The Intellectual Property Office of the Philippines (IPOPHL) has issued draft Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks. Joseph Sarmiento reports.

In the past, the only way to have a mark declared as well-known in the Philippines was when a competent authority such as a court or the Bureau of Legal Affairs (BLA) of the IPOPHL declared a mark as well-known in the course of opposition or litigation.

In determining whether a mark is well-known, a majority of the following criteria shall be taken into account, but they must include items (b), (c), and (l):

a)          the duration, extent and geographical area of any use of the mark, in particular the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

b)          the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;

c)          the degree of the inherent or acquired distinctiveness of the mark;

d)          the quality, image or reputation acquired by the mark;

e)          the extent to which the mark has been registered in the world;

f)           the exclusivity of registration attained by the mark in the world;

g)          the extent to which the mark has been used in the world;

h)          the exclusivity of use attained by the mark in the world;

i)           the commercial value attributed to the mark in the world;

j)           the record of successful protection of the rights over the mark;

k)           the outcome of litigations dealing with the issue of whether the mark is a well-known mark, if any; and,

l)            the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that their mark is a well-known mark.

Two significant changes

The above have long been part of the criteria used in the Philippines to determine whether a mark is well-known. However, two significant changes have been made.

First, it is required that a majority of the criteria shall be taken into account and that the evidence submitted to prove well-known status must include letters (b), (c), and (I).

Second, an application for the declaration of a well-known mark is prosecuted ex parte. An examiner evaluates the pieces of evidence presented. The procedure includes: an examination process by an examiner; a recommendation by the examiner to the Director of the Bureau of Trademarks (BOT) to declare a mark as well-known; a decision by the BOT Director to declare the mark as well-known; publication; and an opportunity for third parties to file observations.

Third-party observations

Should there be a third-party observation, a consultative committee on well-known declarations will be constituted. The BOT Director will then decide on the application after receipt of the recommendation of the consultative committee.

If there is a third-party observation, the mark shall be declared as a well-known mark only upon finality of the decision declaring the mark as such.

If there is no third-party observation, the mark shall be declared as well-known on the 31st day following the publication date of the declaration. Thereafter, the BOT shall issue a certificate of well-known mark declaration and shall cause the said declaration to be entered in the Register of Well-Known Marks.

The declaration of well-known mark is prima facie evidence of the well-known status of the mark with respect to goods and services stated in the application.

Period of registration

The declaration of well-known mark shall be for a period of 10 years renewable for periods of 10 years, provided that the registrant is able to prove continuous use in commerce by submitting pieces of evidence of such use, and well-known status by submitting proof such as advertisements, certificates of registrations and financial statements within one year from the fifth anniversary of the declaration and upon each renewal.

If a proprietor has previously obtained a decision by a competent authority declaring a mark to be well-known, the proprietor may file a manifestation to such effect with the BOT, including evidence of such declaration.

Failure to submit the requisite manifestation and the proof of continuous use shall result in non-recordation of the previously declared well-known mark in the Register of Well-Known Marks.

Joseph Lyle K Sarmiento is a Partner of BCCSLAW in Manila and a member of the MARQUES International Trade Mark Law and Practice Team