Procedure of Trademark Application in the Philippines: Guide to protect IP In the Philippines

In the vibrant and rapidly growing economy of the Philippines, protecting your brand through trademark registration is a crucial step for businesses of all sizes. The trademark application procedure in the Philippines, overseen by the Intellectual Property Office of the Philippines (IPOPHL), is a structured process that requires careful navigation and attention to detail.

This article aims to provide a comprehensive guide to the trademark application procedure in the Philippines, offering valuable insights for both local entrepreneurs and international companies seeking to secure their brand rights in this dynamic Southeast Asian market.

In the Philippines, the process of trademark registration is governed by the Intellectual Property Office of the Philippines (IPOPHL). This article outlines the comprehensive procedure for registering a trademark in the Philippines, including multiple-class applications, filing requirements, and other critical aspects.

What is a trademark in the Philippines?

A trademark is a word, a group of words, a sign, a symbol, a logo, or a combination thereof that identifies and differentiates the source of the goods or services of one entity from those of others.

First-to-File Principle of Philippines Trademark

Multiple-Class Applications

In the Philippines, applicants can file multiple-class trademark applications. This means that a single application can cover various classes of goods or services, simplifying the registration process and reducing administrative burdens for businesses seeking protection for a diverse range of products or services.

Minimum Filing Requirements in the Philippines

To obtain a filing date for a trademark application in the Philippines, the following minimum requirements must be met:

1. Request to Register a Trademark: A formal request to register the trademark.
2. Applicant’s Details and Contact Information: The full name, address, and contact details of the applicant.
3. Representation of the Trademark: A clear depiction of the trademark to be registered.
4. List of Goods/Services: A detailed list of goods or services for which the trademark registration is sought.
5. Priority Data (if any): Information regarding any priority claim based on earlier filings in other jurisdictions.

An original signed Power of Attorney must be submitted to the Philippine IP Office within 60 days from the date of the corresponding notice. This document authorizes a representative to act on behalf of the applicant in the trademark registration process.

Priority Document

If an application claims conventional priority, it must be filed within six months from the priority date. An English translation of a certified copy of the priority document can be submitted within six months from the mailing date of the Philippine IP Office examiner’s letter requiring such submission.

Opposition Period

The opposition period for trademark applications in the Philippines is 30 days from the publication of the application. During this time, third parties can file an opposition to the registration of the trademark.

Grant, Validity Term, and Trademark Renewal

Once the Notice of Allowance is issued, grant fees must be paid within two months from the mailing date of the notice. Trademark registration in the Philippines is valid for ten years from the registration date. Besides, renewal requests should be filed within six months before the expiration of the registration or within a six-month grace period after the expiration date, provided that a surcharge is paid.

Use Requirement

Applicants must file a Declaration of Actual Use (DAU) stating that the trademark is being used in the Philippines for the specified goods and services. The DAU must be filed:

1. Within three years from the filing date of the application.
2. Within one year from the fifth anniversary of the registration.
3. Within one year from the date of renewal.
4. Within one year from the fifth anniversary of each renewal.

Moreover, a six-month extension for filing the third-year DAU can be requested before the expiration of the three years, subject to the payment of prescribed fees. A trademark can be canceled if there is unjustified non-use for three consecutive years.

International Trademark Registration designating the Philippines

Foreign applicants can register a trademark in the Philippines by filing an international application with the International Bureau of the World Intellectual Property Organization (WIPO) under the Madrid Agreement the Madrid Protocol, or both. The IPVN, if accepting the international application, issues a decision on acceptance for trademark protection in the Philippines and publishes it in the Industrial Property Official Gazette.

Representation by a Trademark Attorney

Foreign applicants are required to perform trademark registration through an agent, a registered Philippine trademark attorney. This ensures compliance with local regulations and smooth handling of the registration process.

Additional Notes

1. Online Search Databases: Applicants can use databases such as Philippine Trademarks and ASEAN TMview to search for existing trademarks and assess the availability of their proposed mark.
2. Provisional Refusal: The time limit to respond to a provisional refusal of an international registration in the Philippines is two months from the date WIPO has been notified. Applicants can apply for an extension and must appoint a local representative to file the response in English. There is no option to request a revision or file an appeal against the provisional refusal.

Registering a trademark in the Philippines involves a structured process with specific requirements and timelines. By understanding and adhering to these procedures, businesses can effectively protect their trademarks and secure their brand identity in the Philippine market. Engaging a registered Philippine trademark attorney can provide valuable assistance in navigating the complexities of trademark registration and ensuring compliance with all legal requirements.

*** After more than 10 years of operation, ASL has been ranked as the top-tier IP Firm for years by Legal500, AsiaLaw, and WTR. We have been well known for OneTouch of IP protection in more than 27 countries with Budget savings from 15-35%. The more clients file trademark, patent, and industrial designs through ASL, the more savings our clients receive.