Statutory basis: Intellectual Property Code of the Philippines (1997)
Registration process: Filing, examination, publication in the official gazette, opposition, if no opposition is filed during the 30-day period, registration and issuance of the certificate follows
Classification: Nice classification of goods and services, 45 classes
Common objections: Similarity with prior application or registration, contrary to public morals, descriptiveness
Opposition period: Thirty (30) days from release of the official gazette
Validity: Ten (10) years; Renewable for the same period
Intent to use: Not allowed; Declaration of actual use must be filed within three (3) years from filing date and another one within five (5) years from registration date. Non-compliance with result in automatic deletion of the registration at the trade mark registry.
Enforcement: Buying of goods in question; secure warrant to search and seize; File case with the Bureau of Legal Affairs for infringement and/or unfair competition
Remedies: Cancellation of registration; damages; injunction
Registration time frame: Twelve (12) to eighteen (18) months from filing depending on the workload at the trade mark office.
Requirements checklist:
Definitions. – As used in Part III, the following terms have the following meanings:
121.1. “Mark” means any visible sign capable of distinguishing the goods (trademark) or services (service
mark) of an enterprise and shall include a stamped or marked container of goods; (Sec. 38, R.A. No.
166a)
121.2. “Collective mark” means any visible sign designated as such in the application for registration and
capable of distinguishing the origin or any other common characteristic, including the quality of goods or
services of different enterprises which use the sign under the control of the registered owner of the
collective mark; (Sec. 40, R.A. No. 166a)
121.3. “Trade name” means the name or designation identifying or distinguishing an enterprise; (Sec.
38, R.A. No. 166a)
121.4. “Bureau” means the Bureau of Trademarks;
121.5. “Director” means the Director of Trademarks;
121.6. “Regulations” means the Rules of Practice in Trademarks and Service Marks formulated by the
Director of Trademarks and approved by the Director General; and
121.7. “Examiner” means the trademark examiner. (Sec. 38, R.A. No. 166a)
How Marks are Acquired. – The rights in a mark shall be acquired through registration made validly in
accordance with the provisions of this law. (Sec. 2-A, R.A. No. 166a)
Registrability. –
123.1. A mark cannot be registered if it: Consists of immoral, deceptive or scandalous matter, or matter
which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or
national symbols, or bring them into contempt or disrepute; Consists of the flag or coat of arms or other
insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation
thereof; Consists of a name, portrait or signature identifying a particular living individual except by his
written consent, or the name, signature, or portrait of a deceased President of the Philippines, during
the life of his widow, if any, except by written consent of the widow; Is identical with a registered mark
belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: The
same goods or services, or Closely related goods or services, or if it nearly resembles such a mark as to
be likely to deceive or cause confusion; Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent authority of the Philippines to be well-
known internationally and in the Philippines, whether or not it is registered here, as being already the
mark of a person other than the applicant for registration, and used for identical or similar goods or
services: Provided, That in determining whether a mark is well-known, account shall be taken of the
knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in
the Philippines which has been obtained as a result of the promotion of the mark; Is identical with, or
confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with
the preceding paragraph, which is registered in the Philippines with respect to goods or services which
are not similar to those with respect to which registration is applied for: Provided, That use of the mark
in relation to those goods or services would indicate a connection between those goods or services, and
the owner of the registered mark: Provided further, That the interests of the owner of the registered
mark are likely to be damaged by such use; Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or services; Consists exclusively of signs that
are generic for the goods or services that they seek to identify; Consists exclusively of signs or of
indications that have become customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice; Consists exclusively of signs or of indications
that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical
origin, time or production of the goods or rendering of the services, or other characteristics of the goods
or services; Consists of shapes that may be necessitated by technical factors or by the nature of the
goods themselves or factors that affect their intrinsic value; Consists of color alone, unless defined by a
given form; or Is contrary to public order or morality.
123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the
registration of any such sign or device which has become distinctive in relation to the goods for which
registration is requested as a result of the use that have been made of it in commerce in the Philippines.
The Office may accept as prima facie evidence that the mark has become distinctive, as used in
connection with the applicant’s goods or services in commerce, proof of substantially exclusive and
continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date
on which the claim of distinctiveness is made.
