Yes, you can file your trademark application online in the eTM facility.

This online application should be filed by a resident applicant or entity.

Online filing of trademark application can save you time and energy

Foreigners who don’t have a business or who don’t live in the Philippines cannot file through the eTM. They must have a resident agent here, primarily so that the IPOPHIL can easily serve notices and coordinate with them.

If you are a foreigner who wants to register a trademark, it’s best to find a trusted agent in the Philippines.

A foreigner should have a resident agent in the Philippines.

It is important to determine the trademark’s application date because you’ll need to submit a DAU within 3 years from the application date.

The application date is the date where you paid for a complete application [Rule 500 of the IRR].

Keeping in mind the filing date and the amount to be paid is important!

Remember that this is a complete application!

If the application is incomplete, IPO PHIL office will notify you.

You will have 2 months to provide the missing information from the mailing date of notice.

Missing the 2 month deadline will mean that your application will be deemed not filed.

The filing date will be the date when IPO PHIL office received the completed information instead of the payment date if you’ve already previously paid.

Note that this is subject to priority claim as well.

Priority claim can help you get an earlier application date if the same trademark is already filed abroad.

A priority claim is a trademark claimed filed with another country, that has reciprocal rights with the Philippines.

If you filed a priority claim in one of these countries in the last 6 months, you can use this previous filing to claim an earlier application date.

An earlier filing date is crucial in determining who has the rights to a trademark, say for instance in the situation where there are 2 people who filed very similar trademarks and are contesting their rights to it.

Priority examination is available only for specific cirumstances

When you apply for a trademark, you will can ask for a priority examination.

A priority examination allows your application to have priority in IPOPHIL’s processing under specific situations.

There are 8 reasons you can file for priority action.

The reason you’ll probably use is when you refile your rights to a mark that was cancelled due to not filing the DAU or when your mark was abandoned and can no longer be revived.

The other priority filing reasons are when countries or international organizations file their logos, or for sports competitions, trade missions, educational activities, domain names or ICT infrastructure where there is a short timeline/need to register early to promote goodwill.

The fill list is in Rule 605(b) Rules and Regulations on Trademarks, Service Marks, Trade Names And Marked Or Stamped Containers as amended

Use your original, non scandalous trademark to avoid application denial

A trademark is denied on several grounds.

For instance, a trademark will be refused if it has scandalous matter or uses national symbols of the Philippines and other countries.

It will also be refused if it bears the likeness of a person without his consent or if it is too similar to another existing trademark in the same or closely related goods and services.

A full list is itemized in Rule 101 Rules and Regulations on Trademarks, Service Marks, Trade Names And Marked Or Stamped Containers as amended.

An appeal is available for denied appilcation.

If an Examiner has denied your trademark, you will be notified.

You will have 2 months to respond, and can extend this another 2 months upon written request.

An Examiner will reassess your trademark and decide whether to sustain the objection or not.

If the objection is sustained in a Final Action, you can appeal to the Director.

If you don’t respond within the time period, the application will be considered abandoned. It can be revived 3 months from the date of abandonment if the reason was fraud, accident, mistake, or excusable negligence but it can only be revived once on the same issue.

A trademark has to be used in your business so that your rights to it are maintained.

Proof of this use is filed at the IPOPHIL on a set schedule through the Declaration of Actual Use (DAU) form. It’s really important not to miss these deadlines since there are no extensions with the exception of the 3rd year DAU (but you still have to request this extension before the 3rd year DAU deadline).

The submission date of DAU is the date 3 years after the filing was accomplished

The filing schedule of the DAU is:

         1. Within 3 years from the application date

         2. Within 1 year from the 5th anniversary of registration

         3. Within 1 year from the renewal date

         4. Within 1 year from the 5th anniversary of renewal

Take note that the 3rd year DAU deadline is filed from the application date (subject to the priority claim), NOT the registration date.

All other DAU deadlines are from the registration date.

There are different fees according to classes and size of the entity

The information you need for the DAU is the period filed for, general information on you and your address, and application/registration date and numbers applicable. It must also include the classes being filed for, the location it is being sold at, and the proof of use.

Proof of use is pretty straightforward. It would be brochures, pages from your website, contracts with the mark, receipts showing that the transaction was in the Philippines, etc. It is your trademark being used day to day.

Note – don’t forget to notarize this!

When someone is using your trademark (or something confusingly similar), you can either file a case immediately or lodge an administrative complaint at the IPOPHIL.

Administrative complaint

Trademark infringment can be filed administratively in IPOPHIL office

If you choose to first lodge an administrative complaint at the IPOPHIL, you would lodge it at the Intellectual Property Rights Enforcement Office (IEO). It would be assigned to an officer to evaluate and recommend action.

Note that administrative complaints are only possible when damages are not less than Php 200,000.

Fines and penalties are:

        1. Not less than Php 5,000 nor more than Php 150,000

        2. An additional fee of Php 1,000 for each day of continuing violation

These are in addition to other administrative actions that can be taken by the office such as seizure of products, cancellation of permits, etc. [Section 10.2 (b) RA 9283,

Court case

Sometimes resorting to a full blown court case is necessary

You can also choose to file a case.

If a case is filed, you can file a civil case or a criminal case (new rules of procedure will be in effect Nov 2020).

Some common questions on trademark infringement cases are what the penalties are.

In an infringement case, you can file for damages from the infringer for the amount that you would have made or the profit the which the infringer actually made due to the infringement.

This can also be a percentage of your gross sales of the value of the services in connection with which the mark or trade name was used.

This can be doubled if there was intent to deceive.

The court can also grant an injunction and order the infringing material destroyed or disposed of.

In criminal cases, a fine from Php 50,000 to Php 200,000 and imprisonment from 2 to 5 years can also be levied.