Acquisition of rights
As a general rule, the rights in a mark are acquired through registration. The Philippines follow the first-to-file system. A suit for infringement of a mark is only possible if the trade mark is registered.
Any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise may be registered as a trademark.
Because a prior trademark application or registration can bar a subsequent application for the same or similar mark, conducting an availability search is recommended before filing an application. A search may be conducted online at ipophil.gov.ph or through a Philippine trademark attorney or agent, if legal analysis and advice are required.
The law does not prescribe a period to apply for the registration of a mark. However, in the Philippines, there is a priority claim procedure available to trademark owners who have previously lodged an application for the same mark in another Paris Convention country or a World Trade Organization member country (other than the Philippines). The local Philippine application must be filed within six months from the date of filing of the earliest foreign application.
The minimum requirements to secure a filing date for a trademark application are as follows:
(a) An express or implicit indication that the registration of a mark is sought;
(b) The identity of the applicant;
(c) Contact details of the applicant or its agent/representative;
(d) A reproduction of the mark; and
(e) The list of the goods or services
The Nice classification of goods and services is followed in the Philippines. A single application may cover a single class or multiple classes of goods and/or services.
The Philippines may be designated through the Madrid Protocol.
Examination and grant
An application passes through substantive examination for registrability by an examiner of the Philippine Intellectual Property Office. If found allowable for registration, the application will be published for opposition. If not opposed within thirty days from its publication, the mark will be deemed registered at the end of the period to oppose.
Straightforward applications with no objections to registrability are usually published within 2 months from the filing date. Once a mark is deemed registered after publication, the certificate of registration will normally be issued within 2 months from the payment of the fee for the issuance of the certificate of registration.
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