While the global pivot to technology-based business operations currently grows at a substantially exponential rate, it is worth reminding that intangible aspects of a business are equally worth protecting as with any business’ capital assets. Under such a premise, a trademark registration always comes in handy, if not essential, in protecting a business identity and goodwill. Here are some interesting points about trademark registration in the Philippines which will prove valuable both to local and foreign registrants.
1. The Philippines is a member of the Madrid Protocol
International filing of trademark registrations can be done in the Philippines because the country is a member of the Madrid Protocol. For the uninitiated, the Madrid Protocol is an international convention which allows for the registration and maintenance of trademarks worldwide, through its member countries. Right now, there are currently 122 member countries where a registrant may choose for his trademark application to take effect in.
2. Foreign-based applicants need to appoint a local representative
If you or your company is based outside the Philippines, the prosecution of your trademark applications must be done through an appointed local representative. All responses to objections including office actions and communications to the IP Office must be made through the foreign-based applicant’s duly appointed representative with a local address in the Philippines. To such end, the execution of a simple power of attorney appointing a local counsel or representative would do the trick.
3. Registration requires the regular submission of proof of use
Shelving a trademark is not a good idea in the Philippines. In the Philippines, trademark registration does not end with the issuance of the certificate of registration. A registrant has to maintain the active status of his mark by submitting proof of use periodically. The IP Office calls this submission as the Declaration of Actual Use or DAU. Trademark owners should always note of the DAU requirement because the implication of non-filing of the DAU is costly – the removal of the registered mark in the trademark register.
4. Only visible marks can be registered
By definition, the law requires that for a mark to be registered in the Philippines, it must be a visible one. While other jurisdictions already accept the registration of non-traditional marks which are not visible to the naked eye (think of scent marks and sound marks), the same is not true in the Philippines. Nonetheless, variations of visible marks such as wordmarks, figurative marks such as logos and devices, three-dimensional marks, and even labels or stamped containers can be registered in the Philippines.
5. There are no special registers
Unlike other IP Offices which has special registers for special marks like well-known marks, generic marks, or defensive marks, the Philippines only has one principal register. Trademarks in the Philippine are generally classified as active or inactive with active marks being the only ones retained in the principal register.