PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Maria Patricia Cruz and Kyle Gino Salazar, Villaraza & Angangco
from being distinctive. 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 combination is defined by a given form. Other - wise, it must be proven to have acquired distinc - tiveness through extensive use. Position marks also require non-functionality to be registrable. 4.2 Trade Mark Register The IPOPHL Trademarks Registry is publicly accessible through the WIPO Global Brand Database at branddb.wipo.int. There is no sup - plemental register. A trade mark search is not required before filing a trade mark application, but it is recommend - ed 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 of Registration and paying the pre - scribed fees within six months before the expira - tion of the original term. The Request for Renew - al may be also filed within six months after the expiration of the term of the mark, subject to the payment 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 regis -
tration will be removed, even if renewal has been granted. An expired trade mark registration can no longer be revived. The remedy of the applicant is to file a new trade mark application for the same mark. 4.4 Application Requirements Documentary Requirements for Trade Mark Applications A trade mark application is filed online via the IPOPHL’s eTMFile system. The following are required: • the applicant’s name, address, nationality or place of incorporation; • a list of goods/services with Nice Classifica - tions; • priority claims, if any, with documentation; • details for marks with colour, 3D features or device components; • clear mark copy in JPEg, format; and • a signed Special Power of Attorney (SPA), if applicable. Marks must be reproduced as used or intended for use with the specified goods/services. Multi - ple-class applications are allowed, with the filing fee multiplied based on the number of classes included. Application Procedure After filing, the application undergoes examina - tion within two months. If allowed, a Notice of Allowance is issued; otherwise, an office action is sent, requiring a response within two months (extendible for another two). Permitted applica - tions are published in the IPOPHL e-Gazette for opposition. If unopposed within 30 days, the mark proceeds to registration upon payment of fees.
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