In the Philippines, the rights to a mark are acquired through registration under the IP Code. Nevertheless, the owner of an unregistered trademark can file an action for unfair competition with reference to the passing off of the goods or business of one party as the goods or business of another with the intention of deceiving the public.
The main laws governing intellectual property in the Philippines are:
- the IP Code (RA 8293/1998, as amended by RA 9150, 10372 and 9502);
- the Plant Variety Protection Act (RA 9168/2002); and
- the Technology Transfer Act (RA 10055/2009).
The Philippines is also a signatory to several treaties, including:
- the Paris Convention for the Protection of Industrial Property;
- the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs);
- the Berne Convention for the Protection of Literary and Artistic Works;
- the Convention for the Protection of Producers of Phonograms Against Unauthorised Duplication of Their Phonograms;
- the Convention Establishing the World Intellectual Property Organisation (WIPO);
- the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Procedure;
- the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations;
- the Patent Cooperation Treaty;
- the WIPO Performances and Phonograms Treaty;
- the WIPO Copyright Treaty; and
- the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.
In the Philippines, the rights to a mark are acquired through registration under the IP Code. Nevertheless, the owner of an unregistered trademark can file an action for unfair competition with reference to the passing off of the goods or business of one party as the goods or business of another with the intention of deceiving the public. Moreover, owners of internationally well-known marks, whether or not registered in the Philippines, enjoy trademark protection under Article 6 of the Paris Convention and Article 16 of TRIPs. Philippine jurisprudence includes many cases upholding the rights of owners of well-known marks – for example:
- Ecole De Cuisine v Renaud Cointreu, GR 185830, 2013 (“only the owner of a mark has the right to register the mark, and a prior user of the mark in the Philippines is not necessarily the owner”); and
- In-N-Out Burger, Inc v Sehwani, GR 179127, 2008 (“the owner of a well-known trademark has the legal capacity to sue for violation of IP rights in the Philippines even if the trademark was neither registered nor used in the Philippines”).
Both natural and legal persons can own a trademark and can file the application for registration directly or through a representative. If the applicant files through a representative or has no domicile or commercial establishment in the Philippines, a signed power of attorney is required. This must be submitted within 60 days of filing – or earlier, if ordered to submit by an office action. Notarisation or legalisation is not required. A representative may be an attorney or an agent authorised to practise in trademark matters before the Intellectual Property Office of the Philippines (IPOPHL).
Any visible sign capable of distinguishing the goods or services of an enterprise is registrable as a trademark, including a stamped or marked container of goods. This basic requirement precludes the registration of unconventional trademarks such as sound, scent, taste, motion or touch marks. However, certain categories of mark may be registered which are considered non-traditional, including colour marks (where defined by a given form) and three-dimensional (3D) marks, which may be registered as ordinary trademarks, provided that the application specifies that they are 3D marks. According to Section 123 of the IP Code, the following signs cannot be registered as a trademark:
- immoral, deceptive or scandalous matter, or matter which may disparage, falsely suggest a connection with or bring into contempt or disrepute any:
- persons, living or dead;
- beliefs; or
- national symbols;
- the flag, coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation;
- any name, portrait or signature identifying a particular living individual except by his or her written consent;
- the name, signature, or portrait of a deceased president of the Philippines during the life of his widow (if any) except by written consent of the widow;
- any mark that is identical to a registered mark belonging to a different rights holder or a mark with an earlier filing or priority date, in respect of:
- the same goods or services;
- closely related goods or services; or
- goods or services that so resemble the mark as to be likely to deceive or cause confusion;
- any mark that is identical to, confusingly similar to or constitutes a translation of a nationally and internationally well-known mark, regardless of whether it is registered in the Philippines, used for identical or similar goods or services;
- any mark that is identical to, confusingly similar to or constitutes a translation of a nationally and internationally well-known mark that is registered in the Philippines with respect to dissimilar goods or services, where:
- the new mark indicates a connection to those dissimilar goods or services; and
- the interests of the owner of the previously registered mark are likely to be damaged by the new registration;
- any mark that is likely to mislead the public as to the nature, quality, characteristics or geographical origin of the goods or services;
- any mark that is generic for the goods or services;
- any mark that has become customary or usual to designate the goods or services, in everyday language or established trade practice;
- any mark that may serve in trade to designate the characteristics of the goods or services, including kind, quality, quantity, intended purpose, value, geographical origin or time of production or rendering;
- any shape that is necessitated by:
- technical aspects of the goods;
- the nature of the goods themselves;
- factors that affect the intrinsic value of the goods;
- any mark that consists solely of colour, unless defined by a given form; and
- any mark that is contrary to public order or morality.
