Trade Marks 2020 Comparisons

Last Updated February 26, 2020

Law and Practice

Authors



SyCip Salazar Hernandez & Gatmaitan was established in 1945 and is one of the largest full-service law firms in the country, based in Makati City with offices in Cebu, Davao and the Subic Bay Freeport. SyCipLaw’s IP practice is the largest in the country in terms of client base and range of services offered. These include basic rights protection, such as trade mark, copyright, patent and product registration. The firm has expertise in licensing, technology transfers and similarly focused business transactions. The firm assists clients in navigating the legal issues and concerns that have arisen with developments in science and technology, e-commerce and internet-based transactions law, providing responsive and creative support.

Republic Act 8293, otherwise known as the Intellectual Property Code of the Philippines (IP Code), provides for the legal framework governing trade marks in this jurisdiction.

Under the IP Code, a “mark” means any visible sign capable of distinguishing the goods (trade mark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. 

Trade mark rights are acquired through registration of the trade mark in accordance with law. The acquisition of a secondary meaning is required for the registration of certain types of marks.

The Intellectual Property Office of the Philippines (IPOPHL), the relevant trade mark authority, maintains a register of trade marks. There is only one type of register, and it is publicly available.

As the Philippines trade mark system follows a first-to-file rule, it is good practice to first conduct a search of the register to determine whether there are registered marks, or marks with an earlier filing or priority date, which may be identical to, or which may resemble, the mark subject of an application, as these may serve as a bar to registration.

Natural and juridical persons may be registered owners of trade marks. As mentioned, any visible sign capable of distinguishing the goods or services of an enterprise, including a stamped or marked container of goods, may be registered.

Applicants for trade mark registration would have to file an application which contains the following:

  • a request for registration;
  • the name and address of the applicant;
  • the name of a State of which the applicant is a national or where they are domiciled, and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any;
  • where the applicant is a juridical entity, the law under which it is organised and existing;
  • the appointment of an agent or representative, if the applicant is not domiciled in the Philippines;
  • where the applicant claims the priority of an earlier application, an indication of:
    1. the name of the State with whose national office the earlier application was filed or, if it was filed with an office other than a national office, the name of that office;
    2. the date on which the earlier application was filed; and
    3. where available, the application number of the earlier application; 
  • where the applicant wishes to claim colour as a distinctive feature of the mark:
    1. a statement to that effect;
    2. the name/s of the colour(s) claimed; and
    3. an indication in respect of each colour of the principal parts of the mark which are in that colour;
  • a statement that a mark is a three-dimensional mark, if this is the case;
  • reproduction of the mark;
  • transliteration or translation of the mark or parts thereof;
  • the names of the goods or services for which registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class under the Nice Classification to which each group of goods or services belongs;
  • where the application is for a collective mark, a designation to that effect; and
  • signature by, or other self-identification of, the applicant or authorised representative.

Applications, including multi-class applications, are prosecuted ex parte. Applications shall be examined for registrability and for compliance with the filing requirements. Once the IPOPHL finds that the required filing conditions have been satisfied, it shall, upon payment of the required fee, cause the application to be published for opposition purposes. Upon the lapse of the opposition period, or the denial of the opposition/s filed against the application, if any, the IPOPHL, upon payment of the required fee, shall issue the certificate of registration. Upon issuance of the certificate of registration, notice thereof making reference to the publication of the application shall be published in the IPOPHL e-Gazette.

The IP Code does not provide for series marks.

There are a number of absolute grounds for refusal of the registration of a mark. A mark cannot be registered if it: 

  • 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;
  • consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, of any foreign nation, or any simulation thereof;
  • consists of a name, portrait or signature identifying a particular living individual except by their written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of their widow(er), if any, except by written consent of the widow(er);
  • is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
  • consists exclusively of signs that are generic for the goods or services that they seek to identify;
  • 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;
  • 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;
  • 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;
  • consists of colour alone, unless defined by a given form; or
  • is contrary to public order or morality.

Objections to the registration of signs or devices falling under bullet points seven to nine (1.7 Refusal of Registration) in the enumeration in the immediately preceding item may be overcome if it is shown that such sign or device has become distinctive in relation to the goods or services for which registration is sought as a result of the use that has been made of it in commerce in the Philippines. To establish that the mark has become distinctive as used in relation to the applicant’s goods or services, the applicant may submit proof of substantially exclusive and continuous use by the applicant in commerce in the Philippines for five years before the date on which the claim of distinctiveness is made.

