Question & AnswerQ&A (Republic Act No. 166)
The Patent Office is responsible for the registration of trademarks, trade-names, and service-marks and the administration of all related provisions under Republic Act No. 166.
Any person, including non-residents (provided they appoint an agent or representative in the Philippines), who uses a mark, trade-name, or service-mark to distinguish their goods, business, or services from others can apply for registration.
Marks or trade-names that consist of immoral, deceptive, or scandalous matter; that disparage or falsely suggest connections with persons, institutions, beliefs or national symbols; that use flags, coats of arms, or insignia of the Philippines or foreign nations without consent; that use names, portraits, or signatures of living individuals without consent; that closely resemble other registered marks causing confusion; or that are merely descriptive or geographically descriptive without distinctiveness, cannot be registered.
The application must be in English, Spanish, or the national language with English translation, signed by the applicant, include a sworn statement regarding domicile, citizenship, use dates, goods or services associated with the mark, and belief of ownership; include specimens or facsimiles; power of attorney if filed through an attorney; appointment of an agent if non-resident; and payment of the required fee.
Non-resident applicants must appoint an agent or representative in the Philippines for service of notices or processes. Failure to maintain such agent will result in service being made on the Director of the Patent Office.
Each certificate of registration remains in force for twenty years, subject to the filing of affidavits of continuous use or showing excusable non-use on the fifth, tenth, and fifteenth anniversaries, and payment of required fees.
Registrants may recover damages, including actual damages or profits, and may be awarded injunctions to stop infringement. Courts may also order the destruction of infringing materials.
Unfair competition includes acts that deceive or defraud others by passing off goods or services as those of another, false representation likely to mislead the public, false statements in trade discrediting another's goods or services, or giving one's goods the appearance of another's without authorization.
Rights are assignable with the goodwill of the business and must be in writing, acknowledged before a notary, recorded with the Patent Office within three months to be effective against subsequent purchasers without notice.
Cancellation can be sought if the mark has become a common descriptive name after patent expiry, has been abandoned, was obtained fraudulently, is misleading via unauthorized assignment, or is authorized for cancellation under other provisions of the Act.