PHILIPPINES Trends and Developments Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Kyle Gino Salazar, Villaraza & Angangco
stitutes unfair competition is granted to a duly regis - tered GI. Article 22 (3) of the TRIPS Agreement requires a mem - ber country to “ex officio if its legislation so permits or at the request of an interested party, refuse or invali - date the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark for such goods in that member is of such a nature as to mislead the public as to the true place of origin”. But it is appar - ent from the provision that an implementing law is necessary. Thus, the IPOPHL may refuse a trade mark registration based on a foreign GI, whether or not reg - istered in the Philippines, provided that there is a law, such as the IP Code, permitting such refusal. Curiously, the issued objections of this nature do not raise a specific provision under the IP Code or Trade - mark Regulations as a basis or support. Instead, the objections merely require the submission of proof of authority from the owner/s of the foreign GI, and appear as an ex officio enforcement of a foreign GI in the Philippines without the need for prior registration under the 2022 GI Rules. On this point, foreign GIs seem similarly situated as unregistered well-known marks under the IP Code. The 2022 GI Rules address the interaction between GIs, especially foreign GIs, and trade marks only limit - edly. Specifically, Rule 27 grants exceptions to trade marks that were used, applied for and/or registered in good faith before the effectivity of the Rules or before the registration or protection of the foreign GI in its country of origin. The adoption of the 2022 GI Rules will not prejudice the eligibility for, or validity of, the registration of the trade mark, nor the right to use such trade mark, on the basis that it is identical or similar to a GI. Based on this, the reckoning point for the protection of foreign GIs against misappropriation and misuse as trade marks in the Philippines appears to be their date of protection/registration as a GI in their country of origin. However, Rule 27 is notably an exception and does not lay out a positive right or express prohibition clearly applicable to the trade mark examination procedure, which leaves uncertain - ties and inconsistencies as to its implementation.
The heightened level of trade mark examination reflects the IPOPHL’s growing sensitivity to the eco - nomic and reputational value of origin-linked prod - ucts. It also underscores the Philippines’ commitment to respecting international GI protection, preventing consumer deception and ensuring that geographical indications, both local and foreign, are safeguarded against misuse. Nonetheless, the absence of clearer regulations supporting GI-based proscriptions within the trade mark registration system is a deficiency that should be addressed. It leaves room for doubt as to the correctness of the objection, creates vagueness in its interpretation, and leaves its implementation to the discretion of the examiners, which ultimately results in inconsistency. Thus, while the implementation of a sui generis sys - tem for GIs under the 2022 GI Rules and the increased prominence of GIs in the Philippines are boons that better the country’s overall IP framework, there is still a need for clearer rules that define and frame the inter - action between trade marks and GIs in order to max - imise the benefits granted by both systems. Implications for brand owners and applicants With the effectivity of the 2022 GI Rules, brand own - ers and trade mark applicants in the Philippines must now navigate a more complex and sensitive regulatory environment whenever their branding involves place names, origin-linked terms or culturally significant designations. Consequently, GIs should not be treated simply as descriptive add-ons, but rather as protected intellectual property deserving of rigorous scrutiny. They are important rights that can even be leveraged against the trade mark rights of private enterprises and brand owners. The GI protection framework laid down in the 2022 GI Rules delivers meaningful advantages to both for - eign and local stakeholders. Foreign GI owners who benefit from their long-established designation and strong producer organisations may easily obtain pro - tection under the Philippine system. Notably, protec - tion for foreign GIs even extends against trade marks, notwithstanding a lack of registration in the Philip - pines, as trade mark examiners now consider foreign GI protection when assessing conflicts. Meanwhile, local GI holders stand to gain the same protections
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