The IPOPHL will refuse the registration of a mark if it: 

  • is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of:
    1. the same goods or services;
    2. closely related goods or services; or
    3. if it nearly resembles such a mark as to be likely to deceive or cause confusion; 
  • 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; or 
  • 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.

Any person who believes they would be damaged by the registration of a mark may oppose its application. The person, upon payment of the required filing fee and within 30 days after publication, may file an opposition to the application. Upon the filing of an opposition, the IPOPHL shall serve notice of the filing on the applicant, and the opposer and all other persons having any right, title or interest in the mark covered by the application and shall issue a summons requiring the applicant to answer the opposition.

The applicant shall file the answer, together with the sworn statements and documentary evidence, and serve a copy upon the opposer. Upon joinder of issues, the case will be referred to mediation. If the parties fail to settle the case during mediation, the preliminary conference shall be set. If the parties still fail to reach an amicable settlement during the preliminary conference, they will be required to submit their respective Position Papers and, thereafter, the matter shall be deemed submitted for resolution. 

Generally, an application may be amended to correct formalities, to overcome objections made by the Examiner, or for other reasons arising in the course of examination. However, there are certain amendments which may be carried out only under particular conditions, namely as regards the reproduction of the mark, amendments may be permitted if warranted, but not if the mark or its nature is substantially altered, or as regards the goods or services specified, amendments are allowed if the amendment is by way of addition of goods and/or services related to those originally filed and which fall under the same class, and by way of deletion.

Trade mark applications may be subject of an assignment, with or without the transfer of the goodwill of the business in which the mark is used, and in whole or in part.

An applicant may appeal the final refusal by the Examiner of an application in its entirety to the Director of Trademarks. In turn, the decision of the Director of Trademarks may be appealed to the Director-General of the IPOPHL by filing a notice of appeal and paying the required fee. Otherwise, the decision shall become final and executory within 30 days from receipt of a copy of the decision by the appellant.

The use of a mark in commerce is not a pre-requisite to the filing of an application. However, in all applications, the IP Code requires that a declaration of actual use with evidence to that effect must be filed within three years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register if registration has been issued in the meantime. The IPOPHL shall issue the registration certificate covering only the particular goods on which the mark is in actual use in the Philippines as disclosed in the declaration of actual use.

The registrant shall also file a declaration of use and evidence to that effect within one year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Register by the IPOPHL.

The IPOPHL has also issued Intellectual Property Office Memorandum Circular 17-010 requiring the submission of a Declaration of Actual Use within one year from the end of the ten year term of the registration sought to be renewed (Renewal DAU). Memorandum Circular 17-010 took effect on 1 August 2017.

The following may be accepted by the IPOPHL as proof of actual use of the mark:

  • labels of the mark as these are used;
  • downloaded pages from a website clearly showing that the goods are being sold or the services are being rendered in the Philippines;
  • photographs (including digital photographs printed on ordinary paper) of goods bearing marks as these are actually used or of the stamped or marked container of goods and of the establishment(s) where the services are being rendered;
  • brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
  • receipts or invoices of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines; and
  • copies of contracts for services showing the use of the mark.

Applications referring to a single class shall not be subdivided. The exception is when the Examiner determines that the goods or services specified fall under different classes. 

However, applications referring to several classes of goods and/or services may be divided into two or more applications by distributing the classes referred to in the initial application among the “divisional applications”. A request to divide an application must be submitted prior to the publication of the mark for opposition.

The registration of a mark is valid for ten years from the date of the issuance of the certificate of registration.

Registration is subject to renewal for periods of ten years at its expiration upon payment of the prescribed fee after filing of a request. The request may be made at any time within the six months prior to the expiration, or it may be made within six months following an expiration upon the payment of prescribed additional fees.

The request should contain the following:

  • an indication that renewal is sought;
  • the name and address of the registrant or their successor-in-interest;
  • the registration number of the mark concerned;
  • the filing date of the application which resulted in the registration concerned being renewed;
  • where the right-holder has a representative, the name and address of that representative;
  • 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;
  • a signature by the right-holder or their representative; and
  • in case there has been material variation in the manner of display, five sets of the new labels must be submitted with the application.

