Memorandum Circular No 2025-009 sets forth the Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks in the Philippines.

It takes effect on 28 April 2025, and institutionalizes an administrative procedure of having a mark declared as well known.

Prior to the circular, the only way to have a mark declared as well-known was when a competent authority, such as the Bureau of Trade Marks or a court, declared it as such in the course of opposition or litigation.

Well-known criteria

In determining whether a mark is well known, the following criteria or any combination of them may be taken into account. However, (1), (2), (3) and (4) must be included:

1. 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;
2. the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
3. the degree of the inherent or acquired distinctiveness of the mark;
4. the quality, image or reputation acquired by the mark;
5. the extent to which the mark has been registered in the world;
6. the exclusivity of registration attained by the mark in the world;
7. the extent to which the mark has been used in the world;
8. the exclusivity of use attained by the mark in the world;
9. the commercial value attributed to the mark in the world;
10. the record of successful protection of the rights over the mark;
11. the outcome of litigations dealing with the issue of whether the mark is a well-known mark, if any; and
12. 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 party claiming that their mark is a well-known mark.

Procedure

Applications are prosecuted ex-parte. However, any interested party may file a written observation once the application is published.

If no third-party observation is filed, or upon finality of a decision resolving a third-party observation, the Intellectual Property Office of the Philippines (IPOPHL) 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 IPOPHL shall also publish the contents of the Register.

If a trade mark previously declared as well-known by a competent authority in the course of litigation is not included in the Register, the trade mark owner or their authorised representative may file a manifestation to such effect with the Bureau of Trade Marks, attaching evidence of the declaration by the competent authority.

The mark previously declared as well-known may then be included in the Register upon the payment of the prescribed fees.

For marks previously declared by a competent authority as well-known, proof of continuous commercial use must be submitted within five years from the date of effectivity of the circular. Thereafter, the required proof of use must be submitted as provided further below.

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, or the removal thereof, as the case may be.

Duration and renewal

The declaration of well-known mark shall be for a period of 10 years renewable for periods of 10 years.

The registrant is required to prove continuous use in commerce by submitting pieces of evidence such as receipts, actual labels, signages, bills of lading and photos of the product bearing the mark 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 the mark declared as well known is already registered with the IPOPHL, only the evidence of well-known status shall be required within one year from the fifth anniversary of the declaration and upon each renewal, without prejudice to the submission of the Declaration of Actual Use requirements under the Trade Mark Regulations.

Blog post written by Joseph Lyle K Sarmiento, Partner, BCCSLAW in Manila and a member of the MARQUES International Trade Mark Law and Practice Team