123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to
registration. (Sec. 4, R.A. No. 166a)
Requirements of Application. –
124.1. The application for the registration of the mark shall be in Filipino or in English and shall contain
the following: A request for registration; The name and address of the applicant; The name of a State of
which the applicant is a national or where he has domicile; and the name of a State in which the
applicant has a real and effective industrial or commercial establishment, if any; Where the applicant is
a juridical entity, the law under which it is organized and existing; The appointment of an agent or
representative, if the applicant is not domiciled in the Philippines; Where the applicant claims the
priority of an earlier application, an indication of: The name of the State with whose national office the
earlier application was filed or if filed with an office other than a national office, the name of that office,
The date on which the earlier application was filed, and where available, the application number of the
earlier application; Where the applicant claims color as a distinctive feature of the mark, a statement to
that effect as well as the name or names of the color or colors claimed and an indication, in respect of
each color, of the principal parts of the mark which are in that color; Where the mark is a three-
dimensional mark, a statement to that effect; One or more reproductions of the mark, as prescribed in
the Regulations; A transliteration or translation of the mark or of some parts of the mark, as prescribed
in the Regulations; The names of the goods or services for which the registration is sought, grouped
according to the classes of the Nice Classification, together with the number of the class of the said
Classification to which each group of goods or services belongs; and a signature by, or other self-
identification of, the applicant or his representative.
124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to
that effect, as prescribed by the Regulations within three (3) years from the filing date of the
application. Otherwise, the application shall be refused or the mark shall be removed from the Register
by the Director.
124.3. One (1) application may relate to several goods and/or services, whether they belong to one (1)
class or to several classes of the Nice Classification.
124.4. If during the examination of the application, the Office finds factual basis to reasonably doubt the
veracity of any indication or element in the application, it may require the applicant to submit sufficient
evidence to remove the doubt. (Sec. 5, R.A. No. 166a) Representation; Address for Service. – If the
applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he
shall designate by a written document filed in the office, the name and address of a Philippine resident
who may be served notices or process in proceedings affecting the mark. Such notices or services may
be served upon the person so designated by leaving a copy thereof at the address specified in the last
designation filed. If the person so designated cannot be found at the address given in the last
designation, such notice or process may be served upon the Director. (Sec. 3, R.A. No. 166a)
Disclaimers. – The Office may allow or require the applicant to disclaim an unregistrable component of
an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant’s or owner’s
rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or
affect the applicant’s or owner’s right on another application of later date if the disclaimed matter
became distinctive of the applicant’s or owner’s goods, business or services. (Sec. 13, R.A. No. 166a)
Filing Date. –
127.1. Requirements. – The filing date of an application shall be the date on which the Office received
the following indications and elements in English or Filipino: An express or implicit indication that the
registration of a mark is sought; The identity of the applicant; Indications sufficient to contact the
applicant or his representative, if any; A reproduction of the mark whose registration is sought; and the
list of the goods or services for which the registration is sought.
127.2. No filing date shall be accorded until the required fee is paid. (n) Single Registration for Goods
and/or Services. – Where goods and/or services belonging to several classes of the Nice Classification
have been included in one (1) application, such an application shall result in one registration. (n)
Division of Application. – Any application referring to several goods or services, hereafter referred to as
the “initial application,” may be divided by the applicant into two (2) or more applications, hereafter
referred to as the “divisional applications,” by distributing among the latter the goods or services
referred to in the initial application. The divisional applications shall preserve the filing date of the initial
application or the benefit of the right of priority. (n) Signature and Other Means of Self-Identification. –
130.1. Where a signature is required, the Office shall accept: A hand-written signature; or the use of
other forms of signature, such as a printed or stamped signature, or the use of a seal, instead of a hand-
written signature: Provided, that where a seal is used, it should be accompanied by an indication in
letters of the name of the signatory.
130.2. The Office shall accept communications to it by telecopier, or by electronic means subject to the
conditions or requirements that will be prescribed by the Regulations. When communications are made
by telefacsimile, the reproduction of the signature, or the reproduction of the seal together with, where
required, the indication in letters of the name of the natural person whose seal is used, appears. The
original communications must be received by the Office within thirty (30) days from date of receipt of
the telefacsimile.
130.3. No attestation, notarization, authentication, legalization or other certification of any signature or
other means of self-identification referred to in the preceding paragraphs, will be required, except,
where the signature concerns the surrender of a registration. (n)
Priority Right. –
131.1. An application for registration of a mark filed in the Philippines by a person referred to in Section
3, and who previously duly filed an application for registration of the same mark in one of those
countries, shall be considered as filed as of the day the application was first filed in the foreign country.
