Trademarks

Trademark law in the Philippines is governed by the Intellectual Property Code of the Philippines (Rep. Act No. 8293) and the Rules and Regulations on Trade Marks, Service Marks, Trade Names, and Marked or Stamped Containers of 2023 (Trademark Regulations of 2023).

The salient provisions include the following: 

Registrability. A mark cannot be registered if it: (a) consists of immoral, deceptive or scandalous matter or disparages or falsely suggests a connection with persons, institutions, beliefs or national symbols, or bring them into contempt or disrepute; (b) consists of the flag or coat of arms or other insignia of any nation; (c) consists of a name, portrait or signature identifying a particular living individual except by his written consent, or of a deceased president of the Philippines, during the life of his or her spouse, except by written consent of the spouse; (d) is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) the same goods or services, or (ii) closely related goods or services, or (iii) if it nearly resembles such a mark as to be likely to deceive or cause confusion; (e) is identical with, or confusingly similar to an internationally well-known mark, whether or not registered in the Philippines, and used for identical or similar goods or services; (f) is identical with, or confusingly similar to, an internationally well-known mark that is registered in the Philippines with respect to goods or services which are not similar provided that use of the mark would indicate a connection between such goods or services and the registrant, and that the interests of the registrant are likely to be damaged by such use; (g) is misleading; (h) is generic for the goods or services that they seek to identify; (i) is genericized; (j) is merely descriptive; (k) consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (l) consists of colour alone; or (m) is contrary to public order or morality.

Types of marks that may be registered.Word, device, 3D, colour, motion, position, hologram, collective, and certification marks may be registered.

Power of attorney. A power of attorney is not required at the time of filing but may be required during examination 

Multi-class applications. Multi-class applicationsare allowed.

Refusal.The applicant shall have two months, extendible for an additional two months, to reply to a refusal. If the registration is again refused upon re-examination but the refusal is not stated to be final, the applicant may file another response. If the refusal is final, the applicant may file an appeal to the Director of Trademarks. 

Opposition.An opposition may be filed by any person who believes that he would be damaged by the registration of a mark within 30 days after the publication of the mark in the eGazette. 

Term of registration.Marks are registered for 10 years, renewable for 10-year periods, provided that the requisite declarations of actual use have been filed. 

Period to file declaration of actual use (DAU).A declaration of actual use must be filed (a) within three years from the filing date, which may be extended by six months; (b) within one year from the fifth anniversary of the registration; (c) within six months before expiration of the registration to one year from date of renewal; and (d) within one year from the fifth anniversary of each renewal.

Declaration of non-use. In lieu of a DAU, a declaration of non-use may be filed due to any of the following cases: (a) prohibition imposed by another government agency prior to putting the goods in the market or rendering of services; (b) issuance of a restraining order or injunction; or (c) the mark is the subject of an opposition or cancellation case, or is pending adjudication.

Cancellation.A petition to cancel a trademark registration may be filed with the Bureau of Legal Affairs (BLA) by any person who believes that he is or will be damaged by the registration of a mark: (a) within five years from the date of registration, or (b) at any time, if the registered mark becomes genericized, or has been abandoned, or its registration was obtained fraudulently or contrary to the IP Code, or if the registered mark is being used so as to misrepresent the source of the goods or services; or if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines during an uninterrupted period of three years or longer.

Other relevant rules

Other relevant rules governing trademarks in the Philippines include the following:

Amendments to the Rules and Regulations on Inter-Partes Proceedings (IPOPHL Memorandum Circular No. 22-013).This covers the procedure to be followed in trademark opposition and cancellation cases before the Bureau of Legal Affairs (BLA). The decision will be issued by an adjudication officer, whose decision may be appealed to the BLA Director within 15 days from receipt of the decision.

Revised Uniform Rules on Appeal in the Office of the Director General (IPOPHL Memorandum Circular No. 2020-041).The Rules provides for the procedure to be followed in appeals from the decisions or final orders rendered by the Director of Trademarks to the Intellectual Property Office of the Philippines (IPOPHL) Director-General.

Rules of Court. The Rules of Court provides for the modes of appeal from the Decision of the Director General to the Court of Appeals and from a Decision of the Court of Appeals to the Supreme Court.

Patents

Patent law in the Philippines is governed by the Intellectual Property Code of the Philippines (Rep. Act No. 8293 and the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs (IPOPHL Memorandum Circular No. 2022-016).

