PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
The decision of the ODG becomes final and executory 15 days after receipt of a copy thereof by the parties, unless appealed to the Court of Appeals. No motion for reconsideration of the decision or order of the ODG is allowed. Amendments/corrections of the application are allowed only if they are substantial in nature, and upon written request and payment of the required fee. 3.10 Related Rights Certain copyrightable works can also be protected by other forms of IP rights, such as trade marks and industrial designs. A name or advertising slogan that falls squarely under trade marks, logos and figurative devices can be protected under both copyright and trade marks if it complies with the requirements of each protection. In the Philippines, trade mark rights are primarily established through registration. A trade mark owner acquires through valid registration the exclusive right to use a mark for specific goods and/or services, and to prevent others from using the same or similar mark for the same or related goods and/or services. Only a registered trade mark owner can file a trade mark infringement claim against the unauthorised use of an identical or confusingly similar mark. Prior use is no longer recognised as a means of claim - ing ownership over a mark that was first used after the IP Code came into effect. Nonetheless, prior use can be the basis of a claim of fraudulent or bad-faith registration, and unfair competition. 4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration As a general rule, the IPOPHL applies the same requirement of distinctiveness for the registrability of marks. However, additional requirements may apply to certain types of marks. Non-traditional marks often need to demonstrate acquired distinctiveness to qual - ify for registration.
For trade dress, the appearance of products or pack - aging must be non-functional apart from being dis - tinctive. Applicants often need to prove secondary meaning, showing that the trade dress has become recognised as a source identifier. Colour marks can be registered if the colour or com - bination is defined by a given form. Otherwise, it must be proven to have acquired distinctiveness through extensive use. Position marks also require non-functionality to be registrable. 4.2 Trade Mark Register The IPOPHL Trademarks Registry is publicly acces - sible through the WIPO Global Brand Database at branddb.wipo.int. There is no supplemental register. A trade mark search is not required before filing a trade mark application, but it is recommended in order to ensure that there are no obvious impediments to the mark’s registration. Notably, the online application system of the IPOPHL includes an automatic cursory search as well. 4.3 Term of Registration A trade mark registration is valid for ten years from the date of registration. It may be renewed perpetually every ten years by filing a Request for Renewal and paying the prescribed fees within six months before the expiration of the original term. The Request for Renewal may also be filed within six months after the expiration of the term of the mark, subject to the pay - ment of a surcharge equivalent to 50% of the required government fees. Proof of continued use in commerce is not required at the time of filing the Request for Renewal. However, it is required within one year from the date of renewal. Otherwise, the registration will be removed, even if renewal has been granted. An expired trade mark registration can no longer be revived. The remedy for the applicant is to file a new trade mark application for the same mark.
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