On April 5, 2025, the Intellectual Property Office of the Philippines (IPOPHL) has promulgated Memorandum Circular No. 2025-009, introducing the Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks (hereafter "the New Rules"). Aimed at streamlining the recognition process for well-known trademarks, strengthening protection, and establishing a unified "Register of Well-Known Marks," the New Rules will take effect on April 28, 2025.
Key Highlights: Clear Criteria and Procedures for Declaring Well-Known Marks
Aligned with the Paris Convention, the TRIPS Agreement, and the Intellectual Property Code of the Philippines, the New Rules include the following provisions:
1. Eligibility and Documentation Requirements
o Applicants (natural or juridical persons) must submit a notarized application accompanied by:
§ Trademark representation, goods/services classification (under the Nice Classification), evidence of use (e.g., market share, advertising investments, international registrations), and proof of fee payment.
o Special requirements: Indicate if the mark is a 3D, collective, or certification mark; disclose pending legal cases involving the trademark.
2. Ex Parte Examination Process
o Applications undergo review by trademark examiners ex parte (without adversarial parties). Applicants must respond to office actions within 2 months, or the application is deemed abandoned (revival permitted once).
o Upon approval, the Director of Trademarks issues a declaration of "Well-Known Mark," published in the E-Gazette.
3. Third-Party Opposition Mechanism
o Within 1 month of publication, interested parties may file a "Notice of Third-Party Observation" (fee: Php 15,000) with supporting evidence. Applicants may respond within 1 month, and final decisions rest with a Trademark Bureau consultative committee.
4. Validity and Renewal Requirements
o Declarations are valid for 10 years, renewable indefinitely. Renewals require submission of proof of continuous use (e.g., sales records, advertisements) and reputation evidence (e.g., registration certificates, financial statements) at the 5th anniversary and every subsequent 10 years.
o Failure to renew or submit proof results in automatic revocation.
5. Transitional Provisions for Existing Marks
o Marks previously declared well-known by competent authorities (e.g., courts) must file a "Manifestation" and proof of use within 5 years of the Rules’ effectivity, or risk exclusion from the Register.
Transparent Fee Schedule
The New Rules outline the following fees:
Type of Fee | Amount (PHP) |
Application Fee |
|
- First class | 50,000.00 |
- Each additional class | 10,000.00 |
Recordation of Previously Declared Marks (per class)¹ | 5,000.00 |
Extension of Response Deadline | 1,500.00 |
Revival of Abandoned Application | 1,200.00 |
Appeal to the Director General | 5,500.00 |
Third-Party Observation/Opposition Filing | 15,000.00 |
Extension for Third-Party Observation | 4,000.00 |
Certificate Issuance | 5,000.00 |
Renewal Fee (per class) | 10,000.00 |
Declaration of Actual Use (per class) | 5,000.00 |
Petition for Revocation | 20,000.00 |
Information source: https://www.ipophil.gov.ph/well-known-marks/
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