PHILIPPINES Trends and Developments Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Kyle Gino Salazar, Villaraza & Angangco
ing to the product specifications in the manual of specifications. In addition, qualified foreign applicants are required to submit proof issued by a competent agency of the government or any private certifying entity, showing that the subject of the application is a registered or protected GI. The application will undergo a formal and substantive examination, similar to a trade mark application. A GI will be refused registration if it falls under any of the following prohibitions: • contrary to laws and regulations, public order, pub - lic policy or morality; • GIs of foreign countries that are not protected in their country or territory of origin, or have ceased to be protected there; • those which mislead or deceive the public as to the characteristic, nature, quality, place of origin or production process of the good and/or its use; • those which consist exclusively of, or are identical to, a generic, common or customary name of the goods in the Philippines and the GI sought to be registered will be applied for the same goods; • those which are identical or confusingly similar to the name of a plant variety or animal breed and are likely to mislead the consumer as to the true origin of the goods; • those which do not fall within the prescribed defini - tion of a GI; and • those which are identical or confusingly similar to, or an evocation of, an earlier filed or registered GI in the Philippines or in a treaty or international agreement of which the Philippines is a member in respect of the same goods or closely related goods as to cause confusion. Once the Examiner determines that the requirements for grant have been complied with, the application will be published in the IPOPHL’s E-Gazette for a period of three months. Within one month from the publication, any interested party who believes that they may be damaged by the GI’s registration may file a Notice of Third-Party Observation, followed by a verified writ - ten observation with its supporting documents within one month after. The applicant has the opportunity to
file its comment on the Observation within one month from receipt of an order to this effect. A registered GI is protected for an unlimited term until or unless revoked with finality, based on any of the following grounds: • the conditions for protection specified under the 2022 GI Rules have not been fulfilled; • there has been a change in the geographical origin of the goods, including the natural and human fac - tors that are determinative of the quality, reputation or characteristics of the goods bearing a GI, and such change results to the disqualification; • based on the ruling or decision of a court or tribu - nal, the applicant/registrant has no effective control over the use of the GI, standards of production of the goods and other product specifications; • the registration of the GI was obtained through false statements and documents during the course of the application; or • the registered or protected GI has been proven to be generic for, or a common or customary name of, the goods covered thereby in the Philippines prior to the grant of protection. Geographical indicators and trade marks While GIs are a distinct class of IP rights now protect - ed under a separate and independent system from the trade mark registration system, GIs and trade marks have always had substantial interactions under the IP Code. Before the 2022 GI Rules came into effect, foreign GIs obtained protection in the Philippines as a trade mark – usually as a collective mark. Based on this, registrants of GI trade marks could actively enforce their rights against third parties, while trade mark examiners could proscribe the registration of identical or confusingly similar marks under the IP Code. However, since trade mark registration and protection necessitated distinctiveness, GIs that use geographic names or terms could be disclaimed or stripped from trade marks, and only the remaining non-descriptive elements could be enforced. For example, “Guimaras Mangoes” (the first GI registered under the 2022 GI Rules) was registered as a collective mark covering Class 35 “business management; pre-certification of
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