Protection of Trademarks in Philippines
Introduction
The Philippines has laws and policies that generally support a conducive intellectual property (IP) environment, but enforcement is irregular and inconsistent. Several considerations are important for effective management of intellectual property (IP) rights in the Philippines. First, it is important to have an overall strategy to protect IP. Second, IP may be protected differently in the Philippines than in the United States. Third, rights must be registered and enforced in the Philippines under local laws. For example, U.S. trademark and patent registrations will not protect rights holders’ IP in the Philippines. There is no such thing as an “international copyright” that will automatically protect an author’s writings throughout the world. Protection against unauthorized use in a particular country depends on the national laws of that country. The Philippines is a member of several international copyright treaties and conventions and offers copyright protection to foreign works in accordance with these treaties. The Philippines Intellectual Property Office (IPOPHL) maintains a registry of patents and trademarks that is widely recognized in Southeast Asia.
[Image Source: iStock]
Granting patents registrations is generally based on a first-to-file (or first-to-invent, depending on the country) basis. Similarly, registering trademarks is based on a first-to-file (or first-to-use, depending on the country), so rights holders should consider how to obtain patent and trademark protection before introducing their products or services to the Philippine market. It is vital that companies understand that intellectual property is primarily a private right and that the U.S. government cannot enforce rights for private individuals in the Philippines. It is the responsibility of the rights holders to register, protect, and enforce their rights where relevant, retaining their own counsel and advisors. Companies may wish to seek advice from a local attorney or IP consultant who specialize in Philippine law.
A trademark applicant may be a natural or juridical person. A trademark application may also be made in the name of more than one applicant. Foreign applicants not domiciled or having no real and effective commercial establishment in the country must have a resident representative who shall be served with notices or processes in proceedings affecting the mark.
The Intellectual Property Code of the Philippines (IP Code) defines a trademark as any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. Collective marks may be registered and are treated as ordinary trademarks for the purposes of substantive examination.
The Philippines has yet to accord protection to non-visually perceptible marks such as sound, touch, taste and smell marks, but recognises other non-traditional marks such as 3D marks, position marks, hologram marks and motion marks.
A mark is unregistrable in the Philippines if it falls under any of the absolute or relative grounds for refusal under section 123 of the IP Code. Absolute grounds include immoral, generic, descriptive, non-distinctive and customary marks, while relative grounds cover confusing similarity with previously registered or earlier filed marks and with marks that are well known internationally and in the Philippines. Marks that are descriptive, consisting of colour or a shape, may be registered if they become distinctive in connection with the applicant’s goods or services as a result of extensive commercial use in the Philippines for at least five years before the claim of distinctiveness is made.
Jurisprudence has also established the doctrine of prior use as a basis for trademark ownership. A certificate of registration may be defeated by evidence of prior use of the mark by another person. A registered mark shall have no effect against a mark that has been used in good faith before the filing or priority date of the registered mark. Moreover, a person who has identified in the mind of the public his or her goods and services, whether a registered mark is employed or not, has a property right in the goodwill created and may protect the same based on unfair competition.
The IP Code protects marks that are considered by a competent authority in the Philippines to be well known internationally and in the Philippines, whether or not they are registered in the Philippines. If unregistered, its exclusivity is limited to identical or similar goods and services for which it is well known. However, if it is registered in the Philippines, the exclusive right to use the mark extends even to goods and services that are not similar, provided that such use would indicate a connection with the registrant to the latter’s prejudice.
In determining whether a mark is well known, account shall be taken of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines obtained through the promotion of the mark.
As a general rule, registration confers trademark rights in the Philippines. The owner of a registered mark has the exclusive right to prevent all third parties from using marks that are identical or similar to its own, in respect to the same or similar goods or services for which the mark is registered.
A certificate of registration of a mark is prima facie evidence of the validity of the registration, the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in connection with the goods and services listed and those related thereto. In the case of an identical sign for identical goods or services, a likelihood of confusion is presumed.
Only the owner of a registered mark may claim trademark infringement against an identical or confusingly similar mark. The registered owner is also afforded border enforcement measures by the Bureau of Customs.
Conclusion
A logo or device (excluding word elements) may be considered an artistic work and subject to copyright protection. The shape of a product, part of a product or of its packaging or container may be considered distinctive and registered as a trademark or as an industrial design. The protection granted to trademarks under the IP Code is sufficiently broad to cover all commercial use of trademarks, including online use. This protection is expanded by other laws and regulations concerning online use of IP rights, such as the Consumer Act of the Philippines, the Joint DTI-DOH-DA Administrative Order No. 1, Series of 2008, the Cybercrime Prevention Act of 2012 and the Electronic Commerce Act of 2000. A domain name may be registered as a trademark under the IP Code, which affords the domain name all the rights of a trademark owner. The acquisition of a domain name in contravention of another’s IP rights is punished as cyber-squatting under the Cybercrime Prevention Act of 2012.
Author: Tanya Saraswat, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