131.2. No registration of a mark in the Philippines by a person described in this section shall be granted
until such mark has been registered in the country of origin of the applicant.
131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue
for acts committed prior to the date on which his mark was registered in this country: Provided, That,
notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this
Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark,
oppose its registration, or petition the cancellation of its registration or sue for unfair competition,
without prejudice to availing himself of other remedies provided for under the law.
131.4. In like manner and subject to the same conditions and requirements, the right provided in this
section may be based upon a subsequent regularly filed application in the same foreign country:
Provided, That any foreign application filed prior to such subsequent application has been withdrawn,
abandoned, or otherwise disposed of, without having been laid open to public inspection and without
leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a
right of priority. (Sec. 37, R.A. No. 166a)
Application Number and Filing Date. –
132.1. The Office shall examine whether the application satisfies the requirements for the grant of a
filing date as provided in Section 127 and Regulations relating thereto. If the application does not satisfy
the filing requirements, the Office shall notify the applicant who shall within a period fixed by the
Regulations complete or correct the application as required, otherwise, the application shall be
considered withdrawn.
132.2 Once an application meets the filing requirements of Section 127, it shall be numbered in the
sequential order, and the applicant shall be informed of the application number and the filing date of
the application will be deemed to have been abandoned. (n)
Examination and Publication. –
133.1. Once the application meets the filing requirements of Section 127, the Office shall examine
whether the application meets the requirements of Section 124 and the mark as defined in Section 121
is registrable under Section 123.
133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall,
upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the
prescribed manner.
133.3. If after the examination, the applicant is not entitled to registration for any reason, the Office
shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four (4)
months in which to reply or amend his application, which shall then be re-examined. The Regulations
shall determine the procedure for the re-examination or revival of an application as well as the appeal
to the Director of Trademarks from any final action by the Examiner.
133.4. An abandoned application may be revived as a pending application within three (3) months from
the date of abandonment, upon good cause shown and the payment of the required fee.
133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the Director
General in accordance with the procedure fixed by the Regulations. (Sec. 7, R.A. No. 166a)
Opposition. – Any person who believes that he would be damaged by the registration of a mark may,
upon payment of the required fee and within thirty (30) days after the publication referred to in
Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing
and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the
grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of
registration of marks registered in other countries or other supporting documents mentioned in the
opposition shall be filed therewith, together with the translation in English, if not in the English
language. For good cause shown and upon payment of the required surcharge, the time for filing an
opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such
extension. The Regulations shall fix the maximum period of time within which to file the opposition.
(Sec. 8, R.A. No. 165a)
Notice and Hearing. – Upon the filing of an opposition, the Office shall serve notice of the filing on the
applicant, and of the date of the hearing thereof upon the applicant and the oppositor and all other
persons having any right, title or interest in the mark covered by the application, as appear of record in
the Office. (Sec. 9 R.A. No. 165)
Issuance and Publication of Certificate. – When the period for filing the opposition has expired, or when
the Director of Legal Affairs shall have denied the opposition, the Office upon payment of the required
fee, shall issue the certificate of registration. Upon issuance of a certificate of registration, notice
thereof making reference to the publication of the application shall be published in the IPO Gazette.
(Sec. 10, R.A. No. 165)
Registration of Mark and Issuance of a Certificate to the Owner or his Assignee. –
137.1. The Office shall maintain a Register in which shall be registered marks, numbered in the order of
their registration, and all transactions in respect of each mark, required to be recorded by virtue of this
law.
137.2. The registration of a mark shall include a reproduction of the mark and shall mention: its number;
the name and address of the registered owner and, if the registered owner’s address is outside the
country, his address for service within the country; the dates of application and registration; if priority is
claimed, an indication of this fact, and the number, date and country of the application, basis of the
priority claims; the list of goods or services in respect of which registration has been granted, with the
indication of the corresponding class or classes; and such other data as the Regulations may prescribe
from time to time.
137.3. A certificate of registration of a mark may be issued to the assignee of the applicant: Provided,
That the assignment is recorded in the Office. In case of a change of ownership, the Office shall at the
written request signed by the owner, or his representative, or by the new owner, or his representative
and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new
certificate of registration of the said mark in the name of such assignee, and for the unexpired part of
the original period.
