Philippines well-know marks

Remedies of International well-know marks

Often, trademark owners are at a loss as to the remedies available if and when someone else registers an identical and confusingly similar mark which rightfully belongs to them but is neither registered nor used in the Philippines. Luckily, owners of internationally well-known marks are not without recourse.
The trademark owner has two (2) options. First, the trademark owner may wait for the mark to be published for opposition in the e-Gazette of the Intellectual Property Office of the Philippines (IPOPHL).
Once published, the trademark owner may file an Opposition based on confusing similarity to a trademark or translation of a mark which is considered by a competent authority to be well-known internationally and in the Philippines.

Second, if the discovery is made only after the questioned mark has been granted registration, then the remedy is to file cancellation case within five (5) years from the date of registration of the mark.

The question now lies on whether the trademark owner has the right and capacity to sue under Philippine laws even if it does not have use and registration in the Philippines. The answer is YES.

The Rules on Inter Partes Proceedings provide that any foreign national or juridical person, whether or not engaged in business in the Philippines may bring a petition for opposition or cancellation so long as the country of which he or it is a national, or
domiciled, or has a real and effective industrial establishment 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.

Articles 6bis and 8 of The Convention of Paris for the Protection of Industrial Property, otherwise known as the Paris Convention, governs the protection of well-known trademarks. Furthermore, as held in the case of In & Out Burger (G.R. No.171053, October 15, 2007), the scope of protection initially afforded by Article 6bis of the Paris Convention has been expanded in such a way that a well-known mark is protected in a country even if the mark is neither registered nor used in that country.

Trademark owners may breathe a sigh of relief knowing there are available remedies in the Philippines.

D'Agostini Group | P.Iva 03612400261