South-East Asia IPR Basics Series: Trade Marks In The Philippines

15 November, 2015

 

Trade marks are the distinctive logos, symbols, and colour schemes which set an SME’s products apart and signal to consumers that the product carries a certain degree of quality.  Trade marks are a critical part of establishing a brand identity and building a loyal customer base.

 

This latest installment of our South-East Asia IPR Basics series will look at how trade marks are handled in the Philippines. For more information, be sure to visit our website or contact one of our experts.

 

The Philippines: a background for SMEs

 

The Philippines is an emerging, newly-industrialized market with the world’s 39th-largest economy, according to the World Bank. With Q2 2015 GDP growth of 5.6% and the EU-Philippines Partnership and Cooperation Agreement signed in 2012 set to be implemented soon, the Philippines presents a number of ready business opportunities for European SMEs. Low wage inflation, consistent liberalizing reforms to the economy and regulatory efficiency, and a free banking sector contribute to the Philippines’ Ease of Doing Business score of 95. Balancing these strengths are lingering issues with corruption and an inefficient and political judiciary.

 

The EU is the largest investor in the Philippines, contributing roughly 8 billion euros, or 30% of FDI, while EU-Philippines trade reached 12.47 billion Euros in 2014. Major EU exports to the Philippines grew an average of 16.1% per annum from 2010 to 2014 and included machinery and transport equipment (58.8%), chemicals and related products (11.5%), and food and live animals (10.3%) in 2014. That year, primary Filipino exports to the EU included machinery and appliances (60.2%), optical and photographic instruments (11.1%), and animal or vegetable fats and oils such as coconut oil (6.2%).

 

The Philippines is a member of the following international conventions regulating IP matters[1]:

 

• Patent Cooperation Treaty
• Berne Convention for the Protection of Literary and Artistic Works
• Paris Convention for the Protection of Industrial Property
• Convention Establishing the World Intellectual Property Organization
• WIPO Copyright Treaty
• WIPO Performances and Phonograms Treaty
• Madrid Agreement and Protocol
• ASEAN Framework Agreement on Intellectual Property Cooperation
• ASEAN Trade in Goods Agreement

 

Trade marks in the Philippines

 

Applications for trade marks are handled by the Bureau of Trademarks at the Intellectual Property Office. According the Philippines’ Intellectual Property Code (Republic Act No. 8293), a trade mark is “any visible sign capable of distinguishing the goods (trade mark) or services (service mark) of an enterprise.” Trade marks can come in a variety of shapes and sizes, so defining what constitutes a trade mark is difficult. The Philippines does, however, define what cannot be a trade mark:

 

• Marks which bear national flags or coats of arms and names or likenesses of living people (unless they have given their consent)
• Marks which are identical to a registered mark of a different proprietor and could cause confusion
• Marks which are identical to, confusingly similar to, or translated from a well-known international mark (whether the mark has been registered in the Philippines or not)
• Marks which mislead the public as to the good’s quality, characteristics, or origin
• Marks which are too general, too widely used, or too dictated by the nature of the product
• Marks which are just a colour

 

Applying for a trade mark

 

Applications can be made in either English or Filipino. An application for a trade mark must pay the requisite fees and must contain:

 

• A request for registration of the mark*
• Information identifying the applicant, which nationality the applicant holds or where he resides, and the country where the applicant has a real commercial establishment*
• The country where the applicant is a legal entity
• One or more reproductions of the mark*
• A transliteration or translation of the mark
• A signature or other self-identification of the applicant or his representative
• The names for the goods or services for which registration is sought, grouped according to and labelled under the classes of the Nice Classification*
• Payment of the required fee*
• (if the agent does not reside in the Philippines) Information for an appointed agent or representative* (where the applicant claims priority) The office where the earlier application was filed, the date it was filed on, and the application number from the earlier filing
• (where colour is claimed as a distinctive feature of a mark) A statement claiming the colour as part of the mark, the names of the colours, and an indication for each colour detailing where the colour is used in the mark (where the mark is 3D) A statement that the mark is 3D

 

Items marked with an asterisk (*) are required to receive a filing date. Other items may be included later. Within three years of filing the application, the applicant must file a declaration of actual use of the mark with evidence of use. Otherwise, the application will be refused or the mark will be removed from the register. One application may relate to several goods or services which cover multiple Nice Classification categories.