137.4. The Office shall record any change of address, or address for service, which shall be notified to it
by the registered owner.
137.5. In the absence of any provision to the contrary in this Act, communications to be made to the
registered owner by virtue of this Act shall be sent to him at his last recorded address and, at the same,
at his last recorded address for service. (Sec. 19, R.A. No. 166a)
Certificates of Registration. – A certificate of registration of a mark shall be prima facie evidence of the
validity of the registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right
to use the same in connection with the goods or services and those that are related thereto specified in
the certificate. (Sec. 20, R.A. No. 165)
Publication of Registered Marks; Inspection of Register. –
139.1. The Office shall publish, in the form and within the period fixed by the Regulations, the mark
registered, in the order of their registration, reproducing all the particulars referred to in Subsection 137.2.
139.2. Marks registered at the Office may be inspected free of charge and any person may obtain copies
thereof at his own expense. This provision shall also be applicable to transactions recorded in respect of
any registered mark. (n) Cancellation upon Application by Registrant; Amendment or Disclaimer of
Registration. – Upon application of the registrant, the Office may permit any registration to be
surrendered for cancellation, and upon cancellation the appropriate entry shall be made in the records
of the Office. Upon application of the registrant and payment of the prescribed fee, the Office for good
cause may permit any registration to be amended or to be disclaimed in part: Provided, That the
amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be
made in the records of the Office upon the certificate of registration or, if said certificates is lost or
destroyed, upon a certified copy thereof.
(Sec. 14, R.A. No. 166)
Sealed and Certified Copies as Evidence. – Copies of any records, books, papers, or drawings belonging
to the Office relating to marks, and copies of registrations, when authenticated by the seal of the Office
and certified by the Director of the Administrative, Financial and Human Resource Development Service
Bureau or in his name by an employee of the Office duly authorized by said Director, shall be evidence in
all cases wherein the originals would be evidence; and any person who applies and pays the prescribed
fee shall secure such copies. (n)
Correction of Mistakes Made by the Office. – Whenever a material mistake in a registration incurred
through the fault of the Office is clearly disclosed by the records of the Office, a certificate stating the
fact and nature of such mistake shall be issued without charge, recorded and a printed copy thereof
shall be attached to each printed copy of the registration. Such corrected registration shall thereafter
have the same effect as the original certificate; or in the discretion of the Director of the Administrative,
Financial and Human Resource Development Service Bureau a new certificate of registration may be
issued without charge. All certificates of correction heretofore issued in accordance with the Regulations
and the registration to which they are attached shall have the same force and effect as if such
certificates and their issuance had been authorized by this Act. (n)
Correction of Mistakes Made by Applicant. – Whenever a mistake is made in a registration and such
mistake occurred in good faith through the fault of the applicant, the Office may issue a certificate upon
the payment of the prescribed fee: Provided, That the correction does not involve any change in the
registration that requires republication of the mark. (n)
Classification of Goods and Services. –
144.1. Each registration, and any publication of the Office which concerns an application or registration
effected by the Office shall indicate the goods or services by their names, grouped according to the
classes of the Nice Classification, and each group shall be preceded by the number of the class of that
Classification to which that group of goods or services belongs, presented in the order of the classes of
the said Classification.
144.2. Goods or services may not be considered as being similar or dissimilar to each other on the
ground that, in any registration or publication by the Office, they appear in different classes of the Nice
Classification. (Sec. 6, R.A. No. 166a)
Duration. – A certificate of registration shall remain in force for ten (10) years: Provided, That the
registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons
based on the existence of obstacles to such use, as prescribed by the Regulations, within one (1) year
from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be
removed from the Register by the Office. (Sec. 12, R.A. No. 166a)
Renewal. –
146.1. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon
payment of the prescribed fee and upon filing of a request. The request shall contain the following
indications: An indication that renewal is sought; The name and address of the registrant or his
successor-in-interest, hereafter referred to as the “right holder”; The registration number of the
registration concerned; The filing date of the application which resulted in the registration concerned to
be renewed; Where the right holder has a representative, the name and address of that representative;
The names of the recorded goods or services for which the renewal is requested or the names of the
recorded goods or services for which the renewal is not requested, grouped according to the classes of
the Nice Classification to which that group of goods or services belongs and presented in the order of
the classes of the said Classification; and A signature by the right holder or his representative.
