Trademark System in the Philippines

LEGAL BASIS
Trademark Laws	Intellectual Property Code of the Philippines (Republic Act No. 8293) (1997) Republic Act No. 10372, entitled ‘An Act Amending Certain Provisions of Republic Act No. 8293, otherwise known as the ‘Intellectual Property Code of the Philippines’, and for other purposes’ (2013)
Trademark Rules	Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of December 1, 1998 (as last amended by Office Order No. 49 of 2006) (2006) Trademark Regulations (as amended by Office Order No. 08 of 2000) (2000) Philippine Regulations Implementing the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, Office Order 139 S 2012 Amendment of Rule 20(2) Office Order No. 139, Series of 2012 Philippine Regulations Implementing the Protocol Relating to the Madrid Agreement concerning International Registration of Marks Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers of 2023 Replacing the Revised Trademark Regulations of 2017
Trademark Treaties	Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (July 25, 2012) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) Paris Convention for the Protection of Industrial Property (September 27, 1965)
TRADEMARK PROSECUTION
Trademark Definition	Any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods
Common Law Marks	Yes. Trademark rights can be acquired by actual use in commerce or trade.
Non-RegistrableTrademarks	Immoral, deceptive or scandalous matter Flag, coat of arms or other insignia of the Philippines Name, signature, or portrait of living individual (w/o consent) Confusingly similar to a previously registered or applied mark Confusingly similar to a well-known mark Misleading marks Generic marks Customary marks Descriptive marks Shapes Color Contrary to public order or morality
Ownership of Trademarks	A natural or juridical person who is using or intends to use in commerce a mark in connection with goods and/or services.
Registration Timeframe	8 to 10 months from filing date
Classification System	Nice Classification of Goods and Services
Types of Applications	Divisional Application – Yes Multi-Class Application – Yes
Procedures	Filing Examination Publication Opposition (if any) Registration
Opposition Period	30 days from the publication with a 1-time extension of 45 days
Grounds for Opposition	Lack of distinctiveness Confusing similarity Bad faith application Misrepresentation of ownership
Grounds for Cancellation	Mark became generic Abandonment Fraud Contrary to provision of IP Code Misrepresentation of source of goods or services Failure to use the mark for uninterrupted period of 3 years
Term of Registration	10 years
Maintenance/Renewal	3rd Year Declaration of Actual Use or Non-Use – 3 years from filing date (extendable once for 6 months) 5th Year Declaration of Actual Use or Non-Use – between 5th to 6th year of registration Request for renewal – before the 10th year registration anniversary with 6 months grace period The Renewal Declaration of Actual Use may be filed within the six-month period before the expiration of registration.
TRADEMARK ENFORCEMENT
Enforcement Proceedings	Through the Bureau of Customs (BOC) Through the Intellectual Property Office (IPO) Through the courts
Infringement Actions	Criminal Action Civil Action Administrative Action
Burden of Proof	Administrative action – substantial evidence Criminal action – guilt beyond a reasonable doubt Civil action – preponderance of the evidence
Criminal Procedure	Pre-raid investigation Police investigation Application for search warrant Raid Filing of complaint Preliminary investigation Filing of information in court Issuance of a warrant of arrest, arraignment, pre-trial, and referral to mediation Trial Judgment
Criminal Penalties	Imprisonment – 2 to 5 years Fines – from PHP50,000 to PHP 200,000
Appeal	For administrative action – from Bureau of Legal Affairs to the Office of the Director General to the Court of Appeals to the Supreme Court For civil and criminal action – from Regional Trial Courts to the Court of Appeals to the Supreme Court
Timetable	Trial – 1.5 years Appeal – 1 year
ADR	Informal dispute resolution Mediation
Remedies	Reasonable profit Doubled damages (with showing of actual intent) Impoundment of documents evidencing sales Disposal of infringing goods Removal of infringing trademark Injunction
Enforcement Proceedings	Through the Bureau of Customs (BOC) Through the Intellectual Property Office (IPO) Through the courts
Infringement Actions	Criminal Action Civil Action Administrative Action
Burden of Proof	Administrative action – substantial evidence Criminal action – guilt beyond a reasonable doubt Civil action – preponderance of the evidence
Criminal Procedure	Pre-raid investigation Police investigation Application for search warrant Raid Filing of complaint Preliminary investigation Filing of information in court Issuance of a warrant of arrest, arraignment, pre-trial, and referral to mediation Trial Judgment
Criminal Penalties	Imprisonment – 2 to 5 years Fines – from PHP50,000 to PHP 200,000
Appeal	For administrative action – from Bureau of Legal Affairs to the Office of the Director General to the Court of Appeals to the Supreme Court For civil and criminal action – from Regional Trial Courts to the Court of Appeals to the Supreme Court
Timetable	Trial – 1.5 years Appeal – 1 year
ADR	Informal dispute resolution Mediation
Remedies	Reasonable profit Doubled damages (with showing of actual intent) Impoundment of documents evidencing sales Disposal of infringing goods Removal of infringing trademark Injunction