PHILIPPINES Trends and Developments Contributed by: Patricia A O Bunye, Anica Angela G Gomez, Angel Rae N Balbin and Bianca Marie J Angela M Rañola, Cruz Marcelo & Tenefrancia
of Trademarks’ decision may be appealed before the IPO Director General in accordance with the Philippine Uniform Rules on Appeal. Any interested person who may be damaged by such declaration may file with the Director of Trade - mark a Notice of Third-Party Observation within one month from the publication of the same. After anoth - er month from the Director of Trademarks’ receipt of such Notice, a verified and written observation must be filed, which – together with any subsequent com - ment from the applicant – will be considered by the Bureau of Trademarks in deciding whether to grant the declaration. In the absence of a Notice of Third-Party Observation, the mark will be declared as well-known on the 31st day following the publication of the declaration, after which a certificate shall be issued, and the declaration shall be entered in the Register. Validity and maintenance requirements The declaration of well-known status is valid for ten years and renewable for periods of ten years, provided that the registrant submits the following within one year from the fifth anniversary of the declaration, and upon each renewal: • proof of continuous use in commerce (eg, receipts, actual labels, signages, bills of lading, product photos bearing the well-known mark); and • proof of well-known status (eg, advertisements, certificates of registrations, financial statements). Such evidence of use shall be submitted in addition to the Declaration of Actual Use, which must be filed within three years from the mark’s filing date, five years from its registration date and one year from its renewal date. The following shall lead to the revocation of the dec - laration: • failure to renew the declaration within six months prior to its expiration or within six months after its expiration upon payment of surcharge; • failure to submit proof of continuous commercial use; or
• petition for revocation with substantial evidence that the mark is no longer well-known. Trade mark owners whose marks have previously been declared well-known by a competent authority need not submit an application and may simply file a Manifestation with the Bureau of Trademarks, attach - ing evidence of such declaration. Proof of continuous commercial use of such marks must also be submit - ted within five years from the effectivity date of the Regulations. The recognition of a mark’s status as well-known is beneficial as it helps prevent the registration of identi - cal or confusingly similar marks, including those cov - ering goods and services that are dissimilar to the well-known mark. This helps safeguard the mark from dilution or misuse in unrelated industries. Moreover, marks that are not yet registered in the Philippines but are declared well-known under this procedure are also protected with respect to identical or similar goods and services. The declaration of a mark as well-known shall also constitute prima facie evidence of the well-known sta - tus of the mark with respect to the goods and services stated in the application, and shall result in the inclu - sion of the mark in the Register, which the IPO will consider in examining trade mark applications. Use of Copyrighted Musical Works in Businesses While legal reforms lend support to franchise busi - nesses, the protection granted to them is counter - balanced by the right of other intellectual property owners to the protection of their creations. Thus, individuals and entities that seek to establish a busi- ness in the Philippines must consider recent Philip - pine jurisprudence on copyright infringement. This is particularly important for businesses that intend to play background music in their establishments, such as radio broadcasts played as background music in restaurants. In Filipino Society of Composers, Authors and Pub- lishers, Inc. v Anrey, Inc. , G.R. No 233918 (09 August 2022), the Supreme Court upheld the right of the Fili - pino Society of Composers, Authors and Publishers,
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