The salient provisions include the following:

Patentable inventions. Any technical solution of a problem in any field of human activity which is new, involves an inventive step, and is industrially applicable shall be patentable. It may be, or may relate to, a product, or a process, or computer-related inventions or an improvement of any of the foregoing. 

Right of priority. The applicant may claim priority from a patent application filed in another country which by treaty, convention or law affords similar privileges to Filipino citizens provided the local application is filed within 12 months from the date the earliest foreign application was filed and a certified copy of the foreign application together with an English translation is filed within six months from the filing date in the Philippines. 

Formality examination. A formality examination will be conducted and deficiencies should be corrected by the applicant

Substantive examination. The examiner shall assess whether the application complies with the laws, rules and formal requirements, and is patentable. If an objection or refusal is not traversed by the applicant and is declared final, a petition may be filed with the Director of Patents if the objection does not involve a refusal of a claim. Otherwise, an appeal may be filed. 

Cancellation of patents. Any interested person may file a petition with the Bureau of Legal Affairs (BLA) to cancel a patent or any claim thereof, or parts of the claim, on any of the following grounds: (a) that what is claimed as the invention is not new or patentable, (b) that the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art, or (c) that the patent is contrary to public order or morality.

Term of patent. Patents will be protected for 20 years from the filing date of the application

Annual fees. A n annual fee shall be paid upon the expiration of four  years from the date the application was published, and on each subsequent anniversary of such date.

Other relevant rules

Other relevant rules governing patents in the Philippines include the following:

Amendments to the Rules and Regulations on Inter-Partes Proceedings (IPOPHL Memorandum Circular No. 22-013). This covers the procedure to be followed in patent cancellation cases before the BLA. The decision will be issued by an adjudication officer, whose decision may be appealed to the BLA Director within 15 days from receipt of the decision.

Revised Uniform Rules on Appeal in the Office of the Director General (IPOPHL Memorandum Circular No. 2020-041). The Rules provides for the procedure to be followed in appeals from the decisions or final orders rendered by the Director of Patents to the IPOPHL Director-General.

Rules of Court. The Rules of Court provides for the modes of appeal from the Decision of the Director General to the Court of Appeals and from a Decision of the Court of Appeals to the Supreme Court.

Copyright

Copyright law in the Philippines is governed  by  the Intellectual Property Code of the Philippines (Rep. Act No. 8293) and the Revised Rules on Copyright Registration (IPOPHL Memorandum Circular No. 2020-025).

The salient provisions include the following:

Literary and artistic works. Literary and artistic works are original intellectual creations in the literary, scientific and artistic domain.

Unprotected subject matter. No protection shall extend to any idea, procedure, system, method or operation, concept, principle, discovery or mere data; news of the day and other miscellaneous facts having the character of mere items of press information; or any official text of a legislative, administrative or legal nature and any official translation thereof. 

Copyright registration. The author or creator of the work may apply for a certificate of copyright registration with the Bureau of Copyright and Other Related Rights (BCORR).

Denial of application. An application for copyright registration may be denied by the BCORR Director if (a) the work does not fit the statutorily defined categories of works under the copyright law; and (b) the work is the subject of a prior registration

Copyright or economic rights.Copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts:

1. Reproduction of the work or substantial portion of the work;
2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work;
3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental; 
5. Public display of the original or a copy of the work;
6. Public performance of the work; and
7. Other communication to the public of the work 

Fair use of a copyrighted work.The fair use of a copyrighted work for criticism, comment, news reporting, teaching, including limited number of copies for classroom use, scholarship, research and similar purposes is not an infringement of copyright. 

Moral rights.The author of a work shall have the following moral rights:

1. To require that the authorship of the works be attributed to him;
2. To make any alterations of his work prior to, or to withhold it from publication;
3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honour or reputation; and
4. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work.

Other relevant rules

Other relevant rules governing copyright law in the Philippines include the following:

Revised Uniform Rules on Appeal in the Office of the Director General (IPOPHL Memorandum Circular No. 2020-041). The Rules provides for the procedure to be followed in appeals from the decisions or final orders rendered by the Bureau of Copyright and Other Related Rights (BCORR) director to the IPOPHL Director-General.

Rules of Court. The Rules of Court provides for the modes of appeal from the decision of the Director-General to the Court of Appeals and from a decision of the Court of Appeals to the Supreme Court.

Industrial Designs

Industrial design law in the Philippines is governed by the Intellectual Property Code of the Philippines (Rep. Act No. 8293) and the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs (IPOPHL Memorandum Circular No. 2022-016).