146.2. Such request shall be in Filipino or English and may be made at any time within six (6) months
before the expiration of the period for which the registration was issued or renewed, or it may be made
within six (6) months after such expiration on payment of the additional fee herein prescribed.
146.3. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the
reasons therefor.
146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the
requirements of this Act. (Sec. 15, R.A. No. 166a)
Rights Conferred. –
147.1. Except in cases of importation of drugs and medicines allowed under Section 72.1 of this Act and
of off-patent drugs and medicines, the owner of a registered mark shall have the exclusive right to
prevent all third parties not having the owner’s consent from using in the course of trade identical or
similar signs or containers for goods or services which are identical or similar to those in respect of
which the trademark is registered where such use would result in a likelihood of confusion. In case of
the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
There shall be no infringement of trademarks or tradenames of imported or sold patented drugs and
medicines allowed under Section 72.1 of this Act, as well as imported or sold off-patent drugs and
medicines; provided, that said drugs and medicines bear the registered marks that have not been
tampered, unlawfully modified, or infringed upon, under Section 155 of this Code.
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is
registered in the Philippines, shall extend to goods and services which are not similar to those in respect
of which the mark is registered: Provided, That use of that mark in relation to those goods or services
would indicate a connection between those goods or services and the owner of the registered mark:
Provided further, That the interests of the owner of the registered mark are likely to be damaged by
such use. (n)
Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. –
Registration of the mark shall not confer on the registered owner the right to preclude third parties from
using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications
concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of
supply, of their goods or services: Provided, That such use is confined to the purposes of mere
identification or information and cannot mislead the public as to the source of the goods or services. (n)
Assignment and Transfer of Application and Registration. –
149.1. An application for registration of a mark, or its registration, may be assigned or transferred with
or without the transfer of the business using the mark. (n)
149.2. Such assignment or transfer shall, however, be null and void if it is liable to mislead the public,
particularly as regards the nature, source, manufacturing process, characteristics, or suitability for their
purpose, of the goods or services to which the mark is applied.
149.3. The assignment of the application for registration of a mark, or of its registration, shall be in
writing and require the signatures of the contracting parties. Transfers by mergers or other forms of
succession may be made by any document supporting such transfer.
149.4. Assignments and transfers of registration of marks shall be recorded at the Office on payment of
the prescribed fee; assignment and transfers of applications for registration shall, on payment of the
same fee, be provisionally recorded, and the mark, when registered, shall be in the name of the assignee
or transferee.
149.5. Assignments and transfers shall have no effect against third parties until they are recorded at the
Office. (Sec. 31, R.A. No. 166a)
License Contracts. –
150.1. Any license contract concerning the registration of a mark, or an application therefor, shall
provide for effective control by the licensor of the quality of the goods or services of the licensee in
connection with which the mark is used. If the license contract does not provide for such quality control,
or if such quality control is not effectively carried out, the license contract shall not be valid.
150.2. A license contract shall be submitted to the Office which shall keep its contents confidential but
shall record it and publish a reference thereto. A license contract shall have no effect against third
parties until such recording is effected. The Regulations shall fix the procedure for the recording of the
license contract. (n)
Cancellation. –
151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal
Affairs by any person who believes that he is or will be damaged by the registration of a mark under this
Act as follows: Within five (5) years from the date of the registration of the mark under this Act.
At any time, if the registered mark becomes the generic name for the goods or services, or a portion
thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently
or contrary to the provisions of this Act, or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the goods or services on or in
connection with which the mark is used. If the registered mark becomes the generic name for less than
all of the goods or services for which it is registered, a petition to cancel the registration for only those
goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods
or services solely because such mark is also used as a name of or to identify a unique product or service.
The primary significance of the registered mark to the relevant public rather than purchaser motivation
shall be the test for determining whether the registered mark has become the generic name of goods or
services on or in connection with which it has been used. (n) At any time, if the registered owner of the
mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in
the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.
151.2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with
jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise
exercise jurisdiction to determine whether the registration of said mark may be cancelled in accordance
with this Act. The filing of a suit to enforce the registered mark with the proper court or agency shall
exclude any other court or agency from assuming jurisdiction over a subsequently filed petition to
cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark with the
Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action
to enforce the rights to same registered mark may be decided. (Sec. 17, R.A. No. 166a)
Non-use of a Mark When Excused. –
152.1. Non-use of a mark may be excused if caused by circumstances arising independently of the will of
the trademark owner. Lack of funds shall not excuse non-use of a mark.
