Following the previous report ( Philippines: New Regulations on the Protection of Well-known Trademarks Released ), we now provide a detailed interpretation of the key points of the new regulations
The Register of Well-known Trademarks will come into effect on April 28, 2025
The Philippines’ Well-Known Trademark Management Regulations officially came into effect on April 28, 2025. The regulations established a Philippine well-known trademark registration system, and its formulation process went through a public consultation phase in September 2024.
Criteria for Recognizing Well-Known Trademarks
The criteria for determining trademark fame remain consistent with Section 103 of the Trademarks Ordinance 2017 and Section 18(3) of the Intellectual Property Case Procedure Amendment Rules 2020. Although previously, a trademark could be recognized as well-known if most of the criteria were met, the new rules require proof of the first four core criteria listed below:
- Duration, extent and geographical scope of use: including the duration, extent and geographical scope of the promotion, advertising and display of goods/services.
- Market share: The market share of the product/service in the Philippines and other countries.
- Distinctive features: distinctive characteristics of a trademark that are inherent in or acquired through use.
4. Market reputation: the product quality, brand image or market reputation associated with the trademark. Foreign documents submitted as evidence must be notarized and apostille certified. The previous conclusion that a trademark is not well-known does not affect the application for declaration of a well-known trademark under these rules.
Application Procedure
The application for declaration of a well-known trademark must be notarized and submitted electronically. Its examination process is similar to that of ordinary trademark applications, including the stage of publication for third parties to raise objections. After the publication of the announcement, there is a 30-day third-party objection period (starting from the date of the announcement). The Advisory Committee will ultimately evaluate the objections and make a recommendation on whether to grant the well-known trademark declaration.
The declaration of a well-known trademark can serve as preliminary evidence of the legal status of the trademark. The declaration will be entered into the well-known trademark register, and the trademark examiner can use it to make a rejection decision on similar trademarks in the subsequent trademark application review.
However, the trademark owner must submit the following materials every 10 years to maintain the validity of the declaration:
- Proof of continued use of the mark in commerce.
- Certification of the well-known trademark status for one year from the fifth anniversary of the recognition and at each renewal.
If the well-known trademark has been approved for registration in the Philippines, you only need to submit documents proving its well-known status, as the trademark registration procedure already requires the submission of a Declaration of Actual Use.
A well-known trademark declaration may be revoked and removed from the register for failure to renew, submit proof of continued use, and prove well-known status. The same result can also occur if a cancellation application is granted on the basis that the mark no longer has well-known status.
Transitional arrangements for existing well-known trademarks
The owner of a well-known trademark that has been recognized by the Philippine competent authority may submit a declaration after paying the fee to apply for the inclusion of his trademark in the Register of Well-known Trademarks, but must submit additional documents proving the continuous use of the trademark in commercial activities before April 28, 2030 (that is, within five years after the new regulations take effect). The list of well-known trademarks recognized by the relevant competent authorities can be queried through the Philippine Intellectual Property Office’s online service system: onlineservices.ipophil.gov.ph/wellknownmarks/
Trademark owners should comprehensively evaluate whether to include their trademarks in the “Registry of Well-known Trademarks” in order to have a repelling effect on similar trademarks during the trademark examination stage, but they need to weigh the cost of maintaining the well-known declaration. They can also choose to retain the well-known trademark determination decision of the competent authority, which does not need to be maintained regularly and can still serve as a basis for proving the well-known status of the trademark.
In conclusion
The introduction of the “Well-known Trademark Management Regulations” marks a major upgrade of the Philippine brand protection system. By establishing a formal “Well-known Trademark Registration Book”, the regulations provide brand right holders with a strengthened trademark protection mechanism and a legal confirmation channel. When making decisions, companies need to carefully weigh the enhanced protection benefits of well-known trademark registration and the corresponding maintenance requirements. Active participation in this system will not only consolidate the company’s market advantage, but also build a legal moat for brand assets in the increasingly fierce commercial competition.
For further information, please contact:
Claire Corral, Partner, Rouse
ccorral@rouse.com