Trade mark registrations in this jurisdiction may be renewed indefinitely, provided that the requisite declarations of actual use are timely filed and provided further that the registered trade mark does not become the generic name for the goods or services, or a portion thereof, for which it is registered.

The Philippines acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol). As such, applications for trade mark registration may be lodged in the Philippines directly, by way of a national filing, or through the Madrid System by designating the Philippines.

Where an international registration designating the Philippines is a collective mark, a copy of the agreement governing the use of such collective mark shall be submitted directly by the holder of the international registration to the IPOPHL within two months from the date of international registration, as the international registration will not be examined unless the agreement is received by the IPOPHL.

The Examiner, upon discovery or determination of incorrect information, may require the applicant to explain such inaccuracy or to amend the application.

Where the application contains mistakes made by the applicant in good faith, the correction shall be entered accordingly upon payment of the prescribed fee.

Reproductions of design marks may be updated or refreshed by way of amendment during the examination only if warranted and if the mark or the nature of the mark is not substantially altered.

A trade mark registrant may give notice that a mark is registered by displaying the words "registered mark" or the symbol ®.

The assignment of the application for registration of trade mark, or of its registration, shall be in writing, notarised and require the signature of the applicant, registrant, or the assignee of record in case of subsequent assignment.

The parties to an assignment shall execute an assignment agreement and shall have it notarised.

The assignment of the application for registration of a mark, or of its registration, may be recorded with the IPOPHL upon submission to the IPOPHL of a request for recordation, attaching the original notarised assignment document with the appointment of a resident agent and payment of the relevant recordation fee.

Assignments of trade marks shall have no effect against third parties until they are recorded with the IPOPHL.

Trade marks are personal property that may be recorded as security for the performance of an obligation by way of a pledge or a chattel mortgage. Other security interests may be recognised in relation to trade marks, provided they are not contrary to law, morals, good customs, public order, or public policy.

There are, among others, voluntary, compulsory, exclusive and non-exclusive licences in the Philippines.

The licence contract shall be in writing. Any licence contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the mark is used; otherwise, the licence contract shall not be valid.

Further, the parties to a licence contract must ensure that their contract complies with the mandatory and prohibited clauses of the IP Code, otherwise the contract will be deemed automatically unenforceable.

The parties shall execute a license contract that is in accordance with the foregoing requirements.

The recordation of a trade mark licence agreement is not mandatory under the IP Code. The non-recordation of a licence agreement does not affect the enforceability or validity of the agreement. It should be noted, however, that while the IP Code does not require recordation of a licence agreement for it to be valid, it requires recordation of the agreement with the trade mark registry for the agreement to have effect against third parties. Even without such recordation, however, the trade mark licence agreement remains valid as between the parties thereto.

As regards the registration of a trade mark license agreement, the same, as a general rule, is not mandatory. However, it may become necessary in the following instances:

  • when a party files an application with the Documentation, Information, and Technology Transfer Bureau (DITTB) - the office in the IPOPHL which is responsible for registering technology transfer arrangements (TTA) for exemption from the prohibited and mandatory provisions; or
  • when a party requests a certification that a TTA conforms with the mandatory and prohibited provisions of the IP Code to enable the parties to avail themselves of preferential tax treatment under tax treaties.

Application for clearance of any trade mark licence agreement shall be made to the DITTB and shall be recorded only upon certification by the Director of the DITTB that the agreement does not violate Sections 87 and 88 of the IP Code.

The IP Code does not provide for a prohibition against the grant of a perpetual license.

Trade marks may be assigned with or without the transfer of the goodwill of the business in which the mark is used.

The absolute and relative grounds which an Examiner may cite to refuse the registration of a mark are the same grounds that may be raised by a third party to oppose the registration of an application.

The opposer may be granted three extensions of 30 days each within which to file its opposition counted from the date of the publication of the application for opposition, subject to filing the proper motion and the payment of filing fees for the opposition as well as the request for extension.

Any person who believes that he would be damaged by the registration of a mark may oppose its application.

The IP Code and administrative regulations do not expressly require that the parties to the opposition be represented by an attorney.

The relevant official or government fees are the opposition filing fee, which costs around USD450, and the fees for obtaining an extension of the period within which to file the opposition, which is estimated at around USD50 per extension.