152.2. The use of the mark in a form different from the form in which it is registered, which does not
alter its distinctive character, shall not be ground for cancellation or removal of the mark and shall not
diminish the protection granted to the mark.
152.3. The use of a mark in connection with one or more of the goods or services belonging to the class
in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other
goods or services of the same class.
152.4. The use of a mark by a company related with the registrant or applicant shall inure to the latter’s
benefit, and such use shall not affect the validity of such mark or of its registration: Provided, That such
mark is not used in such manner as to deceive the public. If use of a mark by a person is controlled by
the registrant or applicant with respect to the nature and quality of the goods or services, such use shall
inure to the benefit of the registrant or applicant. (n) Requirements of Petition; Notice and Hearing. –
Insofar as applicable, the petition for cancellation shall be in the same form as that provided in Section
134 hereof, and notice and hearing shall be as provided in Section 135 hereof. Cancellation of
Registration. – If the Bureau of Legal Affairs finds that a case for cancellation has been made out, it shall
order the cancellation of the registration. When the order or judgment becomes final, any right
conferred by such registration upon the registrant or any person in interest of record shall terminate.
Notice of cancellation shall be published in the IPO Gazette. (Sec. 19. R.A. No. 166a)
Remedies; Infringement. – Any person who shall, without the consent of the owner of the registered
mark:
155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark
or the same container or a dominant feature thereof in connection with the sale, offering for sale,
distribution, advertising of any goods or services including other preparatory steps necessary to carry
out the sale of any goods or services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive; or
155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature
thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints,
packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in
connection with the sale, offering for sale, distribution, or advertising of goods or services on or in
connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be
liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided,
That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this
subsection are committed regardless of whether there is actual sale of goods or services using the
infringing material. (Sec. 22, R.A. No 166a)
Actions, and Damages and Injunction for Infringement. –
156.1. The owner of a registered mark may recover damages from any person who infringes his rights,
and the measure of the damages suffered shall be either the reasonable profit which the complaining
party would have made, had the defendant not infringed his rights, or the profit which the defendant
actually made out of the infringement, or in the event such measure of damages cannot be readily
ascertained with reasonable certainty, then the court may award as damages a reasonable percentage
based upon the amount of gross sales of the defendant or the value of the services in connection with
which the mark or trade name was used in the infringement of the rights of the complaining party. (Sec.
23, first par., R.A. No. 166a)
156.2. On application of the complainant, the court may impound during the pendency of the action,
sales invoices and other documents evidencing sales. (n)
156.3. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the
discretion of the court, the damages may be doubled. (Sec. 23, first par., R.A. No. 166)
156.4. The complainant, upon proper showing, may also be granted injunction. (Sec. 23, second par.,
R.A. No. 166a)
Power of Court to Order Infringing Material Destroyed. –
157.1. In any action arising under this Act, in which a violation of any right of the owner of the registered
mark is established, the court may order that goods found to be infringing be, without compensation of
any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused
to the right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and
advertisements in the possession of the defendant, bearing the registered mark or trade name or any
reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds, matrices and other
means of making the same, shall be delivered up and destroyed.
157.2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not be sufficient
other than in exceptional cases which shall be determined by the Regulations, to permit the release of
the goods into the channels of commerce. (Sec. 24, R.A. No. 166a) Damages; Requirement of Notice. – In
any suit for infringement, the owner of the registered mark shall not be entitled to recover profits or
damages unless the acts have been committed with knowledge that such imitation is likely to cause
confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice
that his mark is registered by displaying with the mark the words “Registered Mark” or the letter R
within a circle or if the defendant had otherwise actual notice of the registration. (Sec. 21, R.A. No.
166a)
Limitations to Actions for Infringement. – Notwithstanding any other provision of this Act, the remedies
given to the owner of a right infringed under this Act shall be limited as follows:
159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall have no effect
against any person who, in good faith, before the filing date or the priority date, was using the mark for
the purposes of his business or enterprise: Provided, That his right may only be transferred or assigned
together with his enterprise or business or with that part of his enterprise or business in which the mark
is used.
