Key Criteria: Determining whether a mark is well-known

To qualify, the mark must meet the following criteria: 

 

• • 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

• • The market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies

• • The degree of the inherent or acquired distinction of the mark

• • The quality, image, or reputation acquired by the mark

Other factors as below or in combination thereof may also be considered, but the four above are mandatory.

 

• • The extent to which the mark has been registered in the world

• • The exclusivity of registration attained by the mark in the world

• • The extent to which the mark has been used in the world

• • The exclusivity of use attained by the mark in the world

• • The commercial value attributed to the mark in the world

• • The record of successful protection of the rights over the mark

• • The outcome of litigations dealing with the issue of whether the mark is a well-known mark, if any

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

Publication and Third-Party Observation

Upon the declaration of a mark as well-known, the mark will be published in the E-Gazette for a period of one (1) month.  

During this period, any interested person may file a Notice of Third-Party Observation, followed by a verified and written observation, including supporting documents within one (1) month from receipt by the Director of Trademarks of such notice.  

The applicant may comment on the notice within one (1) month from receipt of the Order issued by the IPOPHL. The observation, the subsequent comment and the recommendation of the members of a consultative committee on well-known declarations will be taken into consideration in deciding whether to grant the declaration.

Declaration of Well-Known Mark

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 thirty-first (31st) day following the publication date of the said declaration. 

Effect of Declaration of Well-Knowingness

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

The declaration shall result in the inclusion of the mark in the register which the examiners will consider during the ex-parte examination proceedings of trademark application.

Duration of Declaration

The Declaration of well-known marks shall be for a period of ten (10) years and renewable for periods of ten (10) years, provided that the registrant is able to submit the following documents within one (1) year from the fifth anniversary of the declaration and upon each renewal:

 

• • Proof of continuous use in commerce

• • Proof of ongoing well-known status

Revocation of Declaration

A declaration of a mark as well-known may be revoked motu proprio (on IPOPHL’s own initiative) if:

 

• • The owner fails to renew on time

• • Fails to submit proof of ongoing use or reputation

• • Additionally, any party may file a petition for revocation if they can present substantial evidence that the mark is no longer well-known

Appeal

The decision of the Director of Trademarks may be appealed to the IPOPHL Director General in accordance with the Uniform Rules on Appeal. No motion for reconsideration of the order of refusal by the Director of Trademark is allowed. 

Previously Declared Well-known Mark

If a trademark has been previously declared by a competent authority as a well-known mark but not yet on the register, the trademark owner or its authorized representative may file a Manifestation for inclusion together with proof of declaration, certified true copies of Entry of Judgement of the Decision and the Decision declaring the mark as well-known, and proof of payment of the prescribed fee. 

Further, proof of commercial use must also be submitted within five (5) years from the date of effectiveness of the Rules or risk being excluded from the new register.

Why This Matters

This landmark initiative by IPOPHL brings the Philippines in closer alignment with international obligations under the Article 6bis of the Paris Convention, Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, as amended (TRIPS Agreement), and Section 123.1(e) and (f) of the Republic Act No. 8293 or the Intellectual Property Code of the Philippines (IP Code). This issuance streamlined the previous adversarial procedures, which has the objective to enhance protection of well-known marks including those marks which were previously declared as such. It also simplifies the process for brand owners to protect their marks, especially in a region where brand reputation is an increasingly valuable asset.