If you’re in business, one of the things you must do in order to protect it is to apply for a trademark registration. It is only with this registration that you will be able to take legal action against trademark infringement by third parties who use your product names, designs, logos or packaging without your authority.
In the Philippines, trademark registration is handled by the Intellectual Property Office (IPO). Below are the important information you must know before you apply.
Trademark Registration in the Philippines
What Is a Trademark?
The IPO defines a “Mark” as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods”.
What Types of Marks Cannot Be Registered?
Under Rule 101 of the Rules & Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers, the IPO identifies certain categories wherein marks cannot be registered. It is important to double check if your mark falls under these categories before attempting to file for registration.
How Are Rights to the Mark Acquired?
One can acquire rights to a mark by registering it with the Bureau of Trademarks of the IPO. Only marks duly registered with the IPO can provide you with protection against infringement.
What Are the Benefits of Registering a Trademark?
A trademark registration can benefit you in the following ways:
• A trademark gives your business an identity and sets it apart from your competitors. It likewise distinguishes your products from those of your competitors.
• A trademark is of great value and is considered an asset and property.
• A trademark serves to protect your business from those who might try to benefit from everything that you were able to accomplish throughout the years.
• In case of trademark infringement, owners of registered marks can avail of civil and criminal actions as well as administrative actions from the Bureau of Legal Affairs of the IPO.
What Are the Trademark Application Requirements?
For the initial filing of an application for registration of a trademark in the Philippines, all applications must be addressed to the Director and shall be in Filipino or English. The requirements must include a request for registration, information regarding the applicant as well as about the trademark to be registered. A complete list of requirements can be found under Part 4, Rule 400 under the Rules & Regulations on Trademarks, Service Marks, Tradenames and Marked or Stamped Containers.
What Are the Filing and Prosecution Procedures?
The filing and prosecution procedures are conducted in five (5) phases:
3. Publication in eGazette
4. Opposition (if any)
What Is the Average Time to Register a Trademark?
It can take an average of 18 to 24 months to register a trademark.
What Is the Period of Protection of a Trademark Registration?
The period of protection of a trademark registration is ten (10) years from the date of registration. It can be renewed for a period of ten (10) years at a time.
If you’re planning to file an application for a mark, you must do it as soon as possible because the IPO follows a first-to-file rule. This means that no one else can file an application for the same mark covering the same goods after your date of filing.