The opposer, upon payment of the required filing fee and within 30 days after publication (subject to the filing of requests for extension of the opposition period), may file an opposition to the application. Upon the filing of an opposition, the IPOPHL shall serve notice of the filing on the applicant, the opposer and all other persons having any right, title or interest in the mark covered by the application, and shall issue a summons requiring the applicant to answer the opposition.

The applicant shall file the answer, together with the sworn statements and documentary evidence, and serve a copy upon the opposer. Upon joinder of issues, the case will be referred to mediation. If the parties fail to settle the case during mediation, the preliminary conference shall be set. If the parties still fail to reach an amicable settlement during the preliminary conference, they will be required to submit their respective Position Papers, and thereafter the matter shall be deemed submitted for resolution.

The aggrieved party may, within ten days from receipt of the decision or final order of the hearing/adjudication officer of the Bureau of Legal Affairs (BLA), file an appeal to the BLA Director, together with the payment of the applicable fees. The appeal shall be immediately denied if it is filed out of time and/or is not accompanied by the payment of the applicable fee. After receipt of the appeal, the BLA Director shall issue an order for the adverse party to file comment within a non-extendible period of ten days of receipt of the order. The BLA Director shall decide on the appeal within 30 days of the lapse of the period for the filing of a comment. Within 30 days of receipt of the decision by the BLA Director, a party may file an appeal to the Director-General of the IPOPHL.

The decision of the Director-General may be elevated to the Court of Appeals and, thereafter, to the Supreme Court.

An infringement action, which may be either administrative, civil or criminal in nature, may be brought in this jurisdiction only on the basis of a registered mark.

For civil cases, proceedings are commenced by the filing of the complaint with the regional trial courts and the service of summons on the defendant. For criminal cases, the complaint shall be filed with the Department of Justice or the office of the prosecutor that has jurisdiction over the offence charged. For administrative cases, the enforcement action of the IPOPHL can be initiated by a report or through the filing of a verified compliant with the IPOPHL.

The courts generally accord great respect, if not finality, to factual findings of administrative agencies such as the IPOPHL due to their special knowledge and expertise over matters falling under their jurisdiction.

A declaratory judgment is not available to an infringer. At most, the infringer can file a declaratory relief petition if they can show that their rights will be affected by a statute, executive order or regulation, ordinance or any other governmental regulation.

The Regional Trial Courts designated by the Supreme Court as Special Commercial Courts shall have jurisdiction to hear infringement cases which are civil or criminal in nature. Administrative proceedings involving violations of intellectual property rights, such as an infringement action, may likewise be filed before the BLA.

Service of a demand letter or participation in mediation proceedings is not a pre-requisite to the institution of an infringement action. However, in certain instances, such as where the parties reside in the same or an adjacent locality, they may be required to undergo conciliation proceedings prior to the institution of a civil action.

An infringement action shall be brought on the basis only of a registered mark.

If the action is civil or criminal in nature, the parties should be represented by their respective lawyers. If the action is administrative in nature, this may be prosecuted by the complainant themselves or through counsel.

A preliminary injunction may be granted when it is established:

  • that 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 or acts complained of, or in requiring the performance of an act or acts, either for a limited period or perpetually;
  • that the commission, continuance or non-performance of the act or acts complained of during the litigation would probably work unfavourably against the applicant; or
  • that a party or any person is doing, threatening or attempting to do, or is procuring or suffering to be done, some act or acts probably in violation of the rights of the applicant regarding the subject to the action or proceeding and tending to render the judgment ineffectual.

If, after trial, it appears that the applicant is entitled to have the act or acts complained of permanently enjoined, a final injunction perpetually restraining the party or person enjoined from further commission of the act or acts or confirming the preliminary mandatory injunction may be granted.

The trade mark owner is required to post a bond for a preliminary injunction to be issued. The defendant may cause the lifting of the preliminary injunction by posting a counter-bond.

A subpoena duces tecum may be issued to compel the production of any book, paper, document, correspondence or other records which are material to the case. The subpoena may be quashed if it is unreasonable or the relevance of the books, papers, documents, correspondence and other records does not appear, or if the persons on whose behalf the subpoena is issued fail to advance the reasonable cost of the production.

