How to Register a Trademark in the Philippines

August 20, 2024

Trademark registration in the Philippines is vital for businesses to protect their brand identity. It grants the trademark owner exclusive rights to use the mark and safeguards against potential infringement. Here’s a step-by-step guide on registering a trademark, referencing best practices and legal requirements from IPOPHL (Intellectual Property Office of the Philippines) and expert legal insights.

Step 1: Pre-Filing Considerations

Before applying for a trademark, it’s important to ensure that your trademark is unique and does not conflict with existing trademarks. This involves:

Trademark Search – Conduct a thorough search using IPOPHL’s eTM File System or the ASEAN TMview to check if similar marks already exist. This preliminary check helps avoid rejection due to conflicts with registered trademarks.
Classification of Goods and Services – Trademarks must be filed according to the Nice Classification, an international system categorizing goods and services. Identifying the correct class for your product or service is essential, as it determines the scope of protection.
Prepare the Mark – A trademark can include names, symbols, logos, sounds, colors, or even scents that are distinctive to your business. Ensure that your mark is distinctive and not generic.

Step 2: File the Application

After confirming that your trademark is unique and falls within the correct classification, you can proceed with the filing:

Online Filing – IPOPHL allows trademarks to be filed online through its eTM File platform. This provides a streamlined process, reducing the need for physical submissions. However, in-person filing is still an option for those who prefer it.
Requirements for Submission:
- Duly accomplished application form – Includes details of the applicant, the trademark itself, and the corresponding class under which the application falls.
- Explicit representation of the trademark – A high-quality digital image or representation of the mark.
- Filing fees – Fees vary depending on the number of classes applied for and whether the applicant claims priority rights based on a foreign trademark application.
Madrid Protocol – If you wish to register your trademark internationally, the Philippines is a member of the Madrid Protocol. This allows you to extend your protection to other member countries with a single application.

Step 3: Examination and Publication

After filing, the application goes through a series of reviews:

Formal Examination – IPOPHL will first check if the application meets all formal requirements, such as correct classifications and completeness of documentation.
Substantive Examination – This stage involves determining whether the mark is distinctive and does not conflict with existing trademarks. If issues arise, such as similarity with an existing mark, the applicant will be notified and given a chance to respond or amend the application.
Publication – If the application passes formal and substantive examinations, the trademark is published in the IPOPHL e-Gazette. This publication allows third parties to oppose the registration if they believe it infringes on their rights. The opposition period lasts for 30 days.

Step 4: Issuance of Certificate

If no oppositions are filed, or if oppositions are resolved in favor of the applicant, IPOPHL will issue a Certificate of Registration, officially granting exclusive rights to the trademark owner for ten years. This certificate provides legal protection against unauthorized use of the mark.

Step 5: Post-Registration Requirements

Trademarks in the Philippines are valid for ten years, and renewal is possible indefinitely, provided the following conditions are met:

Declaration of Actual Use (DAU) – This must be filed within three years from the registration date and every five years after that. Failure to file the DAU may result in the cancellation of the trademark.
Trademark Renewal – Renewal applications must be filed within six months before the expiration date of the registration. A grace period of six months is also provided, but additional fees may apply for late filing.

Is Assistance Available?

Yes, we can assist you. Trademark registration in the Philippines is a straightforward yet critical process for businesses looking to protect their brand. By following the steps outlined, from conducting a preliminary search to filing and maintaining the trademark, businesses can secure legal protection for their intellectual property. Whether applying domestically or extending protection internationally through the Madrid Protocol, the IPOPHL provides a robust framework to safeguard trademarks.

Contact us now to schedule an initial consultation with one of our trademark specialists to discuss how we can assist you register your trademark(s) for your business through any of the following channels: