Susan D. Villanueva | Natalie Isabel P. Lim
The Intellectual Property Office of the Philippines (“IPOPHL”) has issued Memorandum Circular No. 2025-009, or the Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks (“Regulations”) which will take effect on 28 April 2025. The new regulations establish an ex parte-system for declaring well-known marks which can then be registered in the IPOPHL’s Register of Well-Known Marks (“Register”). Prior to the regulations, the only process to obtain a declaration that a mark is well known is through adversarial litigation by way of opposition, cancellation or intellectual property violation cases with the IPOPHL or infringement and unfair competition actions in court. Instead of engaging in adversarial litigation which can be long and costly, trademark owners can now be able to avail of this streamlined system to obtain a declaration that its marks are well-known.
Registration in the Register is beneficial to trademark owners through the prevention of registration of identical or confusingly similar marks since trademark examiners will consider the Register during the examination proceedings of trademark applications.
Trademark owners that are registered as trademarks or servicemarks in the Philippines and declared as well-known also will enjoy stronger protection in the Philippines since the said marks are protected even as against dissimilar goods or services. This protects the registered well-known mark from dilution or use for even non-competing goods or services. Marks that are not yet registered but are declared well-known under this procedure are also protected with respect to identical or similar goods or services.
To register, the applicant must file an ex parte notarized application for the declaration of a well-known mark and submit the requirements under the Regulations. If the Examiner finds the application compliant with the criteria for a well-known mark, they will recommend approval to the Director of Trademarks (“Director”). Otherwise, the Examiner will recommend refusal, stating the reasons therefor. The Director reviews the recommendation and issues a Decision either declaring the mark well-known or refusing the application.
Third-Party Observation
If the declaration is granted, it is published in the E-Gazette. Within one (1) month from publication, any interested party who may be damaged by the declaration may file a Notice of Third-Party Observation with the prescribed fee. A verified and written observation with supporting documents must then be submitted within one (1) month from receipt by the Director of such notice, extendible for another month upon written request and payment of fees. Failure to comply results in the dismissal of the observation.
Afterwards, the applicant may file a comment within one (1) month from receipt of the IPOPHL’s order. The matter is reviewed by a consultative committee, which makes a recommendation to the Director for final action. If no observation is filed, the declaration becomes effective on the 31st day from publication; otherwise, upon finality of the decision.
Criteria for Determination
The criteria for determining whether a mark is well-known are:
a) the duration, extent and geographical area of any use of the mark; b) the market share in the Philippines and in other countries; c) the degree of the inherent or acquired distinction 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. |
It should be noted that the first four criteria [Rules 5(a) to 5(d)] are mandatory in determining whether a mark is well-known while the remaining factors [Rules 5(e) to 5(l)] may be considered in any combination to support the application. The mandatory criteria that must be considered are:
- the duration, extent and geographical area of any use of the mark;
- the market share in the Philippines and in other countries;
- the degree of the inherent or acquired distinction of the mark; and
- the quality, image, or reputation acquired by the mark.
Validity, Renewal, and Effect of Declaration
The Rules state that the declaration of well-known status is valid for ten (10) years, renewable for periods of ten (10) years, provided that the registrant submits the following, within one (1) year from the fifth anniversary of the declaration and upon each renewal:
- Proof of continuous use in commerce (e.g., receipts, actual labels, signages, bills of lading, product photos bearing the well-known mark); and
- Proof of well-known status (e.g., advertisements, certificates of registrations, financial statements),
The declaration of a mark as well-known is prima facie evidence of the well-known status of the mark with respect to goods and services stated 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 applications.
Revocation and Appeal
Under the Regulations, a declaration of a well-known mark may be revoked: (1) motu proprio for failure to renew within six (6) months prior to its expiration, or within six (6) months after its expiration upon payment of surcharge; (2) motu proprio for failure to submit proof of continuous commercial use; or (3) upon petition with substantial evidence that the mark is no longer well-known. Decisions of the Director are appealable to the IPOPHL Director General under the Uniform Rules on Appeal. Motions for reconsideration are not allowed.
Registration of Previously Declared Well-Known Marks
Under the Regulations, if a trademark has already been declared as well-known by a competent authority—such as through a final decision in an opposition or petition for cancellation—there is no need to file an application under the Regulations. Instead, the trademark owner or their authorized representative may simply file a Manifestation with the Bureau of Trademarks, attaching evidence of the declaration, including certified true copies of the decision and the entry of judgment thereof declaring the mark as well-known. The owner must likewise submit proof of continuous commercial use within five (5) years from the effectivity of the Rules, and thereafter, as required under Rule 15. Upon payment of the required fees, the mark will be included in the Register of Well-Known Trademarks, which will be published in the E-Gazette.
Empowering Global Brands through Register of Well-Known Marks
The promulgation of the Regulations is a welcome and necessary development in the evolving trademark landscape of the Philippines. This development is anticipated to prompt international rights holders, global brands, and large businesses to proactively seek recognition of their well-known marks in the Philippines—aimed at deterring unauthorized use and reducing reliance on post-facto remedies such as oppositions, cancellation or court actions. This is especially valuable considering that it is not uncommon for owners of well-known marks to become aware of infringing or confusingly similar applications or registrations only upon encountering them as citations in the course of their own filings—by which time the appropriate recourse involves costly and time-consuming proceedings.
With the establishment of the Register of Well-Known Marks, the IPOPHL will now be better equipped to take these declarations into consideration during the examination of trademark applications, strengthening both the preventive and deterrent capacities of the trademark system.
For businesses seeking to secure broader protection for their marks, inclusion in the Register of Well-Known Marks provides a strategic advantage—both as a shield against unauthorized use and as a means to avoid lengthy and resource-intensive actions by allowing the IPOPHL to recognize the mark’s well-known status at the outset.
With deep expertise in intellectual property law, Cruz Marcelo & Tenefrancia is well-positioned to assist brand owners in navigating the newly established Register of Well-Known Marks. Should you require assistance in securing recognition of your mark as well-known or in ensuring its continued protection under the new framework, you may contact our firm’s Trademark team:
Susan D. Villanueva
Email: [email protected]
Patricia A. O. Bunye
Email: [email protected]
Divina Gracia E. Pedron
Email: [email protected]
Rowanie A. Nakan
Email: [email protected]