An application for registration is prosecuted ex parte by the applicant. Applications are examined for registrability by the IPOPHL in the order in which complete filings are received, unless a request for priority examination – which is available under certain conditions – is submitted. The examiner issues a registrability report, if warranted, listing any objections. Examiners are required to include all existing grounds of objection in an action. Piecemeal action is prohibited.
The examiner may require unregistrable matter to be deleted or disclaimed in the applicant’s goods, business or services. Where they comprise less than the entire mark, the following portions of a mark must be disclaimed to permit registration:
- any generic term;
- any descriptive matter in the composite mark;
- any matter which does not function as a trademark, service mark or trade name.
Responding to the registrability report
The applicant must respond to the examiner’s objections or request within two months of the postal date, although this period may be extended (for a fee) up to a total of four months. If the applicant fails to submit a timely response, the application will be deemed abandoned; however, it can be revived on good grounds (eg, delay due to fraud, accident, mistake or excusable negligence) by paying the requisite fee within three months of the date of abandonment and attaching the response.
To reduce the risk of the examiner objecting to a trademark application based on confusing similarity with an earlier mark, the applicant can have a search conducted. The Philippines made its trademark data available to the TMview search tool as of March 23 2015.
Declaration of actual use
The applicant must file a declaration of actual use, including evidence, within three years of filing; otherwise, the application shall be deemed withdrawn, even if it has been registered. A one-off extension of six months is allowed.
If an application fulfils the registrability requirements it will be published for opposition in the online Official Gazette, and any interested party can file an opposition within 30 days of publication. Provided that there is good cause and the required fee is paid, this period may be extended twice, up to a limit of 90 days. The opposition must be in writing and verified by the opposing party or an appropriate third party; it must specify the grounds for opposition and include a statement of the facts on which it is based.
Removal from Trademarks Register
Other than for failure to file the third-year declaration of actual use, a mark may be removed from the Trademarks Register by way of a petition for cancellation. A petition for cancellation may be filed where a party claims to have been damaged by the registration of the mark – in which case it must be filed within five years of the registration date. Further, a petition may be filed at any time where the mark:
- has not been used or licensed for three years or longer;
- has become generic;
- has been abandoned;
- was registered fraudulently or contrary to the code; or
- misrepresents the source of the goods or services that it designates.
Special IP courts
Regional trial courts nationwide have been designated as special commercial courts, with jurisdiction over cases involving violations of IP rights and authority to issue writs of search and seizure and search warrants enforceable nationwide. IP violations are actionable by administrative, civil or criminal penalties.
Penalties, civil damages, fines and other measures are available under the IP Code and the Rules of Court, as follows:
- The court can order the destruction of infringing materials; this can be carried out while the civil or criminal action is still pending or as part of a decision.
- The owner of an infringed mark may not recover profits or damages unless the infringement was committed with knowledge of the likelihood of confusion or deception. Such knowledge is presumed if the infringing trademark or trade dress displays the words “Registered Mark”, the “®” symbol or notice of registration in another form.
- Independent of civil and administrative penalties, the criminal penalty for infringement, unfair competition and other IP violations is two to five years’ imprisonment and a fine ranging from Ps50,000 to Ps200,000.
Preliminary injunction: A writ of preliminary injunction or temporary restraining order may be applied for where there is:
- a clear legal right of the complainant;
- a violation of that right; and
- a permanent and urgent necessity for the writ to prevent serious damage.
A bond is required. If the injunction is granted, it may be denied or dissolved if it appears that it may cause irreparable damage to the party enjoined. The enjoined party must file a bond (in an amount fixed by the hearing officer) and resolve to pay all damages that the applicant may suffer by the denial or dissolution of the injunction. A writ of preliminary injunction can be for an indefinite period, either until the case has been decided or until dissolved.
Preliminary attachment: At any time before entry of judgment, a claimant may have the property of the alleged infringer attached as security for the satisfaction of any judgment that may be recovered. A bond executed to the alleged infringer is required (in an amount fixed by the hearing officer). The party whose property has been attached may move for the attachment to be wholly or partially discharged by tendering a cash deposit or executing a counterbond to the attaching party of an amount equal to the original bond, excluding costs.
