Global Trademark GO - Philippines - Introduction to Philippine Trademark Application

The Philippines, known as the "Pearl of the Western Pacific", is not only a paradise for tourists, but also a treasure land for investors. The Philippine trademark system began on June 20, 1947. The system originated from the United States. The American trademark system has a profound impact on the Philippines. The ownership of trademark rights adopts the principle of first use, as well as regulations on maintaining the validity of trademarks through use, etc. The current Trademark Law came into effect on January 1, 1998. The Philippines is a party to international intellectual property treaties such as the Paris Convention and the WIPO Convention. After July 25, 2012, the Philippines also became a member of the Madrid Protocol. In the Philippines, you can apply for a single trademark in multiple categories.

1. Trademark authority

• Intellectual Property Office of the Philippines (IPOPHL)
• English: Name of the Office: Canadian Intellectual Property Office (CIPO)
• Website: Trademark | IPOPHL (ipophil.gov.ph)
• Trademark Search: Global Brand Database (wipo.int)

2. How to apply for trademark registration

• electronic submission

3. Trademark registration application language

• English

4. Documents required for trademark registration application

• Applicant information and contact information;
• Trademark pattern;
• List of goods or services for which protection is sought;
• Priority document, if any.
• The original signed power of attorney should be submitted to the Philippine Intellectual Property Office within 60 days after the issuance of the corresponding notification.
• A trademark application claiming Convention priority must be submitted within 6 months from the priority date. The translation should be submitted within 6 months after the Philippine Intellectual Property Office issues the English translation of the original copy of the priority document requested.

5. Philippines trademark registration application process

• Submit an application for trademark registration acceptance and review to the Philippine Trademark Office. After the application is submitted, the submitted application documents, trademark drawings, power of attorney and other documents will be reviewed for legality; if the regulations are met, the application date and application number will be awarded. After the Philippine Trademark Office has reviewed and found no objection, it will enter the stage of determining the trademark registration application. Examine whether the trademark is registrable according to the law, whether it is identical or similar to a previously registered trademark, and whether it violates the prohibition provisions of the trademark law. For a trademark that fails substantive examination, the examining officer will notify the applicant in writing and inform the applicant of the reasons for rejection. The applicant may submit a reexamination within the time limit from the date of receipt of the rejection notice. Otherwise, the application will be deemed abandoned, and the application date and application number will not be retained.

6. Documents required for trademark change

• The transfer certificate shall be notarized and signed by the applicant, registrant or subsequent transferee. A transfer by merger or other form of succession may be evidenced by a deed of merger or any document supporting such transfer.

7. Trademark cancellation

• If the trademark is not used for 3 consecutive years, it may be revoked.

8. Trademark objections

• Within 30 days from the date of trademark announcement, any interested party may raise an objection to the announced trademark.

9. Authorization, validity period and trademark renewal

• The authorization fee should be paid within 2 days after the approval notice is issued. The validity period of a Philippine trademark is 10 years from the date of application. Application for trademark renewal should be submitted within 6 months before the validity period expires. It can also be submitted during the subsequent 6-month grace period, subject to additional fees.

10. Requirements for trademark use

• Submit DAU within 3 years from the date of trademark application;
• Submit a DAU within one year after 5 years of trademark registration or 5 years after trademark renewal; and
• File a DAU within one year from the date of renewal (this requirement applies to all trademarks requiring renewal from January 1, 2017, regardless of the filing date of the renewal request).
• In the case of filing a DAU within 3 years from the date of trademark application, the trademark applicant may request a 6-month extension to submit the DAU, but the prerequisite is that the trademark applicant should file the application and pay the relevant fees within 3 years from the date of trademark application.
• Regarding trademark usage requirements, the Philippines has stricter usage regulations than the United States. First, within three years from the date of application, the official requires the submission of a notarized statement of use, supplemented by evidence of use, and also requires information on the goods on which the trademark is used and the local dealer in the Philippines, including its name and address. Evidence of use can be commercial invoices, contracts, bills of lading, advertising materials, product packaging or physical pictures, etc. Secondly, five to six years after trademark registration, the trademark owner is required to submit a notarized statement of use again, providing relevant information similar to the statement of use submitted within three years of the filing date. After successful renewal of a trademark, a declaration of use is also required during the tenth and eleventh years of registration.
• All declarations of use must be submitted before the deadline and no extension is allowed. If not submitted by the deadline, the trademark application or registration will be deemed abandoned and cannot be revived.

11. Average time for trademark authorization

• Based on the 2019 Trademark Law, if the trademark registration is successful, the average time for trademark registration in the Philippines is 3.4 months.