The salient provisions include the following:

Definition of industrial design. An industrial design is any composition of shape, lines, colours or a combination thereof, or any three-dimensional form, which produces an aesthetic and ornamental effect in their toutensemble or when taken as a whole, provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft.

Non-registrable industrial design. Industrial designs that are dictated essentially by technical or functional considerations to obtain a technical result; or which are mere schemes of surface ornamentations existing separately from the industrial product or handicraft; or which are contrary to public order, health, or morals, are not registrable

Substantive conditions for protection. Only industrial designs that are new or ornamental shall benefit from protection under the IP Code. 

Several industrial designs in one application. Two or more industrial designs may be the subject of the same application provided that they relate to the same sub-class of the international classification or to the same set or composition of articles. 

Formality examination. A formality examination will be conducted.

No substantive examination. Industrial design applications shall be registered without substantive examination.

Term.The registration of an industrial design shall be for a period of five years from the filing date of the application, and may be renewed for not more than two consecutive periods of five years each.

Cancellation of design registration. Any person may petition the Bureau of Legal Affars (BLA) director to cancel an industrial design at any time during its term if the subject matter (a) is not registrable; (b) is not new; or (c) extends beyond the content of the application as originally filed.

Other relevant rules

Other relevant rules governing industrial design law in the Philippines include the following:

Amendments to the Rules and Regulations on Inter-Partes Proceedings (IPOPHL Memorandum Circular No. 22-013). This covers the procedure to be followed in industrial design cancellation cases before the BLA. The decision will be issued by an adjudication officer, whose decision may be appealed to the BLA Director within 15 days from receipt of the decision.

Revised Uniform Rules on Appeal in the Office of the Director General (IPOPHL Memorandum Circular No. 2020-041). The Rules provides for the procedure to be followed in appeals from the decisions or final orders of the Bureau of Copyright and Other Related Rights (BCORR) director to the IPOPHL Director-General.

Rules of Court. The Rules of Court provides for the modes of appeal from the decision of the Director-General to the Court of Appeals and from a decision of the Court of Appeals to the Supreme Court.

Enforcement – Key remedies

Administrative complaint with the Bureau of Legal Affairs

An administrative complaint for violation of the IP Code or IP laws may be filed with the Bureau of Legal Affairs, which may impose administrative penalties such as a cease and desist order, condemnation or seizure of products which are subject of the offense, and imposition of administrative fines.

Trademarks – Civil actions

Trademark infringement.The owner of a registered mark may recover damages for trademark infringement. 

False or fraudulent declaration.Any person who shall procure registration of a mark by a false or fraudulent declaration or representation, or by any false means, shall be liable in a civil action for damages sustained. 

Unfair competition.Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods he manufactures or deals in for those of another who has established goodwill, shall be subject to a civil action for unfair competition.

False designations of origin; false description or representation.Any person who uses any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, mistake or deception shall be liable to a civil action for damages and injunction.

Trademarks – Criminal action

Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from two years to five years and a fine ranging from P50,000 to P200,000 (US$860 to US$3,430) shall be imposed on any person who is found guilty of trademark infringement, unfair competition, false designation of origin, or false description or representation.

Patents and industrial designs

Civil action for infringement. A patentee/registrant or anyone with any right, title or interest in and to a patented invention or registered industrial design, whose rights have been infringed, may bring a civil action for damages.

Criminal action for repetition of infringement. If infringement is repeated after finality of the judgment against the infringer, the offender shall, upon conviction, shall suffer imprisonment for the period of not less than six months but not more than three years and/or a fine of not less than P100,000 (US$1,700) but not more than P300,000 (US$5,145).

Copyright

Civil action for copyright infringement. A copyright infringer shall be liable to an injunction, to pay for damages, to deliver documents evidencing sales and to deliver for destruction all infringing copies or devices, among others. 

Criminal action for copyright infringement.Any person infringing a copyright shall be guilty of a crime punishable by imprisonment of one year to three years plus a fine ranging from P50,000 to P150,000 (US$860 to US$2,575) for the first offense, and longer terms of imprisonment and higher fines for subsequent offenses.

Application for issuance of a request to an ISP to block or disable access to websites. A copyright owner or right holder may file an application with the IPOPHL Enforcement Office (IEO) for the issuance of a request to an ISP to block or disable access to websites against a pirate website by filing a verified complaint.