PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
including awareness gained through promotion of the mark in the Philippines. The following criteria help assess whether a mark is well known: • the duration, extent and geographic scope of the mark’s use; • the market share of the goods/services linked to the mark, both locally and globally; • the degree of inherent or acquired distinctiveness; • the reputation or image quality of the mark; • the extent and exclusivity of registration worldwide; • the extent and exclusivity of use worldwide; • the commercial value attributed to the mark glob - ally; • the record of successful enforcement or protection of rights; • the results of litigation on the mark’s well-known status; and • the presence of identical or similar marks regis - tered or used for similar goods/services by other entities. No single factor is conclusive, and not all criteria need to be met for a mark to be considered well known. A brand owner may secure a declaration of a well- known mark from the IPOPHL, which shall serve as prima facie evidence of the well-known status of the mark in the Philippines with respect to the goods and services stated in the application. This is an ex parte procedure before the Bureau of Trademarks. 2.2 Essential Elements of Trade Mark Protection A mark may be registered in the Philippines if it is both visible and distinctive. Non-visible marks (sound, taste, touch or scent) cannot be protected, nor can generic, commonplace or descriptive marks. In some cases, however, non-distinctive marks such as descriptive, colour or functional marks may be registrable if they have acquired secondary meaning, which is proven by showing that they have been used exclusively and continuously in the Philippines for at least five years prior to the claim of distinctiveness
and that, as a result, the public has come to associate the mark with the applicant’s goods only. Acquired distinctiveness must be assessed in light of the actual or presumed perception of the relevant average consumer, which refers to the sector of con - sumers to whom the goods or services are addressed, including both actual and potential consumers. The following evidence, among others, may be sub - mitted to prove acquired distinctiveness: • figures of turnover and sales in the country; • figures of investment in advertising in the country; • consumer and market surveys; • reports from business associations and consumer organisations; • reports on the type, scope and extent of advertis - ing campaigns; • documents evidencing the advertisements and Under the IP Code, the owner of a registered mark has the exclusive right to use said mark in connection with the goods and/or services specified in the certificate of registration, and those related thereto, and the right to prevent all third parties from using marks that are identical or confusingly similar to its own. Only a regis - tered trade mark owner may claim trade mark infringe - ment against an identical or confusingly similar mark. A trade mark registration is valid for ten years from its date of registration, during which time all the rights of the holder shall persist. Registration may be renewed every ten years. A certificate of registration of a mark further serves as prima facie evidence of: • the validity of the registration; • the registrant’s ownership of the mark; and • the registrant’s exclusive right to use the mark in connection with the goods and services listed and those related thereto. promotional campaigns in the media; • catalogues, price lists and invoices; or • management reports. 2.3 Trade Mark Rights
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