The initial pleadings should contain the relevant information concerning the parties involved, the factual allegations constituting the infringement, the relief desired and the date of the initial pleading.

The allegations should be a statement of ultimate facts upon which the trade mark-owner relies for their claims. The details of the trade mark registration or ownership should thus be included, with the trade mark registration preferably attached. Acts showing that an infringement has been committed should also be demonstrated. The trade mark-owner’s capacity to sue must also be alleged. Any statements involving evidentiary facts are omitted.

The initial pleading should also contain a verification and certification of non-forum shopping.

Additional claims or modifications to the initial pleading may be done through the filing of an amended or supplemental pleading.

A defendant in a trade mark action can initiate a lawsuit in response, such as a claim for damages against the wrongful filing of the complaint or the cancellation of the trade mark-owner’s registration.

Class actions may be brought in instances where the subject matter of the controversy is one of common or general interest to many persons so numerous that it is impracticable to join all as parties. A number of them which the court finds to be sufficiently numerous and representative as to fully protect the interests of all concerned may sue or defend for the benefit of all. Any party in interest shall have the right to intervene to protect their individual interest.

There is no express provision under the IP Code providing for, or prohibiting, the institution of a class action in relation to trade mark proceedings.

Under the civil law concept of abuse of right, the wrongful filing of lawsuits can expose the trade mark-owner to the payment of damages to the defendant.

The necessary parties to an infringement action would be the owner of a registered mark, who shall have the exclusive right to sue for infringement, and the alleged infringer.

An action for infringement initiated by a licensee must be made in the name of the trade mark owner.

The use of a colourable imitation of a registered mark, the same container, or a dominant feature thereof, may be taken into consideration in determining whether infringement has been committed.

The elements of trade mark infringement are as follows:

  • the trade mark being infringed is registered in the IPO;
  • the trade mark is reproduced, counterfeited, copied, or colourably imitated by the infringer;
  • the infringing mark is used in connection with the sale, offering for sale, or advertising of any goods, business or services; or the infringing mark or trade name is applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services;
  • the use or application of the infringing mark is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and
  • the use or application of the infringing mark is without the consent of the trade mark or the assignee.

The following grounds may be raised:

  • use in good faith;
  • an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer; or
  • the infringement is contained in or is part of paid advertisement in a newspaper, magazine or other similar periodical, or in an electronic communication.

However, a registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of their business or enterprise. Nevertheless, their right may only be transferred or assigned together with their enterprise or business or with that part of their enterprise or business in which the mark is used.

The following grounds may also be raised: prescription; and lack of notice on the basis that the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed in the knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive.

The court is not bound to adopt the findings of, or resulting from, experts or surveys.

For criminal cases, the complaint shall be filed with the Department of Justice or the office of the prosecutor that has jurisdiction over the offence charged. The information shall then be filed with the court. The judge may immediately dismiss the case if the evidence on record clearly fails to establish probable cause. If they find probable cause, they shall issue a warrant of arrest, or a commitment order if the accused has already been arrested. Arraignment shall then be conducted. Before conducting the trial, the court shall call the parties to a pre-trial. During the pre-trial, a stipulation of facts may be entered into, or the propriety of allowing the accused to enter a plea of guilty to a lesser offence may be considered, or such other matters as may be taken to clarify the issues and to ensure a speedy disposition of the case.

For administrative cases, proceedings commence with the filing of the verified complaint shall be filed with the BLA and the service of summons on the respondent. Upon receipt of the summons, the respondent shall file an answer, setting out the respondent’s affirmative and/or negative defences including any compulsory counterclaims and cross-claims. Following the joinder of issues, the pre-trial conference shall be set by the Hearing Officer, and the parties shall submit their pre-trial briefs, with the hearing proper to commence thereafter.

The Bureau of Customs keeps registry books for patents, trademarks and copyrights. The Customs Examiners conduct actual examinations of the suspected cargo or shipment and immediately submit a recommendation to the Commissioner of Customs for the issuance of a Warrant of Seizure and Detention against such cargo or shipment. Goods finally found in seizure proceedings to be counterfeit or infringing are forfeited in favour of the government and destroyed, unless the same are used as evidence in court proceedings.

Under the relevant regulations, examination must be conducted within 24 hours of receipt of the notice of the alert or hold order. Upon a prima facie finding that the goods are infringing, the matter will be referred within 24 hours to the Collector of Customs for Seizure Proceedings.