159.2. Where an infringer who is engaged solely in the business of printing the mark or other infringing
materials for others is an innocent infringer, the owner of the right infringed shall be entitled as against
such infringer only to an injunction against future printing.
159.3. Where the infringement complained of is contained in or is part of paid advertisement in a
newspaper, magazine, or other similar periodical or in an electronic communication, the remedies of the
owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or
other similar periodical or electronic communication shall be limited to an injunction against the
presentation of such advertising matter in future issues of such newspapers, magazines, or other similar
periodicals or in future transmissions of such electronic communications. The limitations of this
subparagraph shall apply only to innocent infringers: Provided, That such injunctive relief shall not be
available to the owner of the right infringed with respect to an issue of a newspaper, magazine, or other
similar periodical or an electronic communication containing infringing matter where restraining the
dissemination of such infringing matter in any particular issue of such periodical or in an electronic
communication would delay the delivery of such issue or transmission of such electronic communication
is customarily conducted in accordance with the sound business practice, and not due to any method or
device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining
order with respect to such infringing matter; and
159.4. There shall be no infringement of trademarks or tradenames of imported or sold drugs and
medicines allowed under Section 72.1 of this Act, as well as imported or sold off-patent drugs and
medicines: Provided, that said drugs and medicines bear the registered marks that have not been
tampered, unlawfully modified, or infringed upon as defined under Section 155 of this Code.
Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. – Any foreign
national or juridical person who meets the requirements of Section 3 of this Act and does not engage in
business in the Philippines may bring a civil or administrative action hereunder for opposition,
cancellation, infringement, unfair competition, or false designation of origin and false description,
whether or not it is licensed to do business in the Philippines under existing laws. (Sec. 21-A, R.A. No.
166a)
Authority to Determine Right to Registration. – In any action involving a registered mark, the court may
determine the right to registration, order the cancellation of a registration, in whole or in part, and
otherwise rectify the register with respect to the registration of any party to the action in the exercise of
this. Judgment and orders shall be certified by the court to the Director, who shall make appropriate
entry upon the records of the Bureau, and shall be controlled thereby. (Sec. 25, R.A. No. 166a)
Action for False or Fraudulent Declaration. – Any person who shall procure registration in the Office of a
mark by a false or fraudulent declaration or representation, whether oral or in writing, or by any false
means, shall be liable in a civil action by any person injured thereby for any damages sustained in
consequence thereof. (Sec. 26, R.A. No. 166)
Jurisdiction of Court. – All actions under Sections 150, 155, 164, and 166 to 169 shall be brought before
the proper courts with appropriate jurisdiction under existing laws. (Sec. 27, R.A. No. 166)
Notice of Filing Suit Given to the Director. – It shall be the duty of the clerks of such courts within one (1)
month after the filing of any action, suit, or proceeding involving a mark registered under the provisions
of this Act, to notify the Director in writing setting forth: the names and addresses of the litigants and
designating the number of the registration or registrations and within one (1) month after the judgment
is entered or an appeal is taken, the clerk of court shall give notice thereof to the Office, and the latter
shall endorse the same upon the filewrapper of the said registration or registrations and incorporate the
same as a part of the contents of said filewrapper. (n)
Trade Names or Business Names. –
165.1. A name or designation may not be used as a trade name if by its nature or the use to which such
name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to
deceive trade circles or the public as to the nature of the enterprise identified by that name.
165.2. (a) Notwithstanding any laws or regulations providing for any obligation to register trade names,
such names shall be protected, even prior to or without registration, against any unlawful act
committed by third parties. (b) In particular, any subsequent use of the trade name by a third party,
whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark,
likely to mislead the public, shall be deemed unlawful.
165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply mutatis
mutandis.
165.4. Any change in the ownership of a trade name shall be made with the transfer of the enterprise or
part thereof identified by that name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis
mutandis.
