The importance of registering trademarks has been established in our intellectual property laws and related jurisprudence. As discussed in Emzee Foods, Inc. vs. Elarfoods, Inc. (G.R. No. 220558, 17 February 2021), a business is remembered and revered by its goodwill and reputation. A trademark is not some meaningless combination of phrases, symbols, but rather an emblem embodying the quality of its goods and services. Such is its importance that our laws protect trademarks.
As the Filipino local brands grow, expand, they may find themselves venturing into the global market. In which case, the brand owners must immediately consider the registration of its trademarks in different countries.
The most cost-effective way to do so would be through the Madrid System for the International Registration of Marks (Madrid System).
According to the World Intellectual Property Organization (WIPO), the Madrid System is the convenient one-stop solution for registering and managing trademarks worldwide by filing a single international trademark application in one language and paying one set of fees. Trademark protection may be applied up to 131 countries through one centralized system.
The Supreme Court previously upheld the validity of the accession of the Philippines to the Madrid Protocol in the case of Intellectual Property Association of the Philippines vs. Paquito Ochoa, et al. (G.R. No. 204605, 19 July 2016).
Applications thereto are filed according to the requirements and procedures in the Madrid Protocol. The IPOPHL will check the application, certify it, and send it to WIPO. Thereafter, the WIPO shall conduct a formal examination. If in order, WIPO shall issue a Certificate of Registration, an acknowledgement of compliance with formal requirements. Otherwise, an “irregularity notice” shall be sent for corrections.
After compliance, WIPO shall register the mark in the International Register and publish it in the WIPO Gazette of International Marks. The members of the Madrid System shall be notified of the applicant’s intent to apply for protection.
The domestic laws of each designated Madrid System member determine the scope of trademark protection. Thus, each designated member will perform substantive examination, resulting to either the office granting or refusing the protection. The results shall be relayed to WIPO and to the applicant, and the International Register shall be updated accordingly.
In case there is no update from the office within the twelve or eighteen-month limit, the protection is deemed granted. In case there is refusal, the reasons for the decision and further steps for review or appeal shall be included in the notification.
