Following our earlier update (Rouse - Philippines: Launch of Regulations on Well-Known Marks), we are providing a more detailed overview of the new regulations.
The Regulations on Well-Known Marks, which create the Register of Well-Known Marks in the Philippines, has come into force on 28 April 2025, following public consultation in September 2024.
The criteria for determining whether a mark is well-known remain consistent with the previous Rule 103 of the 2017 Trade Mark Regulations and Section 3, Rule 18 of the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases. While any combination of a majority of the criteria was previously acceptable, the new regulations require proof of the first four criteria:
1. Duration, Extent, and Geographical Area of Use: This includes the duration, extent, and geographical area of any promotion, advertising, and presentation of the goods/services.
2. Market Share: The market share of the goods/services in the Philippines and other countries.
3. Distinctiveness: The inherent or acquired distinctiveness of the mark.
4. Reputation: The quality, image or reputation associated with the mark.
Foreign documents submitted as evidence must be notarized and apostilled. A previous finding that a mark is not well-known does not prejudice the application for a Well-Known Mark Declaration under these rules.
The application for a well-known mark declaration must be notarized and filed online. It will undergo examination similar to a regular trade mark application and will be published for third-party observations. A 30-day period for filing a Notice of Third-Party Observation follows publication. A consultative committee will evaluate these observations and recommend whether the mark should be declared well-known.
A Well-Known Mark Declaration serves as prima facie evidence of the mark's status. Additionally, it will be included in the Register, allowing examiners to cite it against similar marks during trade mark application examinations. However, trade mark owners must maintain their declaration every 10 years by submitting:
1. Proof of continuous use of the mark in commerce.
2. Proof of well-known mark status within one year from the fifth anniversary of the declaration and upon each renewal.
If the well-known mark is already a registered trade mark in the Philippines, only proof of well-known status is required, as a Declaration of Actual Use is submitted separately for a trade mark registration.
A Well-Known Mark Declaration may be revoked and removed from the Register for failure to renew, failure to submit proof of continuous use and well-known mark status, or if a Petition for Revocation is granted on the grounds that the mark’s well-known status no longer exists.
Owners of marks already declared well-known by any competent authority in the Philippines can file a manifestation to include their marks in the Well-Known Mark Register upon payment of fees. They must also provide proof of continuous use of the mark in commerce within five years from when the regulations came into effect, by 28 April 2030. A list of the well-known marks declared by competent authorities in the Philippines may be accessed at onlineservices.ipophil.gov.ph/wellknownmarks/
Trade mark owners should consider whether to include their marks in the Well-Known Mark Register to enhance protection against similar trade marks during examination, weighing this against the costs of maintaining the declaration. Alternatively, they may retain the well-known mark decision from a competent authority, which serves as evidence of well-known status without the ongoing maintenance requirements.
The launch of the Regulations on Well-Known Marks represents a significant advancement in brand protection in the Philippines. By establishing a formal Register of Well-Known Marks, these regulations provide brand owners with enhanced security and recognition for their marks. As businesses evaluate their options, they should carefully consider the benefits of registration against the maintenance requirements. Engaging in this process can strengthen their market position and safeguard their brand identity in an increasingly competitive landscape.
