions for trade mark infringement must be instituted within eight years from the commission of the crime or from its discovery.

10.8    Are there criminal liabilities for trade mark infringement?

Independent of the civil and administrative sanctions imposed by law, criminal liability of imprisonment from two to five years and a fine ranging from PHP50,000 to PHP200,000 shall be imposed on a person found guilty of infringement.

10.9    If so, who can pursue a criminal prosecution?

Only the owner of the infringed registered mark has the right to file a criminal action for infringement.

10.10  What, if any, are the provisions for unauthorised threats of trade mark infringement?

Preparatory steps to carry out the sale of any goods/services using a reproduction, copy or colourable imitation of a registered mark are considered trade mark infringement.  Where the sole participation of an infringer, however, is unknowingly printing a mark or other infringing materials for others, the complainant shall only be entitled to an injunction against future printing.

11. Defences to Infringement

11.1    What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?

Apart from lack of identity or confusing similarity of the marks, a defendant/the accused may claim prescription of action and invalidity of the complainant’s trade mark registration.

11.2    What grounds of defence can be raised in addition to non-infringement?

Ordinarily, good faith is not a defence in an infringement case.  However, a defendant/the accused may raise good faith if they claim to be a prior user under Section 159 of the IP Code.  In addition, the owner of a registered mark cannot recover profits or damages unless the acts have been committed with the knowledge that such imitation is likely to cause confusion, mistake or deception.

12. Relief

12.1    What remedies are available for trade mark infringement?

A successful infringement complainant may recover damages based on reasonable profit or, if the measure of damages cannot be readily ascertained, a reasonable percentage based on the amount of gross sales of the defendant.  The amount of damages may be doubled upon showing that the defendant had an actual intent to mislead the public or to defraud the complainant.  Moral and exemplary damages may also be claimed in cases where the acts were committed in a fraudulent or wilful manner.

Administrative sanctions for infringement include: the issuance of a cease-and-desist order; the condemnation or seizure of the subject of the offence; the forfeiture of paraphernalia and all properties used in the commission of the offence; the imposition of fines; and the cancellation or suspension of any permit, licence or registration that may have been granted by the IPOPHL, among others.

At any time after the filing of a civil complaint or criminal information, a motion for the disposal and/or destruction of the seized infringing goods, materials and implements used in the infringement may be filed.  The courts may also grant a final injunctive relief and order the disposal of the infringing goods.

12.2    Are costs recoverable from the losing party and if so, how are they determined and what proportion of the costs can usually be recovered?

Costs of litigation may be awarded to the winning party at the discretion of the court and subject to substantiation.

13. Appeal

13.1    What is the right of appeal from a first instance judgment and is it only on a point of law?

The decision of the BLA Director in an administrative infringement case is appealable to the ODG within 30 days from notice.  Both errors of law and fact may be raised on appeal.

The decision of the ODG may be appealed to the Court of Appeals through a petition for review under Rule 43 of the Rules of Court within 15 days from notice.  Questions of both fact and law may be raised on appeal.

The decision of the Court of Appeals may be appealed to the Supreme Court by filing a petition for review on certiorari under Rule 45 of the Rules of Court.  The petition shall raise only questions of law.

13.2    In what circumstances can new evidence be added at the appeal stage?

The Court of Appeals may consider on appeal newly discovered evidence that could not have been discovered prior to the trial in the lower court/office by the exercise of due diligence and which is of such a character as would probably change the result of the decision.

14. Border Control Measures

14.1    Is there a mechanism for seizing or preventing the importation of infringing goods or services and if so, how quickly are such measures resolved?

Under the IP Code, no article of imported merchandise that copies or simulates the name of any domestic product, manufacturer, or dealer, or which shall copy or simulate a registered mark, shall be admitted entry at any customhouse of the Philippines.

The Intellectual Property Rights (IPR) Division of the BOC maintains an IPR registry where IP rights holders in the Philippines can register their marks.  Importation of counterfeit goods bearing marks recorded with the BOC are monitored.  The BOC may issue alerts or hold orders on its own initiative or upon the request of an IPR owner.  Once an alert or hold order has been issued, the suspicious goods will be examined and, if there is a prima facie basis to subject them to seizure proceedings, a warrant of seizure and detention may be issued against the shipment.  Seized counterfeit goods are subject to forfeiture and destruction or may be used as evidence for other enforcement actions.

15. Other Related Rights

15.1    To what extent are unregistered trade mark rights enforceable in your jurisdiction?

Previous jurisprudence held that evidence of prior use of a mark may overcome a trade mark registration without need of proof that the said registration was fraudulent or invalid.  However, the Supreme Court recently held that for marks that are first used and/or registered after the effectivity of the IP Code on 1 January 1998, ownership is no longer dependent on the fact of prior use.  Nonetheless, the same case upheld that a registered mark shall have no effect against a mark that has been used in good faith before the filing or priority date of the registered mark.

Moreover, a person who has identified, in the mind of the public, his or her goods and services, whether a registered mark is employed or not, has a property right in the goodwill created and may protect the same based on unfair competition.  Accordingly, a Certificate of Registration may be defeated by evidence of bad faith or fraudulent intent.

15.2    To what extent does a company name offer protection from use by a third party?

Trade names are protected in the Philippines prior to or without registration against unlawful acts, including any subsequent use of the trade name by a third party as a trade name or mark, or any such use of a similar trade name or mark that is likely to mislead the public.  An earlier used trade name may serve as the basis for a trade mark cancellation case, an infringement case, and BOC recordal.

15.3    Are there any other rights that confer IP protection, for instance book title and film title rights?

A logo or device (excluding word elements) may be considered an artistic work and subject to copyright protection.  The shape of a product, part of a product or of its packaging or container may be considered distinctive and registered as a trade mark or as an industrial design.

