Philippines

Philippines Trademark System

Legal Basis	1987 Philippine Constitution effective from 2 February, 1987 Republic Act No. 8293 Intellectual Property Code effective from January 1, 1998 Republic Act No. 6675, The Generics Act effective from 13 September, 1988 Republic Act No. 623 An Act to Regulate the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and Other Similar Containers effective from 5 June, 1951 Customs Administrative Orders and Circulars IP Philippines Memorandum Circulars and Orders
Major international treaties signed	WTO – GATT Treaty Uruguay Round (Annex C – Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) Paris Convention Madrid Protocol
Cost of obtaining a trademark	Please contact us at philippines@mirandah.com
Average time to obtain a trademark	12 to 15 months
Official language for trademark prosecution	English
Registrable marks	Any visible sign capable of distinguishing goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods
Filing and prosecution procedures	Stage 1: Filing Stage 2: Examination Stage 3: Publication in eGazette Stage 4: Opposition (if any) Stage 5: Registration
Number of classes	45 (11^th Edition Nice Classification)
Multiple class filing	Available
Filing of series marks	Not available
Necessary document for filing	Power of Attorney
Common objections	Prior conflicting rights with another proprietor Conflict with a well-known trademark Distinctiveness Descriptiveness Description of goods/services is broad Generic; customary or usual signs or indications Shapes that may be necessitated by technical factors Colour alone
Electronic filing	Available
Opposition Term	30 days from issuance of eGazette
Duration of protection	10 years from the date of registration for national registrations 10 years from the international registration date for international registrations
Restoration of lapsed trademark	Not available if registered mark. A mark can only be restored if during the pendency of the application, the trademark owner files a Petition for Revival within 3 months from mailing date of Notice of Abandonment, provided the cause of abandonment is not due to failure to file the 3^rd year Declaration of Actual Use
Compulsory period of use to avoid cancellation action	3 consecutive years
Parallel Imports	Allowable, except in cases where an exclusive importer/distributor is appointed in the Philippines, and allowing parallel imports may constitute a breach of contractual obligation
Use	(a) 3^rd year Declaration of Actual Use – Required within 3 years from filing date of application – Original deadline can be extended once for a period of 6 months – Mandatory regardless of basis of application(b) 5^th year Declaration of Actual Use – Required to be filed between the 5^th to 6^th year from date of registration (c) Renewal DAU – Required to be filed within one (1) year from the due date of renewal (d) 5^th year Declaration of Actual Use – Required to be filed within one (1) year from the fifth anniversary of each renewal
Useful links	www.ipophil.gov.ph

Enforcement of Trademarks in The Philippines

Outline of the enforcement steps	Test Buy Secure Search & Seizure Warrant Filing of Criminal Case with City Prosecutor *Infringement* Unfair Competition
Civil Remedies	Cancellation of Registration Damages Injunction (with prayer for Temporary Restraining Order) Action for False or Fraudulent Declaration Action for False Designation of Origin False Description or Representation
Criminal Sanctions	Imprisonment from 2 – 5 years; and Fine from PHP50,000 to PHP200,000 (approximately US$1,000 – US$4,000)
Others	Border Control Measure – Registration of registered marks with the Bureau of Customs
Time frame for various legal actions	18 – 36 months
Alternative dispute resolution	Mediation Arbitration
Any specialized courts for IP	Yes