Guidelines on Proper Trademark Use

Use by Third Party / Licensee

If the mark is to be used in the Philippines by a party other than the registrant, it is advisable that a trademark license agreement be implemented between the parties and recorded with the IPO.  Under the Intellectual Property Code (IP Code), use of a mark by a company related to the registrant or under its control shall inure to the benefit of the registrant.  Any trademark license agreement must provide for effective control by the licensor of the quality of the goods and services of the licensee.  It must also comply with regulations governing technology transfer arrangements.  Otherwise, the agreement may be considered invalid or unenforceable.  A trademark license agreement must also be recorded with the IPO in order to have effect against third parties.

Use of Registered Mark Symbol

While it is not mandatory to place the  symbol or the words "Registered Mark" alongside a registered mark when used on products or in connection with services, the absence of the  symbol or the words "Registered Mark" may affect the registrant¹s entitlement to damages in an infringement action.  Under the IP Code, the owner of a registered mark shall not be entitled to profits or damages in an infringement action unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive.  Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the  symbol or the words "Registered Mark”.

REACT

Our firm is the exclusive partner of REACT (https://www.react.org/locations/philippines/) in the Philippines. REACT members will now be able to take advantage of the Firm’s expertise in all facets of Intellectual Property Law. The Firm will also be able to better serve its Philippine clients’ international needs by being able to tap into the extensive REACT network.

REACT is a not-for-profit organization with over 25 years experience in fighting the trade in counterfeits and has in excess of 235 business Members covering all sectors of industry. With an extensive global network of offices and partners extending to 85 countries, REACT, using its knowledge of national laws and procedures, is able to act efficiently as a 'one-stop-shop' wherever and whenever its Members need to enforce their intellectual property rights.

To report a violation of the IP rights of REACT members, send an email to infringement@bccslaw.com.

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