PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Maria Patricia Cruz and Kyle Gino Salazar, Villaraza & Angangco
• for unregistered well-known marks, protection is limited to identical or similar goods or ser - vices for which the mark is well known; and • for registered well-known marks, the exclu - sive right to use extends even to dissimilar goods or services, provided that such use suggests a connection to the registrant that may cause damage or prejudice. When determining if a mark is well known, Phil - ippine authorities consider the perception of the relevant sector of the public rather than the gen - eral public, 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 distinctive - ness; • 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 globally; • the record of successful enforcement or pro - tection of rights; • the results of litigation on the mark’s well- known status; and • the presence of identical or similar marks registered 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; the mark’s use, promotion and market
presence in the Philippines is just one factor among many. 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 protect - ed, nor can generic, commonplace or descrip - tive marks. In some cases, however, non-distinctive marks such as descriptive, colour or functional marks, may be registrable if they have acquired second - ary meaning. To prove acquired distinctiveness, the applicant must show that it has been using the trade mark 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 consumers to whom the goods or ser - vices are addressed, including both actual and potential consumers. The following evidence, among others, may be submitted 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 con - sumer organisations; • reports on the type, scope and extent of advertising campaigns; • documents evidencing the advertisements and promotional campaigns in the media;
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