Ownership changes and transfer of rights
Under the IP Code, a rights holder may freely assign or transfer a trademark registration (or pending application), with or without the transfer of the business using the mark. However, such assignment or transfer cannot be likely to mislead the public as regards the nature, source, manufacturing process, characteristics or suitability for the purpose of the goods or services to which the mark is applied.
The assignment must be in writing, including the signatures of the contracting parties, and notarised. Transfers by merger or other forms of succession may be made by any document supporting such transfer. Assignments and transfers are recorded at the IPOPHL on payment of a fee; until they are recorded, they have no effect against third parties.
A trademark licence agreement falls under the definition of a technology transfer agreement; it must therefore comply with the mandatory clauses contained in Section 88 of the IP Code and must not violate any of the prohibitions under Section 87. Registration is voluntary, but non-compliance with Sections 87 and 88 automatically renders the technology transfer arrangement unenforceable – unless a request for exemption is submitted to the IPOPHL, in which case registration is required. The IPOPHL will accept notarised licence agreements.
Simultaneous protection is not prohibited – for example, trademarks can be protected as copyrights and copyrights can be protected as industrial designs. However, in Pearl & Dean v SM (GR 148222/2003) the Supreme Court held that trademarks, copyrights and patents are different IP rights that cannot be interchanged.
Although the Cybercrime Prevention Act (RA 10175) was approved in 2012, its implementation was suspended after its constitutionality was questioned. However, in 2014 the Supreme Court held most of its provisions to be constitutional. The act penalises the acquisition of a domain name in bad faith (ie, to profit unfairly, mislead, defame or obstruct), where such domain name is:
- similar or identical to an existing registered trademark at the time of the domain name registration;
- similar or identical to the personal name of a person other than the registrant; or
- acquired without permission or disregarding other IP interests.
Penalties for violation include imprisonment and/or a fine of at least Ps200,000 (about $5,000). Where the act is knowingly committed on behalf of a corporate entity, that corporate entity shall be held liable for double the fines imposable, up to Ps10 million (about $250,000), without prejudice to criminal liability of the officer of the corporate entity.
Alternative dispute resolution
The domain name registration authority, dotPH Inc, has adopted the Uniform Domain Name Dispute Resolution Policy (UDRP), which provides for the terms and conditions of a domain name dispute between a registrant and a third party. Submission to the UDRP is incorporated in the domain name service agreement given to a registrant at the time of application. Complaints filed pursuant to the policy must be decided in a mandatory administrative proceeding before any approved dispute resolution service provider, such as the WIPO or the Hong Kong International Arbitration Centre.
Hechanova & Co Inc
Ground floor, Chemphil Building
851 Antonio Arnaiz Avenue
Makati City 1223
Tel +63 2 888 4293
Fax +63 2 888 4290
Editha R Hechanova
President and chief executive officer
Editha R Hechanova is the president and chief executive officer of Hechanova & Co Inc, handling trademark and patent prosecution, copyright and domain name registration, trademark valuation, searches and other non-contentious IP matters. Hechanova & Co was listed among the top filers for both patents and trademarks by the Intellectual Property Office of the Philippines (IPOPHL) from 2010 to 2014. Ms Hechanova is also the managing partner of Hechanova Bugay Vilchez & Andaya-Racadio, handling IP litigation, licensing, border control and corporate and employment law. Ms Hechanova is a lawyer, a certified public accountant and a certified patent agent, having passed the IPOPHL patent agent qualifying examination in 2008.
Maria Leah R Lara
Maria Leah R Lara is a senior associate at Hechanova Bugay Vilchez & Andaya-Racadio. She obtained her LLB from the University of St Tomas in 2006. She has six years’ experience in contentious IP matters and licensing, including opposition and cancellation proceedings. She has vast experience in enforcement actions, IP litigation involving infringement of trademarks, copyright and designs and unfair competition, border control measures and transactional IP matters. Aside from intellectual property, her areas of practice include family law, labour and employment, corporate compliance and due diligence.
Joy Marie R Gabor-Tolentino
Joy Marie R Gabor-Tolentino is an associate at Hechanova Bugay Vilchez & Andaya-Racadio. She has a master’s in educational management from St Louis University, where she graduated magna cum laude. She obtained her law degree from Arellano University, where she ranked third in her graduating class in 2013. She has been handling IP prosecution since 2008 as a paralegal while she was taking her law degree. After she was admitted to the Philippines Bar in 2014, she continued to specialise in intellectual property, including litigation, trademark prosecution, patent prosecution, IP recordation, copyright, searches and other non-contentious IP matters.