Trademarkia (or “Trademarkia P.C.”) is the registered trade name of the law firm LegalForce RAPC Worldwide P.C. The law firm operates www.trademarkia.com, which provides the Internet’s largest, free search tool with a database of more than 8 million trademarks and logos. Other than searching the trademarks for free, a visitor of the website may also place orders on www.trademarkia.com to seek Trademarkia P.C.’s legal services. After the law firm conducts the required conflict checks and accepts the payment, and after a written retainer agreement is entered into, the visitor becomes the client of Trademarkia P.C..

Since 2009, Trademarkia P.C. has helped more than 100,000 clients registering trademarks in more than 170 countries around the world.

The Intellectual Property Code of the Philippines (Republic Act No. 8293) was enacted into law on June 6, 1997, and took effect on January 1, 1998. This Code unifies and updates the separate laws on intellectual property, i.e., Republic Acts Nos. 165, 166, 623, Presidential Decree Nos. 49 and 285. Salient provisions of the new Code on trademarks, include: the shift from protection of trademarks from "first to use" principle to "first to register" principle. Under the codified law, registration of marks is now available based on "intent to use." The term of registration is reduced to 10 years. Under this new law, owners of "well-known marks" will enjoy additional protection.

Any person, natural or juridical, may apply for the registration of a mark. The basis of the trademark application may be actual use or intent to use a mark. In addition to the above, the Trademark Regulations in Rule 201 also allows the following to apply for a trademark registration: Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefit to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by the Intellectual Property Code.

Any trademark, trade name, service mark, or a collective mark used to distinguish the owner's goods, business, or services from the goods, business, or services of others may be registered as a trademark except in the following cases: (1) the mark cohsists of or comprises immoral, deceptive, or scandalous matter or matter which may disparage or falsely suggest a connection with persons living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (2) the mark consists of or comprises the flag or coat-of-arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; the mark consists of a name, portrait, or signature identifjnng a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines during the life of his widow, if any, except by the written consent of the widow; the mark is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date: (a) for the same goods or services; (b) for closely related goods or services; or (c) if it nearly resembles such a mark as to be likely to deceive or cause confusion; the mark is identical with, or confusingly similar to, or constitutes a translation of a mark that is considered by the competent authority of the Philippines to be well-known, internationally and in the Philippines, whether or not it is registered here, as being the mark of a person other than the applicant for registration, and used for identical or similar goods or services. (In determining whether a mark is wellknown, consideration will be given to the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark); the mark is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines for goods or services not similar to those for which registration is applied; where use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark; and where the interests of the owner of the registered mark are likely to be damaged by such use; the mark is likely to mislead the public, particularly as to the nature, quality, characteristics, or geographical origin of the goods or services; the mark consists exclusively of signs that are generic for the goods or services that they seek to identify; the mark consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; the mark consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time, or production of the goods or rendering of the services, or other characteristics of the goods or services; (11) the mark consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (12) the mark consists of color alone, unless defined by a given form; or (13) the mark is contrary to public order or morality. Language of mark: The trademark must be registered as actually used on the goods or services. The trademark examiner may, however, require the applicant, by way of official action issued in connection with the application, to submit a translation of the mark in English, if the original language is other than the English language. Translation of the mark into the local language is not required. Trade names: A business or company name may be registered as a trade name. Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties.

In determining whether a mark is well-known, the following criteria or any combination thereof may be taken into account: (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 distinction 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 outcome of litigations dealing with the issue of whether the mark is a well-known mark; and (11) 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 his mark is a well-known mark.

The owner of a registered mark has the exclusive right to prevent all third parties not having the owner's consent from using identical or similar signs or containers in the course of trade for goods or services that are identical or similar to those for which the trademark is registered if such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The exclusive right of the owner of a well-known mark registered in the Philippines shall extend to goods and services that are not similar to those for which the mark is registered if (1) use of that mark in relation to those goods or services would indicate a connection between the goods or sbrvices and the owner of the registered mark; and (2) the interests of the owner of the registered mark are likely to be damaged by such use.

