Intellectual property serves as the foundation of innovation and creativity by protecting the rights of creators and innovators. In order to protect such rights, it is essential to register such intellectual property in the Philippines. Trademarks, among all property rights, emerge as the most prevalent and frequently registered form of intellectual property today.
Trademark registration is an essential step for protecting brands, products, and businesses in the Philippines. As defined by Republic Act No. 8293, or the Intellectual Property Code of the Philippines, trademarks are distinctive signs, symbols, logos, or expressions that identify and distinguish goods or services from those of others. They serve as valuable assets for businesses by creating brand recognition and consumer loyalty.
As laid down by the Court in the case Kho v. CA, [1] and as further defined by Section 121.1 of the Intellectual Property Code, [2] a trademark is any visible sigh capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods. [3] Essentially, a trademark can be a word, phrase, symbol, or design that distinguishes the goods or services of one party from those of others. Registering a trademark provides legal ownership and exclusive rights to use the mark in connection with specific goods or services.
In the Philippines, trademark registration is governed by the Intellectual Property Office (IPOPHL), which is responsible for granting and managing trademarks. IPOPHL is the government agency mandated by law to administer and implement state policies on intellectual property to strengthen the protection of its rights in the country, which include but are not limited to trademarks, copyrights and patents.
Trademark registration with the IPOPHL necessarily confers ownership of the mark upon the registrant. This legal process not only grants exclusive rights to use the trademark but also ascertains the registrant’s ownership over it, allowing for legal remedies against any unauthorized use or infringement by any other third party. As established by Art. 520 of the Civil Code,
“Art. 520. A trade-mark or trade-name duly registered in the proper government bureau or office is owned by and pertains to the person, corporation, or firm registering the same, subject to the provisions of special laws.” [4]
Concurrently, Article 522 of the same Code states that trade-marks and trade-names are governed by special laws. [5] This is further elaborated and defined by Section 122 of the Intellectual Property Code of the Philippines, to wit;
“Sec. 122. How Marks are Acquired. – The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law.” [6]
In the Philippines, the NICE classification of goods and services is used to categorize the use of the trademark with regard to the goods or services it supplies to the public. [7] All trademarks must designate a class (or multiple classes) to be registered in. There are a total of 45 classes, separated into two categories, with 34 for goods and 11 for services. Both goods and services can be registered for trademarks in the Philippines. A single application may cover a single class of goods and/or services or multiple classes of goods and/or services.
The process of trademark registration in the Philippines is fairly simple, generally involving the following steps:
- Submission of the trademark application to the IPOPHL, either online or in person, along with the required documents, complete list of NICE classifications, and proper payment of fees. To complete the registration process, one must declare their entity status. This entails categorizing the registering entity as either a small entity, if their assets amount to less than PhP 100 million, or a big entity, if their assets exceed PhP 100 million.
- The IPOPHL will examine the application to determine compliance with legal requirements and potential conflicts with existing trademarks.
- If the application meets all requirements, it will be published in the IPOPHL Gazette to allow for opposition by third parties.
- In the absence of opposition or a successful resolution thereof, the IPOPHL will issue a Certificate of Registration, granting exclusive rights to the trademark owner.
It is important to note that the term of protection or validity of a trademark registration in the Philippines is initially valid for ten years from the date of filing and can be renewed indefinitely for successive periods of ten years. Renewal applications must, however, be filed within six months before the expiration of the current registration or within six months after expiration with payment of a surcharge.
Upon successful registration, trademark owners have the exclusive right to use the mark in relation to the goods or services covered by the registration. Trademark owners may also avail of the legal remedies provided by law against any and all unauthorized use, infringement, or dilution of their trademark rights. Such remedies include civil remedies such as injunctions, damages, and seizure of infringing goods, as well as criminal penalties for trademark counterfeiting and administrative remedies of cancellation and prohibition of importation.
Trademark registration in the Philippines is a vital process for businesses and individuals seeking to protect their brand identities and business interests. By registering said intellectual property, trademark owners can secure exclusive rights to their marks and mitigate the risk of infringement.
Footnotes:
[1] Kho v. CA, G.R. No. 115758, 19 March 2002.
[2] Intellectual Property Code of the Philippines, Section 121.1.
[3] Id.
[4] Civil Code of the Philippines, Art. 520.
[5] Civil Code of the Philippines, Art. 522.
[6] Intellectual Property Code of the Philippines, Section 121.1.
[7] Intellectual Property Code of the Philippines, Section 144.