 

Examination process and length of protection

 

The Philippines has a first to file system, meaning that trade marks are assigned to the first person to file for them. However, applications gain priority when the same trade mark was earlier filed with an international IPR convention or a nation with an IPR treaty with the Philippines. An application with a priority date is treated as though it was filed on that date and thus offer additional protection to companies’ IPR. For example, if Company A files a trade mark in France, Company B may see that trade mark and try to copy it in the Philippines. Claiming priority would allow Company A to be treated as though it had filed its Filipino mark at the same time as its French mark, giving it a leg up over Company B in the Philippines’ first-to-file system. A trade mark which claims priority cannot be granted in the Philippines until it has been granted in the foreign country where it was filed.

 

Fees for trade mark applications are assessed differently for small (assets worth one hundred million Philippine Pesos or less) and large entities (all others). Applicants are assumed to be large entities unless they can prove otherwise. Please visit here for a list of fees for industrial design applications.

 

Examinations and period of protection

 

Once the application is complete, the IPO will classify the mark and conduct a formality examination to double-check that the mark meets all requirements. If it does not, the application will be denied and the applicant will be given four months to amend the application. If a mark is refused, the decision may be appealed to the Director of the Bureau of Trademarks. That decision may then itself be appealed to the Director General of the Intellectual Property Office, to the Court of Appeals, and to the Supreme Court.

 

If an application passes the examination, all fees have been paid, and there is no opposition after publication on the IPO Electronic Gazette, then a certificate of registration will be issued and successful application will be mentioned in the office’s IPO Electronic Gazette. Certificates last for ten years assuming that the applicant provides actual use of the trade mark within three years from the filing date. Applicants can pay a fee and issue a formal request in Filipino or English to renew trade marks for additional ten-year periods at any time six months before the expiration of a mark (or up to six months after the expiration if an additional fee is paid).

 

Requests for renewal must include:

 

• A request for renewal
• The name and address of the right holder
• The registration number
• The filing date of the registration
• The names of the recorded goods and services for which the renewal is or is not requested, grouped according to the Nice Classifications
• A signature by the right holder (if the right holder has a representative) The name and address of that representative

 

Enforcing your Intellectual Property Rights

 

Grounds for action and cancellation petitions

 

The Philippines states that owners of registered marks have the right to prevent any third parties from using identical or similar signs or containers for similar or related goods or services which would result in a likelihood of confusion. For identical signs for identical goods or services, a likelihood of confusion is presumed. For registered well-known marks, this protection extends to goods unrelated to the goods for which the trade mark is registered if there is a danger of consumers associating the products with the well-known mark. The Intellectual Property Code explicitly states that packaging goods in a way designed to fool consumers constitutes a violation.

 

Anyone who opposes the registration of the mark may pay a fee and issue an opposition to the application within 30 days of its publication by the IPO. Oppositions must be supplied in writing and must include any applications filed in foreign countries which form the basis for the opposition (along with an English translation if necessary). According to Philippines law, in trade mark applications goods and services cannot be considered similar or dissimilar based purely on their class in the Nice Classification. If a mark is already registered, a petition to cancel it may be launched within five years of the mark’s registration.

 

The Bureau of Legal Affairs of the Intellectual Property Office is the organ responsible for resolving many trade mark disputes. Possible enforcement actions include:

 

• Seeking damages (damages are doubled for deliberate cases of misleading the public)
• Impounding sales invoices and other documents
• Destroying the goods in question

 

The owner of a mark is only entitled to damages if he can show that the infringer had knowledge of the protected mark. Additionally, any prior user of a mark who did so in good faith before the filing date or priority date of the application will have the right to continue use of the mark.

 

Independent of civil and administrative sanctions, criminal penalties imposed by trade mark law range from two to five years in prison and fines of 50,000 to 200,000 Philippine Pesos.