The application for the registration of the mark shall be in Filipino or in English and shall contain the following: (1) a request for registration; (2) the name and address of the applicant; (3) the name of a state of which the applicant is a national or where he has domicile; and the name of a state in which the applicant has a real and effective industrial or commercial establishment, if any; (4) where the applicant is a juridical entity, the law under which it is organized and existing; (5) the appointment of an agent or representative, if the applicant is not domiciled in the Philippines; (6) where the applicant claims the priority of an earlier application, an indication of: (a) the name of the state with whose national office the earlier application was filed or if filed with an office other than a national office, the name of that office; (b) the date on which the earlier application was filed; and (c) where available, the application number of the earlier application; (7) where the applicant claims color as a distinctive feature of the mark, a statement to that effect, as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark that are in that color; (8) where the mark is a three-dimensional mark, a statement to that effect; (9) the size of a sheet on which a drawing is made must be exactly 210 millimeters by 297 millimeters, or the size of an A4 paper. 19 millimeters from its edges, a single marginal line is to be drawn, leaving the "sight" precisely 172 millimeters by 259 millimeters. Within this margin all work and signatures must be included. One of the shorter sides of the sheet should be regarded as its top; (10) 10 facsimiles of the drawing must be printed in black ink or in color, if colors are claimed, one facsimile on Bristol Board and the other nine facsimiles in an ordinary coupon bond paper and must be capable of being satisfactorily reproduced when published in the IPO Gazette. The size of the sheet on which these facsimiles are to be printed must be 70 millimeters long and 35 millimeters wide; (11) a transliteration or translation of the mark or some parts of the mark, as prescribed in the Regulations; (12) the names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; and (13) a signature by, or other self-identification of, the Applicant or his representative. Convention An application for registration of a mark filed in the Philippines by a person who previously duly filed an application for registration of the same mark in a contracting country, (in a convention where the Philippines is likewise a signatory), shall be considered as filed as of the day the application was first filed in the foreign country. An application with a claim of right of priority must be filed within six months from the date the earliest foreign application was filed. Without need of any notice from the office, bureau, or examiner, the applicant shall file an English translation of a certified copy of either of the following within three months from the date of filing in the Philippines: (1) foreign application showing the date of filing; or (2) foreign registration indicating the date of filing. Filing date The filing date of an application shall be the date on which the office received the following indication and elements in English or Filipino: (1) an expressed or implicit indication that the registration of a mark is sought; (2) the identity of the applicant; (3) indications sufficient to contact the applicant or his representative, if any; (4) a reproduction of the mark whose registration is sought; and (5) the list of the goods or services for which the registration is sought. No filing date shall be accorded until the required fee is paid.Applications for the trademark registration must be filed with the Director of the Trademarks, Intellectual Property Office (IPO), Makati City, Philippines. An application for registration is prosecuted ex parte by the applicant; that is, the proceedings are like a law suit in which there is a plaintiff (the applicant) but no defendant, the court itself (the Examiner) acting as the adverse party. No attention shall be paid to ex parte statements or protests of persons concerning pending applications to which they are not parties, unless information of the pendency of these applications shall have been voluntarily communicated by the applicants. Once the application meets the filing requirements, the IPO shall examine whether the application meets the requirements under the law and whether the mark is registrable. If the result of the examination is favorable, upon payment of the prescribed fee, the IPO shall cause the application to be published in the IPO Official Gazette. If after the examination, the applicant is not entitled to registration for any reason, the IPO shall advise the applicant thereof and the reasons therefore.

Applications for the trademark registration must be filed with the Director of the Trademarks, Intellectual Property Office (IPO), Makati City, Philippines. An application for registration is prosecuted ex parte by the applicant; that is, the proceedings are like a law suit in which there is a plaintiff (the applicant) but no defendant, the court itself (the Examiner) acting as the adverse party. No attention shall be paid to ex parte statements or protests of persons concerning pending applications to which they are not parties, unless information of the pendency of these applications shall have been voluntarily communicated by the applicants. Once the application meets the filing requirements, the IPO shall examine whether the application meets the requirements under the law and whether the mark is registrable. If the result of the examination is favorable, upon payment of the prescribed fee, the IPO shall cause the application to be published in the IPO Official Gazette. If after the examination, the applicant is not entitled to registration for any reason, the IPO shall advise the applicant thereof and the reasons therefore. The applicant shall have a period of four (4) months in which to reply or amend his application, which will then be reexamined.

