The Madrid Protocol in the Philippines

Accession

The Philippines acceded to the Madrid Protocol with effect on 25 July 2012. The Madrid Protocol is a treaty that allows natural or juridical persons of member countries to file international registrations through their respective trademark offices (as office of origin) designating other member countries to be covered by the international registration. The Madrid Protocol’s basic effect is being able to obtain individual national registrations in the designated countries similar to securing trademark registrations directly and separately in the designated countries, if the latter issues a grant of protection. In the Philippines, the office of origin is the Philippine Intellectual Property Office (IPOPHIL).

Registration Requirements

To file an international registration under the Madrid Protocol through IPOPHIL, the applicant must have a basic application/registration (I.e., a mark filed/registered with the IPOPHIL under the applicable Philippine trademark law), which basic application/registration will be the basis for international registrations designating other member countries. The applicant must also be eligible to apply for international registration through IPOPHIL.

Qualified applicants

The applicant must be a national of, is domiciled in, or must have have a real and effective industrial or commercial establishment in the Philippines

Use of the mark

Philippine trademark regulations specifically require trademark owners (including holders of international registrations) to submit a declaration of actual use of the mark in the Philippines within three years from the filing date (i.e., international registration date) and within one year from the fifth year anniversary of the registration date (i.e., date of grant in cases of international registration. Otherwise, the mark will be removed from the registry by operation of law

Designation of resident agent

Non-Philippine trademark proprietors who hold international registrations designating the Philippines should appoint a resident agent for purposes of filing responses to office actions, declarations of actual use, and recording instruments affecting the mark with IPOPHIL.

Subsequent designation

The holder of an international registration may subsequently designate other member countries to be included in the international registration. However, subsequent designation is possible only if the international registration date is on or after 25 July 2012, which is the date of entry into force of the Madrid Protocol in the Philippines. The Philippines’ accession to the Madrid Protocol included a reservation that the protection resulting from international registrations granted before the entry into force of the Madrid Protocol in the Philippines cannot be extended to the Philippines.

Provisional Refusal

If a notice of provisional refusal is issued, the applicant should file a written response within two (2) months from the date of notification indicated in the notice. A single extension of two (2) months to respond may be requested. If no response or extension request is timely filed, the application will be considered abandoned. The abandoned application may be revived within three (3) months from the date the period to respond lapsed.

The applicant should appoint a Philippine agent/representative to respond to the notice of provisional refusal or request an extension to respond.

If the applicant successfully traverses the objections raised in the notice of provisional refusal, the mark will be published for opposition. If the application is not opposed, IPOPHIL will issue a statement of grant of protection.