A petition for the cancellation of a trade mark registration may be filed if, among others:

  • the registered mark becomes the generic name for the goods or services;
  • the registered mark has been abandoned;
  • its registration was obtained fraudulently or contrary to the provisions of the IP Code;
  • the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or
  • the registered owner of the mark, without legitimate reason, fails to use the mark within the Philippines.

A petition for cancellation may also be filed by the owner of a well-known mark that is not registered in the Philippines against an identical or confusingly similar mark.

A petition to cancel the registration of a mark under the IP Code may be filed with the Bureau of Legal Affairs.

A petition for cancellation of the registration of a mark may be filed:

  • within five years from the date of registration of the mark;
  • at any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of the Intellectual Property Code, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used; or
  • at any time, if the registered owner of the mark fails, without legitimate reason, to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a licence during an uninterrupted period of at least three years.

A petition to cancel the registration of a mark may be filed by any person who believes that they are or will be damaged by the registration of a mark.

Partial cancellation of a registration is possible where a mark has become generic only with regard to specific goods or services covered by its registration, in which case the petition for cancellation should concern only those specific goods or services.

Cancellation proceedings may result in the amendment of the registration of a mark where, for instance, such amendment has been agreed upon by the parties and approved by the IPOPHL.

Cancellation proceedings and infringement proceedings involve different causes of action, rules of procedure, tribunals, and timelines, among others, and thus, should not be heard together.

It is noted, however, that in any action involving a registered mark, the court may determine the right to registration, order the cancellation of a registration in whole or in part, and otherwise rectify the register with respect to the registration of any party. In an administrative case for violation of laws involving intellectual property rights, including infringement of mark, the Director of the Bureau of Legal Affairs may impose the cancellation of any registration granted by the Intellectual Property Office, or the suspension of the validity thereof for a period of time not to exceed one year.

There are a number of issuances from the IPOPHL providing for the rules of procedure which govern proceedings concerning trade marks, as follows:

  • the Regulations on Inter Partes Proceedings (effective 5 October 1998, amended), primarily governing trade mark cancellation and trade mark opposition proceedings;
  • the Rules and Regulations on Administrative Complaints for Violations of Laws involving Intellectual Property Rights (effective 2 December 1998, as amended), primarily governing administrative complaints filed with the IPOPHL’s Bureau of Legal Affairs (BLA, for brevity) involving trade mark infringement, unfair competition, and other trade mark-related offences under the Intellectual Property Code; and
  • IPOPHL’s Uniform Rules on Appeal (effective 15 March 2002), governing all appellate proceedings for IP-related complaints/cases filed with the IPOPHL and involving appellate proceedings within the IPOPHL’s structure (eg, appeals to the IPOPHL’s Office of the Director General of the decision of the IPOPHL’s BLA Director).

The proceedings in regular courts are governed by the Rules of Procedure for Intellectual Property Rights Cases issued by the Supreme Court.

Administrative actions are resolved by the designated adjudication officer of the BLA. Civil and criminal actions are resolved by judges.

All inter partes cases (eg, trade mark cancellation, trade mark opposition), administrative complaints for violations of laws involving intellectual property rights (eg, administrative complaints for trade mark infringement, unfair competition, and false designation of origin, etc), and all appellate proceedings with the IPOPHL of the foregoing cases are required to undergo mandatory mediation proceedings as provided under the IPOPHL’s Rules of Procedure for IPO Mediation Proceedings.

The earlier filing of a petition to cancel the mark with the BLA shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided.

The following reliefs, among others, are available:

  • injunction;
  • condemnation or seizure of products which are the subject of the offence;
  • forfeiture of infringing paraphernalia;
  • imposition of fines;
  • award of damages; and
  • other analogous penalties or sanctions.

On the application for trade mark infringement of the individual, the court may impound during the pendency of the action, sales invoices and other documents evidencing sales. This allows an intellectual property holder, or their duly authorised representative in a pending civil action or who intends to commence such an action, to apply ex parte for the issuance of a writ of search and seizure from Regional Trial Courts in order to allow the search, inspection, photocopying, photographing, audio and audio-visual recording or seizure of any document or article specified in the order.