Goods Bearing Infringing Marks or Trade Names. –
No article of imported merchandise which shall copy or simulate the name of any domestic product, or
manufacturer, or dealer, or which shall copy or simulate a mark registered in accordance with the
provisions of this Act, or shall bear a mark or trade name calculated to induce the public to believe that
the article is manufactured in the Philippines, or that it is manufactured in any foreign country or locality
other than the country or locality where it is in fact manufactured, shall be admitted to entry at any
customhouse of the Philippines. In order to aid the officers of the customs service in enforcing this
prohibition, any person who is entitled to the benefits of this Act, may require that his name and
residence, and the name of the locality in which his goods are manufactured, a copy of the certificate of
registration of his mark or trade name, to be recorded in books which shall be kept for this purpose in
the Bureau of Customs, under such regulations as the Collector of Customs with the approval of the
Secretary of Finance shall prescribe, and may furnish to the said Bureau facsimiles of his name, the
name of the locality in which his goods are manufactured, or his registered mark or trade name, and
thereupon the Collector of Customs shall cause one (1) or more copies of the same to be transmitted to
each collector or to other proper officer of the Bureau of Customs. (Sec. 35, R.A. No. 166)
Collective Marks. –
167.1. Subject to Subsections 167.2 and 167.3, Sections 122 to 164 and 166 shall apply to collective
marks, except that references therein to “mark” shall be read as “collective mark.”
167.2. An application for registration of a collective mark shall designate the mark as a collective mark
and shall be accompanied by a copy of the agreement, if any, governing the use of the collective mark.
The registered owner of a collective mark shall notify the Director of any changes made in respect of the
agreement referred to in paragraph (a).
167.3. In addition to the grounds provided in Section 149, the Court shall cancel the registration of a
collective mark if the person requesting the cancellation proves that only the registered owner uses the
mark, or that he uses or permits its use in contravention of the agreements referred to in Subsection
166.2 or that he uses or permits its use in a manner liable to deceive trade circles or the public as to the
origin or any other common characteristics of the goods or services concerned.
167.4. The registration of a collective mark, or an application therefor shall not be the subject of a
license contract. (Sec. 40, R.A. No. 166a)
Unfair Competition, Rights, Regulation and Remedies. –
168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his
business or services from those of others, whether or not a registered mark is employed, has a property
right in the goodwill of the said goods, business or services so identified, which will be protected in the
same manner as other property rights.
168.2. Any person who shall employ deception or any other means contrary to good faith by which he
shall pass off the goods manufactured by him or in which he deals, or his business, or services for those
of the one having established such goodwill, or who shall commit any acts calculated to produce said
result, shall be guilty of unfair competition, and shall be subject to an action therefor.
168.3. In particular, and without in any way limiting the scope of protection against unfair competition,
the following shall be deemed guilty of unfair competition: Any person, who is selling his goods and
gives them the general appearance of goods of another manufacturer or dealer, either as to the goods
themselves or in the wrapping of the packages in which they are contained, or the devices or words
thereon, or in any other feature of their appearance, which would be likely to influence purchasers to
believe that the goods offered are those of a manufacturer or dealer, other than the actual
manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the
public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent
of any vendor engaged in selling such goods with a like purpose; Any person who by any artifice, or
device, or who employs any other means calculated to induce the false belief that such person is
offering the services of another who has identified such services in the mind of the public; or
Any person who shall make any false statement in the course of trade or who shall commit any other act
contrary to good faith of a nature calculated to discredit the goods, business or services of another.
168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. (Sec. 29, R.A.
No. 166a)
False Designations of Origin; False Description or Representation. –
169.1. Any person who, on or in connection with any goods or services, or any container for goods, uses
in commerce any word, term, name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false or misleading representation of
fact, which: Is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation,
connection, or association of such person with another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial activities by another person; or In commercial
advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his
or her or another person’s goods, services, or commercial activities, shall be liable to a civil action for
damages and injunction provided in Sections 156 and 157 of this Act by any person who believes that he
or she is or likely to be damaged by such act.
169.2. Any goods marked or labeled in contravention of the provisions of this Section shall not be
imported into the Philippines or admitted entry at any customhouse of the Philippines. The owner,
importer, or consignee of goods refused entry at any customhouse under this section may have any
recourse under the customs revenue laws or may have the remedy given by this Act in cases involving
goods refused entry or seized. (Sec. 30, R.A. No. 166a) Penalties. – Independent of the civil and
administrative sanctions imposed by law, a criminal penalty of imprisonment from two (2) years to five
(5) years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred thousand pesos
(P200,000), shall be imposed on any person who is found guilty of committing any of the acts mentioned
in Section 155, Section 168 and Subsection 169.1. (Arts. 188 and 189, Revised Penal Code)
