This just in: Well-Known Marks Register, a First in the Philippines

Effective 28 April 2025, brand owners may now register their well-known marks in the Philippines' first Well-Known Marks Register created by the Intellectual Property of the Philippines (IPOPHL) through its recently issued Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks (Memorandum Circular 2025-009). Through this register, well-known marks may be recognized by the Director of Trademarks through an administrative non-adversarial procedure outside of costly and time-consuming litigation proceedings.

Well-Known Marks

Under the IP Code of the Philippines, a broader protection is entitled to a mark that is declared by a competent authority to be well-known internationally and in the Philippines, whether registered in the Philippines or not.

1. An unregistered but well-known mark is protected with respect to identical or similar goods/services.
2. A registered well-known mark is protected even with respect to dissimilar goods/services, provided that the third party's use of the mark would suggest a connection to the owner of the well-known mark, who stands to be damaged by such use.

Certificate of Well-Known Declaration

The Certificate of Well-Known Declaration shall serve as prima facie evidence of the well-known status of a mark with respect to the goods and services covered in the application. This Certificate of Well-Known Declaration may be presented to the courts or to the IPOPHL's Bureau of Legal Affairs to prove the well-known status of the mark, dispensing with the need to submit voluminous evidence of fame in every trademark litigation proceeding.

Mandatory Criteria to Qualify as Well-Known Mark

The mandatory criteria to qualify as well-known mark are:

1. the duration, extent and geographical area of any use and 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; and
4. the quality, image, or reputation acquired by the mark.

An applicant must not have a pending case in the Philippines where the well-known status of the mark is at issue.

Validity Period of Certificate of Well-Known Declaration

The Declaration shall be valid for 10 years provided the mark is continuously used in Philippine commerce, renewable for another term of 10 years upon request.

The IPOPHL is expected to soon publish its list of trademarks previously declared as well-known by the Philippine courts or the Bureau of Legal Affairs, based on its records. Owners of such trademarks may file a Manifestation with a certified true copy of the Entry of Judgment of the decision with such declaration to request inclusion in the register, if their marks are excluded in the published list.

Click here to see the full text of the IPOPHL MC 25-009, Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks.

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Brand owners are encouraged to take advantage of this new streamlined mechanism to secure recognition of their well-known marks. Interested applicants may reach our IP Team at ipteam@platonmartinez.com or catch our Atty. Jenny Santiago, a member of the INTA Famous and Well-known Marks Committee, in person at the upcoming INTA Annual Meeting in San Diego, California on May 17 to 21, 2025.