The prevailing defendant may seek the recovery of costs. Such claimant must produce competent proof or the best evidence obtainable, such as receipts to justify the award thereof. Actual or compensatory damages cannot be presumed but must be proved with reasonable certainty.

The remedies are the same for proceedings involving trade marks and service marks.

Appeals stemming from administrative actions for violations of intellectual property rights are governed primarily by the IPOPHL’s Uniform Rules on Appeal, while appeals stemming from the institution of civil and criminal actions are governed by the Rules of Court.

The appeal may be filed on the basis of both factual and legal issues.

The resolution of an appeal from a decision of the Regional Trial Court to the Court of Appeals, and then to the Supreme Court, may take around eight to ten years.

Jurisprudence recognises the concept of trademark dilution as the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties, or likelihood of confusion, mistake or deception, and affirms that trade mark owners are entitled to protection against trade mark dilution.

Well-known marks may be entitled to protection under the IP Code, notwithstanding that they are not used or, in certain instances, registered, in this jurisdiction. Thus, the IP Code prohibits the registration of a mark where it 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, or is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known and 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.

The IP Code prohibits the registration of a mark which is likely to mislead the public including as regards the geographical origin of the goods or services, or consists exclusively of signs or indications that may serve in trade to designate, among others, geographical origin of the goods or services.

Further, the IP Code provides that the registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services. However, use must be confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.

There are no special rules regarding certification marks in this jurisdiction.

As mentioned above, the IP Code provides that the registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names or pseudonyms. However, use must be confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.

The costs for preparing demand letters or similar communications ranges from USD500 to USD600, while the costs for the conduct of investigations to determine the general reputation of parties, their business interests, and use of the mark may be pegged at approximately USD2,000.

An infringement action may entail docket and other filing fees, which should not be substantial except when the complaint for infringement includes a claim for damages.

The Civil Code of the Philippines provides in Article 2208, that in the absence of stipulation, attorney’s fees and expenses of litigation, other than judicial costs, cannot be recovered, except:

  • when exemplary damages are awarded;
  • when the defendant’s act or omission has compelled the plaintiff to litigate with third persons or to incur expenses to protect their interest;
  • in criminal cases of malicious prosecution against the plaintiff;
  • in case of a clearly unfounded civil action or proceeding against the plaintiff;
  • where the defendant acted in gross and evident bad faith in refusing to satisfy the plaintiff’s plainly valid, just and demandable claim;
  • in actions for legal support;
  • in actions for the recovery of wages of household helpers, labourers and skilled workers;
  • in actions for indemnity under worker's compensation and employer’s liability laws;
  • in a separate civil action to recover civil liability arising from a crime;
  • when at least double judicial costs are awarded; and
  • in any other case where the court deems it just and equitable that attorney’s fees and expenses of litigation should be recovered.

In all cases, the attorney’s fees and expenses of litigation must be reasonable.

All inter partes cases (eg, trade mark cancellation, trade mark opposition), administrative complaints for violations of laws involving intellectual property rights (eg, administrative complaints for trade mark infringement, unfair competition, and false designation of origin, etc), and all appellate proceedings with the IPOPHL of the foregoing cases are required to undergo mandatory mediation proceedings as provided under the IPOPHL’s Rules of Procedure for IPO Mediation Proceedings.

Trade marks, being “source identifiers”, ie, intended to identify and distinguish the goods or services of an entity from the goods or services of other entities, are more appropriately protected under trade mark laws, rather than copyright.

SyCip Salazar Hernandez & Gatmaitan

SyCipLaw Center
105 Paseo de Roxas
Makati City 1226
Metro Manila
Philippines

+632 8 982 3500

+632 8 817 3145

www.syciplaw.com
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Law and Practice in Philippines

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SyCip Salazar Hernandez & Gatmaitan was established in 1945 and is one of the largest full-service law firms in the country, based in Makati City with offices in Cebu, Davao and the Subic Bay Freeport. SyCipLaw’s IP practice is the largest in the country in terms of client base and range of services offered. These include basic rights protection, such as trade mark, copyright, patent and product registration. The firm has expertise in licensing, technology transfers and similarly focused business transactions. The firm assists clients in navigating the legal issues and concerns that have arisen with developments in science and technology, e-commerce and internet-based transactions law, providing responsive and creative support.