- July 1, 2009
- Posted by: Atty. James Biron
- Category: Commercial, Intellectual Property
If you are planning to start a business in the Philippines it is important that you protect your trademark in order to prevent unlawful use of such by those who want to profit using your brand.
Registration of trademarks in the Philippines is not a complex process. The following guide will give you insight in the registration procedure of trademarks in the Philippines.
What may be registered?
All marks that are capable of distinguishing goods or services are registrable, but there are certain exceptions to the rule:
There is absolute proscription where the mark:
1. Consists of immoral, deceptive or scandalous matter. – For example, you cannot register a trademark such as “Minor Whores” or one with pictures of nude individuals because that is immoral and scandalous according to Philippine standards.
2. Consists of the flag or coat of arms or other insignia of the Philippines, or of any foreign nation, or any simulation thereof. – Because of this you cannot register a trademark that has the flag of the United States or Saudi Arabia as an example.
3. Consists exclusively of signs that are generic for the goods and services that they seek to identify. – Thus if you own a call center company, you cannot register “Call Center” trademark because that is generic for the service that you seek to identify.
4. Mark/s contrary to public order or morality. – For example, you cannot register a trademark “Kill the Foreigners” because that is contrary to public order or morality.
There is relative proscription where the mark:
1. Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or 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. – As an example, you cannot register a trademark “Ferdinand Marcos” without asking for the consent of Imelda Marcos, the widow.
2. Is identical with a registered mark with an earlier filling or priority date, in respect of (i) the same goods or services, or (ii) closely related goods or services, or (iii) if it nearly resembles such a mark as to be likely to deceive or cause confusion. – For example you cannot register a “Jollibee” trademark if you are into food business because that is identical to a registered trademark with an earlier filing date. But even if your business is not related to food but into making shoes, still you cannot register “Jollibee” as a trademark because it will likely deceive or cause confusion. The person seeing that shoe with a “Jollibee” brand name might believe that it was manufactured by the “Jollibee” food chain corporation.
3. Is identical with or confusingly similar to an internationally well known mark. – Thus you cannot register “Facebook” here in the Philippines, unless you are Mark Zuckerberg, because “Facebook” is an internationally well known mark.
4. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographic origin of the goods or service.
5. Consists exclusively of signs or of identifications that have become customary or usual to designate the goods or services in everyday language or in bona fide or established trade practice.
6. Consists exclusively of signs or of identifications that may serve in trade to designate the kind quality, quantity, intended purpose, value geographic origin, time or production of the goods or rendering of the services or other characteristics of the goods or services.
7. Consists of shares that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value.
8. Consists of colors alone unless defined by a given form.
9. Is contrary to public order or morality.
What are the requirements of registration?
1. A request for registration.
2. The name and address of applicant.
3. Applicant’s nationality or place of domicile or the name of a State in which the applicant has a real and effective industrial or commercial establishment if any.
4. Where applicant is a juridical entity, the law under which it is organized and existing.
5. The appointment of an agent or representative if the applicant is not domiciled in the Philippines.
6. Claim of priority, if any,
7. Claim of color, if any.
8. Where the mark is three-dimensional mark, a statement to that effect.
9. Reproduction of the mark and facsimiles thereof.
10. A transliteration or translation of the mark or of some parts of the mark.
11. The names of the goods or services for which the registration is sought.
12. A signature by, or other self-identification of the applicant or his representative.
What is the process of trademark registration?
1. Filling of application – applications must be filed with the Bureau of Trademarks of the Intellectual Property Office (IPO)
2. Search – The application undergoes a search process to determine if the trademark applied for has an identical mark.
3. Substantive examination – an examiner will be assigned to assess the registrability of the application pursuant to the rules.
4. Publication for purposes of opposition – it will be published in the IPO Gazette to give an opportunity to those who might be damaged by the registration of the mark to oppose said registration
5. Registration – upon certification by the Director of the Bureau of Legal Affairs that no notice of opposition has been filed within 30 days from the date of release for circulation of the IPO Gazette publishing the application for opposition, and upon payment of the required fee, the Office shall issue the certificate of registration.