16. Domain Names

16.1    Who can own a domain name?

Anyone can own a domain name on a first-come-first-served basis, but it may be contested by a third party claiming that: the domain name is identical or confusingly similar to a trade mark or service mark belonging to another; the domain registrant has no legitimate interest in the domain name; or the domain has been registered and is being used in bad faith.

16.2    How is a domain name registered?

An available generic top-level domain can be registered through any Internet Corporation for Assigned Names and Numbers (ICANN)-accredited registrar.  A domain name may also be registered as a trade mark under the IP Code.

16.3    What protection does a domain name afford per se?

The acquisition of a domain name in contravention of another’s IP rights is punished as cyber-squatting under the current Cybercrime Prevention Act 2012.  Disputes regarding domain names may also be addressed to an ICANN-approved dispute service provider in accordance with ICANN’s Uniform Domain-Name Dispute Resolution Policy (UDRP).

16.4    What types of country code top-level domain names (ccTLDs) are available in your jurisdiction?

“.ph” is the ccTLD for the Philippines and is administered by dotPH.

16.5    Are there any dispute resolution procedures for ccTLDs in your jurisdiction and if so, who is responsible for these procedures?

dotPH has adopted its own UDRP, which is incorporated into its Domain Name Services Agreement.  Dispute proceedings under these Rules are conducted before an administrative dispute resolution service provider approved by dotPH.

17. Current Developments

17.1    What have been the significant developments in relation to trade marks in the last year?

The full digitalisation of administrative trade mark prosecution and litigation proceedings continued in 2022, leading to faster registration and decision times.

17.2    Please list three important judgments in the trade marks and brands sphere that have been issued within the last 18 months.

In Suyen Corporation vs Danjac LLC (G.R. No. 250800, 6 July 2021), the Supreme Court held that the elements under Sections 123.1 (d) and (f) of the IP Code are distinct insofar as damages are concerned.  Under Section 123.1 (d), which prohibits the registration of a mark that is identical to a registered or earlier filed mark in respect of the same goods or services, closely related goods or services, or if it nearly resembles a mark as to be likely to deceive or cause confusion, the damage is caused by a likelihood of confusion to the targeted buyers between competing marks.  On the other hand, damages under Section 123.1 (f), which proscribes the registration of marks that are identical with or confusingly similar to, or constitute a translation of a well-known mark registered in the Philippines, are those caused to the interests of the registered owner of a well-known mark who is entitled to protection against dilution.

In Kolin Electronics Co., Inc. vs Taiwan Kolin Corp. Ltd. and Taiwan Kolin Corp. Ltd., represented by Kolin Philippines International, Inc. vs Kolin Electronics Co., Inc. (G.R. Nos 221347 and 221360-61, 1 December 2021), the Supreme Court held that the registration of a domain name bearing a mark registered under Class 35 is a mere exercise of and is consistent with a registrant’s exclusive right to use the same registered mark on Class 35 services online.  However, while owners of registered marks do have the right to extend to product and market areas that are the normal expansion of their business and those goods/services that may be deemed related, they must also not infringe on the rights of another trade mark owner with a registered mark in its favour.  Hence, the exclusive rights granted to a registered mark are limited by the rights of other registered marks.

In Elidad Kho and Violeta Kho vs Summerville General Merchandising & Co., Inc. (G.R. No. 213400, 4 August 2021), the Supreme Court held that there is probable cause for unfair competition where identical goods contained in the same packaging and bearing the same mark are sold, regardless of the indication of the manufacturer’s name on the packaging.  An ordinary purchaser would not normally inquire about the manufacturer of the product.

17.3    Are there any significant developments expected in the next year?

There are several bills amending the IP Code currently pending in the House of Representatives, which may become law in the next year.  House Bill No. 799, for example, grants the Director General of the IPOPHL enforcement powers in the form of temporary and permanent blocking orders, takedown orders, cease-and-desist or disable access orders directed to intermediary service providers, domain name registries and registrars, website owners, online intermediaries, online platforms, social media platforms and the like, in relation to online violation of IP rights involving counterfeit and pirated goods, materials and content.  House Bill No. 888 increases the penalty for criminal trade mark infringement and unfair competition to three to six years’ imprisonment and a fine of PHP350,000 to PHP500,000.  Meanwhile, House Bill No. 3340 establishes a registry for indigenous knowledge systems and practices, which shall serve as prima facie evidence of community intellectual rights of the indigenous cultural communities/indigenous peoples.

17.4    Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

The IPOPHL issued the Trademark Regulations of 2023, effective from 14 February 2023.  For the most part, the new Rules merely encode the various issuances made by the IPOPHL during the pandemic in response to lockdowns.  However, some changes are new and will affect trade mark prosecution moving forward.  In particular, the new Rules state that for purposes of acquiring a filing date for an application, the filing fee shall include the Publication for Opposition Fee.  In case the application does not proceed to registration, however, the filing fee will be deemed forfeited in favour of the IPOPHL.  Moreover, the period to respond to an office action is two months from their mailing date, which is now understood to mean the date on which the action was initially sent through the e-correspondence system or to the designated registered e-mail of the applicant/agent.

The IPOPHL also issued the Rules and Regulations on Geographical Indications in December 2022.  The Rules provide for a sui generis system of registration and protection for Geographical Indications (GIs) under the BOT.  The new Rules invite the registration of GIs in the Philippines for the first time and expand the local IP practice.

IP rights awareness online or over the internet has also become prevalent, with the Intellectual Property Rights Enforcement Office reporting that concerned citizens are the most active reporters of IP violation.

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