PHILIPPINES

• Kinds of Trademarks registrable in PHILIPPINES

  • Following indications may be used as Trademarks in Philippines

    • Single word, Group of words
    • Signs • Symbols
    • Logo marks
    • 3 Dimensional marks
    • Combination of any of the above

    Types of Marks registrable:

    1. Collective marks
    2. Certification marks
    3. Marks for non-commercial purposes
    4. Service marks
    5. Well Known marks
• Requisites for a Trademark to be registrable in PHILIPPINES

  • Trademarks must contain the following essential requirements to be registrable in Philippines:

    • Distinctiveness
    • Non-descriptiveness of the goods and / or services
    • Not be a well known term in the line of business, trade channels of the applicant
    • Not be same / similar / identical either visually and/or phonetically to prior registered / pending marks.
    • A mark used or intended to be used by the applicant in relation to the goods and services dealt with should be able to distinguish applicant’s marks from those of the others.
• Kinds of Trademarks not registrable in PHILIPPINES

  • Applicants should bear in mind that the following will not be registrable as Trademarks in Philippines:

    1. Descriptive marks
    2. Misleading marks as to the nature, quality, characteristics or geographical origin of the goods.
    3. Generic & Customary to the trade.
    4. Contrary to public order or morality.
    5. Marks or signs consisting of names, portraits of persons.
    6. Maps, Flags. Insignia, Stamps, Seals, Crests, Armorial Bearings, Icons and other political signs and symbols of national and international organization, associations and institutions such as the Red Cross, The Olympic Association etc.
    7. Shapes that are not distinctive.
    8. Colour alone unless it is defined by a given form.
    9. Marks that could be identical or similar to prior registered marks.
    10. Marks containing scandalous & disparaging matter.
    11. Marks constituting translation of well know marks.

    TrademarkCopia through its associate Law Firms and Lawyers in Philippines is at hand to help you with trademark registration and prosecution.

• Trademark Search in PHILIPPINES

  • It is highly advisable to conduct a search of the proposed mark to ensure that a similar mark has not been applied for by other contenders and is not pending registration or is already registered.

    A search is useful in determining the following:

    1. Conflict with existing trademarks.
    2. Confirm validity of the proposed trademark.
    3. Evaluate the filing of the application and assess the risk of nullity and 3rd party claims.
    4. Strategise on the kind of mark to file regarding the denominations such as figurative, coloured, black & white etc.
    5.  Search is a useful tool prior to filing of applications since search concerning prior pending marks carried out by the Bahrain Trademark Office.

    Our Attorneys are at hand to assist you with searches and provide opinions about registrarbility of the proposed / coined trademark in Philippines.

• Trademark Filing in PHILIPPINES

  • Filing is done with the Trademark office of Philippines. Applicant has to furnish the following documentation for filing:

    1. Name of the applicant
    2. Logo (if any) in B/W or Colour
    3. Address along with nationality of the Applicant
    4. Classes in which Registration is sought.
    5. Power of Attorney
    6. Priority details if any.
    7. Details regarding Goods and Services for which registration sought
       (Goods and Services classified as per NICE classification)
       (Philippines is not member of NICE Agreement, Though Follow NICE Agreement)

    TRADEMARKCOPIA.COM Attorneys will assist you with:

    • Filings
    • Infringement & Opposition Actions
    • Renewals
    • License and Assignment procedures
    • Trademark Watch Services
• Trademark Examination in PHILIPPINES

  • Once the applications are lodged with the trademark office, they are examined for registrability regarding the complete requirements for grant of filing date

    After examination, if the applicant is found not entitled for registration, he shall be notified accordingly by the examiner.

    The applicant will be advised of the reasons thereof and also will be notified about the formal requirements or objections.

    The applicant will also be given such information, referrals and assistance as maybe helpful to him in the further prosecution of the application.

• Trademark Publication & Opposition in PHILIPPINES

  • After examination or re-examination of an application, if the examiner decides that the application is entitled to registration, the mark will be published in the Intellectual Property Office gazette for opposition and the applicant will be notified of the same.

    The applicant then within 2 months from such date of notice will have to pay the corresponding fee for the publication of the application in the gazette otherwise, the application is liable to be declared abandoned.

    Disclaimers:

    The following portions of a mark, when forming part of the composite mark must be disclaimed to permit registration:

    1. A generic term
    2. Descriptive matter in the composite mark
    3. Such matter which does not function as a service mark or a trademark.

    Applicant has 2 months to respond to any / all actions of the examiner from the mailing date.

    Opposition:

    Where there is no opposition after publication of the mark within 30 days, the mark shall be deemed registered the day after the expiry of the aforesaid 30 days, or if the application is found deficient in any of the formality requirements, the trademark will be registered on the date the applicant complies fully with the requirements.

    TrademarkCopia through its experienced Trademark Lawyers and Trademark Attorneys in Philippines can comprehensively assist you with trademark opposition and prosecution.

• Trademark Registration in PHILIPPINES

  • Once the trademark applications fulfills all the necessary compliances, it proceeds for registration and certificate of registration is issued.

    The issuance of the certificate of registration shall be published in the IPO gazette and shall be entered in the records of the office.

    Trademark registration in Philippines is valid for 10 years from the date of filing after which it can be frequently renewed for another 10 years.

    Rights of Trademark Owners:

    Trademarks may be:

    1. Transferred in whole or in part.
    2. Inherited – Assigned and licensed.
    3. Mortgaged and creditors may seize such trademarks belonging to their debtors.
    4. Licensed to natural or legal persons
    5. Prevented from unauthorized usage by third parties
    6. The subject of appropriate redressal from a court of law upon infringement
• Trademark Usage in PHILIPPINES

  • Pre – Registration:

    Before filing of the application for registration, there is no advantage as rights are acquired only through registration and Philippines uses the first – to – file rule.

    Post – Registration:

    The mark has to be continuously used within 3 yrs. post registration, otherwise it could lead to the mark being cancelled.

    The applicant is also required to file a declaration of actual use (DAU) form with the evidence to that effect within 3 yrs. from the filing date of the application. Otherwise, the application is liable to be refused or the mark removed from the register.

    Though the registration lasts for 10 yrs., the applicant must also file an affidavit of use of show valid reasons based on the existence of obstacles to such use, within one year from the 5th anniversary of the registration of the mark, otherwise the mark is liable to be removed.

    Non –use of a mark may be excused in exceptional cases only.

• Trademark Cost of Registration in PHILIPPINES

  • Please write mail for the cost of registration of trademark in Philippines to the mail address given below:

    contact@trademarkcopia.com