As brand identification moves beyond traditional realms and into ever more interesting spheres of influence, staying abreast of trends and changes to law in the Asian region is imperative
The Philippines adheres to a first-to-file policy in trademark protection. The trademark registrant is presumed to be the owner of the mark and has the exclusive right to prevent all third parties not having their consent from using, in the course of trade, identical or similar signs or containers for goods or services that are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion. Consequently, an unregistered mark is, in general, subject to appropriation by any third party who is able to successfully obtain a trademark registration covering the mark.
Local laws and regulations – particularly Republic Act (RA) No. 8293 of The Intellectual Property Code of the Philippines, which took effect on 1 January 1998, and was amended by RA No. 10372 in 2013, as well as its implementing rules and regulations and other issuances of the Intellectual Property Office of the Philippines (IPOPHL) – generally provide the basis for the protection and enforcement of trademarks and other IP rights.
The IP code and the relevant regulations also incorporate and reinforce the Philippines’ commitments under various international treaties and agreements, such as the Paris Convention for the Protection of Industrial Property, the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, and the General Agreement on Tariffs and Trade (GATT) Uruguay Round, particularly the Agreement on the Trade Related Aspects of Intellectual Property Rights (TRIPS agreement).
The rights to a mark, which includes trademarks and service marks, are acquired through registration by the true owner of a mark. Priority is given to the party that first applies for registration. There is a single procedure for both foreign and local applicants for the registration of marks. It is important to note, however, that an applicant is also required to file a declaration of actual use of the mark in Philippine commerce within three years from filing of the application to complete an application.
An application to register a mark may be filed by a natural person (individual) or a juridical person (corporation, partnership or association). Non-resident applicants are required to appoint an agent residing in the Philippines upon whom notices and processes may be served.
An effective filing date is accorded an application on the date the IPOPHL receives the following:
- An express or implicit indication that registration of a mark is sought;
- The identity as well as nationality/state of incorporation and complete address of the applicant;
- Indication sufficient to contact the applicant or representative, if any;
- A reproduction of the mark;
- The list of goods or services for which registration is sought; and
- The appropriate filing fee.
After filing, the trademark application is examined by an IPOPHL trademark examiner. If the examiner finds that the mark should not be registered for any reason, an official action paper will be issued stating the reasons why the application cannot be registered, and directing the applicant to argue against the objection or comply with additional requirements. The applicant has two months from the mailing date of the action paper (subject to an extension of two months) to file a response.
Once the objections are overcome, the trademark application will be allowed and published for purposes of opposition in the IPO Electronic Gazette. Any person who believes that they would be damaged by the registration of a mark may file an opposition to the application within 30 days from the date of publication, subject to three consecutive extensions of 30 days each.
If no opposition is filed, the application will be allowed for issuance of a certificate of registration, and the certificate of registration will then be issued by the IPOPHL. The entire registration process (without any opposition by a third party) usually takes six to 12 months.
The Philippines, having acceded to the Madrid Protocol, may be designated in an international registration originating from another member state. An international registration designating the Philippines shall have the same effect, from the date of the international registration, as if an application for the registration of a mark had been filed directly with the IPOPHL.
In order to ensure that the mark is available for use or registration, a full trademark availability search is always recommended. Once the proposed mark and the covered goods or services are known, a search of the IPOPHL internal and external online databases may be conducted. The results may be reported within three to five days.
The owner of a registered mark is presumed to have the exclusive right to use the mark and to prevent all third parties not having their consent from using, in the course of trade, identical or similar signs or containers for goods or services that are identical or similar to those in respect of which the trademark is registered, where such use would result in a likelihood of confusion.
The act of infringement covers a broad range of activities, including acts preparatory to the sale of goods or rendering of services, and is not limited to the substitution or fraudulent use of a mark or name. The law explicitly provides that liability attaches to the offender regardless of whether or not the sale of the goods or rendering of the services took place.
In determining what constitutes colourable imitation, Philippine law adopts the dominancy test, which provides that any person who uses in commerce any colourable imitation of a registered mark or a dominant feature of it shall be liable for damages by reason of the infringement of the registered mark.
There was no specific law dealing with trademark squatters. If the mark is filed or registered with the IPOPHL by a trademark squatter, an opposition or cancellation action may be filed by the true owner. Criminal, civil and administrative actions for trademark infringement, unfair competition and other IP violations under the IP code may also arguably be instituted against such trademark squatters. Moreover, a civil action based on the abuse of rights provisions of RA No. 386 or The Civil Code of the Philippines may be filed.
Recently, RA No. 10175 or The Cybercrime Prevention Act of 2012 criminalized cyber-squatting or the acquisition of a domain name over the internet in bad faith to profit, mislead, destroy reputation, and deprive others from registering the same. Under the law, trademark squatters may be imprisoned for six to 12 years, or may be made to pay a fine of PHP200,000 (US$4,000) up to a maximum amount commensurate to the damage incurred, or both imprisonment and a fine.
Under the IP code, a person who has identified in the mind of the public the goods they manufacture or deal in, their own business, or services, from those of others, whether or not a registered mark is used, has a property right in the goodwill of the said goods, business, or services so identified, which may be protected in the same manner as other property rights.
“Unfair competition” is committed by any person who employs deception or any other means contrary to good faith to pass off their own manufactured or distributed goods, business or services for those of the one having established such goodwill, or who commit any acts calculated to produce the same result. Generally, the elements that have to be established to succeed in a claim for unfair competition or passing off are:
- Reputation attached to the goods or services;
- Misrepresentation to the public leading, or likely to lead, the public to believe that the goods offered by one are the goods of the owner entitled to protection; and
- Damage or the likelihood of damage suffered by reason of the erroneous belief.
Trademark registration is not required in an unfair competition action.
Criminal, civil and administrative actions may be instituted by the aggrieved parties to protect their trademark rights from infringement by third parties. Such actions are distinct from each other and may be instituted simultaneously. As a matter of practice, however, when both criminal and civil proceedings are initiated at the same time, the civil proceedings will be suspended pending a determination of the outcome of the criminal proceedings. The court hearing the civil case may consider itself bound by the findings of the court hearing the criminal case. On the other hand, the administrative case may proceed independently of either the criminal or civil proceedings.