A certificate of registration shall remain in force for 10 years if the registrant files a declaration of actual use and evidence of use to that effect within one year from the fifth anniversary of the date of registration of the mark, or shows valid reasons based on the existence of obstacles to such use, as prescribed by the regulations. Otherwise, the Office will remove the mark from the register. A certificate of registration may be renewed for periods of 10 years at its expiration upon payment of the prescribed fee and upon filing of a request. The request shall contain the following indications: (1) an indication that renewal is sought; (2) the name and address of the registrant or his successor-ininterest, hereafter referred to as the "right-holder"; (3) the registration number of the registration concerned; (4) the filing date of the application that resulted in the registration concerned to be renewed; (5) where the right holder has a representative, the name and address of that representative; (6) the names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the said classification; and (7) a signature by the right holder or his representative. Such request shall be in Filipino or English and may be made at any time within six months before the expiration of the period for which the registration was issued or renewed, or it may be made within six months after such expiration on payment of the additional fee herein prescribed.

To constitute "use" of a trademark in the Philippines, a trademark must be used in commerce in the Philippines. Use must be proven for maintenance and renewal of the registration. The applicant or the registrant is required to file a declaration of actual use of the mark, with evidence to that effect, within three years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the register. For information concerning renewal, see Duration and Renewal, above. After registration of a mark, an affidavit of use or reasons for nonuse must be filed within the prescribed period in order to maintain the trademark registration. Only the registrant or assignee of record may file an affidavit of use or reasons for nonuse. Nonuse of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse nonuse of a mark. The use of a mark in a form different from the form in which it is registered which does not alter its distinctive character is not a ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark. The use of a mark in connection with one or more goods or services belonging to the class for which the mark is registered prevents its cancellation or removal .in respect of all other goods or services of the same class. The use of a mark by a company related to the registrant or applicant inures to the latter's benefit, and such use does not affect the validity of such mark or of its registration if the mark is not used in such manner as to deceive the public. If the registrant or applicant controls the use of a mark by another person based on the nature and quality of the goods and services, that use will inure to the benefit of the registrant or applicant.

Under existing regulations, Internet domain name (IDN) applications are treated as service mark applications. These IDN applications must specify one of the Nice International Classes 35 to 42 specifying the services covered by the Internet domain name. After the filing of the appropriate petition and payment of fees, applications for IDN marks may be given priority examination.

With the passage of Intellectual Property Code, and in accordance with provisions of the Trade Related Aspects of Intellectual Property Rights (TRIPS), the Bureau of Customs created an Intellectual Property Unit charged with prohibiting the importation of goods or products that infringe upon all intellectual property rights as defined by law. The following are prohibited from entering the ports of the Philippines: (1) those that copy or simulate any mark or trade name registered with the Intellectual Property Office in accordance with the IP Code, without the authorization or consent of the registrant or its duly authorized agent; (2) those that copy or simulate any well-known mark as determined by competent authority, without the authorization or consent of the owner or its duly authorized agent; (3) those that are judicially determined to unfairly compete with products bearing marks whether registered or not; (4) those that constitute a pirated copy or likeness of any work, , whether published or unpublished, on which a copyright subsists; (5) those that present themselves as a substantial simulation of any machine, article, product, or substance duly patented under the IP Code, without the authorization or consent of the patentee or its duly authorized agent; and (6) those that use a false or misleading description, symbol, or label that is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association of the imported goods with another person's goods; or those which misrepresent their nature, characteristics, qualities, or geographic origin. The IPR holderlowner or his agent may request in writing from the Commissioner of Customs or the District Collector of Customs, the issuance of an alert or hold order on goods suspected to be infringing. The applicant must submit documentary requirements prescribed by the Bureau of Customs along with its written request for an alert or hold order. On the basis of reliable information, the Bureau of Customs, on its own initiative, may issue the alert or hold orders. Upon issuance of the hold or alert orders, the customs examiner, in the presence of the IPR holder or his agent and the consignee, must examine the goods within 24 hours from receipt of the notice of the hold or alert order. Upon determination of a prima facie basis to subject the goods to seizure proceedings, the matter is referred to the Collector of Customs within 24 hours for the issuance of a Warrant of Seizure and Detention against the shipment. The Bureau of Customs maintains an IPR Registry where IP holders may record their IPR, together with other relevant information that the bureau uses for effective border control regulation.