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As of now, the only way for a trademark to be conferred “well-known” status in the Philippines has been through an adversarial procedure. But this changes with the upcoming rollout of the Register for Well-Known Marks by the Intellectual Property Office of the Philippines (IPOPHL). It is expected that the new regulations will provide clearer guidance and enhance the protection of well-known marks. However, the introduction of such a recordation system is a significant shift and raises some apprehension.

Draft rules

The IPOPHL held a public consultation on 24 September 2024, introducing the proposed new rules and regulations envisaged for the declaration and creation of the registry for well-known marks. The draft rules provide for a stricter standard in determining well-known status. Rule 5 requires “a majority of the 12 criteria” with three requisite criteria, namely:

• Market share in the Philippines and in other countries of the goods and/or services;
• Degree of the inherent or acquired distinction of the mark; and
• 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 their mark is a well-known mark.

The majority requirement means that the applicant or claimant must demonstrate that the mark satisfies at least seven of the specified criteria for inclusion in the register. This deviates from the 2017 rules, which only required the satisfaction of “any combination” of the criteria, meaning as few as two may suffice. There is also greater emphasis placed on the qualitative strength of the evidence, rather than the plurality of criteria. Under the 2017 rules, there is no requirement or preference for certain criteria. Despite this lower threshold, however, achieving well-known status was already very challenging for many famous brands.

The draft rules provide that the declaration of well-known mark would be valid for 10 years, renewable every 10 years, provided the registrant is able to prove continuous use by submitting the necessary evidence within one year from the fifth anniversary of the declaration and on each renewal. In case of failure to comply with the requirement, the draft regulations propose motu proprio (without formal notification) revocation of the mark’s well-known status. This means ongoing administrative responsibilities for trademark holders of well-known marks.

Nonetheless, in case of revocation of status due to non-submission of the required evidence, the trademark holder may still resort to sections 123(e) or 123(f) protection in an adversarial proceeding, albeit having to prove that the mark still meets the majority of the criteria.

Securing trademarks

Despite concerns regarding the proposed recordation system, many agree that there are several advantages to maintaining such registry. By formally registering a mark as well known, the trademark owner gains stronger legal presumptions of ownership and exclusivity. Rule 15 states that a declaration of a well-known mark constitutes prima facie evidence of its well-known status. This makes it easier to prevent others from using similar marks that could cause confusion among relevant consumers.

A registry for well-known marks will therefore serve as a powerful deterrent against infringement and unfair competition. It will allow international brands to more effectively utilise well-known status to compel infringers or unfair competitors to cease and desist from unlawful activities.

Further, well-known status can help brand owners demonstrate that another rival trademark applicant or registrant is in bad faith – or had prior knowledge of the existence of the well-known mark – because its inclusion in the registry would serve as constructive notice.

Key takeaways

Having a well-known mark on a formal registry increases the brand’s overall value and credibility in the eyes of consumers, business partners and investors. Well-known marks enjoy consumer trust due to their established reputation, and being formally recognised as such through a registry would further strengthen the mark’s market position.

This will also facilitate the creation of more opportunities for licensing, franchising and strategic partnerships. Overall, such a registry helps preserve the commercial interests of the brand owner.

The proposed rules for the establishment of a Register for Well-Known Marks are in line with the broader policy of streamlining procedures in trademark registration and strengthening the enforcement of intellectual property rights in the country.

These rules would ensure that well-known marks receive an expansive protection afforded under article 6bis of the Paris Convention, and article 16 of the TRIPS Agreement, to which the Philippines is a signatory.

Ernest Luigi A Manzanares is an associate at Federis & Associates Law Offices in Makati City