Background
The Intellectual Property Office of the Philippines (“IPOPHL”) issued Memorandum Circular No. 2025 009, or the Rules and Regulations for the Declaration and Creation of the Register of Well Known Marks (the “Rules”), which took effect on 28 April 2025. The Rules introduce an independent administrative process through which trademark owners may apply for a declaration that their marks are well known, subject to the criteria set out therein.
This mechanism complements existing protection under the Intellectual Property Code (the “IP Code”). Section 123.1(e) of the IP Code bars the registration of a mark that is identical or confusingly similar to one already determined by a competent authority to be well known when used for identical or similar goods or services, even if the well known mark is not registered in the Philippines. Section 123.1(f) further protects well known marks that are registered in the Philippines by also prohibiting the registration of identical or confusingly similar marks for unrelated goods or services where such use would likely create a false impression of a connection with the owner of the well known mark and is likely to cause damage to such owner’s interests.
By establishing a dedicated administrative route for seeking well known mark status, the Rules give trademark owners a more direct means of securing such recognition, thereby reducing dependence on determinations issued in adversarial intellectual property proceedings (e.g., infringement or unfair competition cases), which previously served as the primary avenue for obtaining a finding that a mark is well known.
Practical Highlights
1) Criteria to be satisfied
To determine whether a mark qualifies as well known, the Rules provide that the assessment focuses on the knowledge of the relevant sector of the public (not the public at large), including knowledge in the Philippines which was developed through marketing and promotion of the mark.
Under the Rules, there are 4 mandatory elements that must be established, namely: (a) the duration, extent and geographical area the mark has been used and promoted, (b) the market share of the goods or services to which the mark applies in the Philippines and internationally, (c) the degree of the inherent or acquired distinctiveness of the mark, and (d) the quality, image or reputation that the mark has developed.
In addition to these core elements, an applicant may further support their claim by presenting supplementary indicators, such as: (a) evidence of registrations in other jurisdictions, (b) exclusivity of registration attained in other jurisdictions, (c) extent the mark has been used globally, (d) demonstrations of the mark’s commercial value, (e) records of successful protection of the mark, and (f) outcome of ligations addressing the issue of whether the mark is well-known.
2) Procedure For Registration
The applicable procedures differ depending on whether a trademark has already been declared a well known mark by a competent authority. For purposes of the Rules, “competent authority” refers to the IPOPHL’s Director General, the Bureau of Legal Affairs, the Director of Trademarks (the “Trademarks Director”), or any court with appropriate jurisdiction.
A. Without previous declaration as a well-known mark
Where a mark has not yet been declared well-known by a competent authority, the process involves the following principal stages:
(i) Ex-parte application and review
A well known mark application begins as an ex-parte process, meaning it proceeds without an opposing party. The trademark examiner reviews the notarized application and supporting evidence and may issue an office action if further information or clarification is required. An applicant must respond to an office action within the prescribed periods; otherwise, the application is deemed abandoned, subject to revival on permissible grounds within a limited timeframe.
If the trademark examiner finds the application to be compliant, it will be endorsed to the Trademarks Director for further evaluation.
(ii) Initial Decision and Potential Third Party Observation
If the Trademarks Director issues an initial decision declaring the mark well-known, the decision is published in the IPOPHL’s electronic publication, the E Gazette. Publication in the E-Gazette triggers a 30-day period for any interested party who may be damaged by the declaration to file a Notice of Third Party Observation, and a subsequent 30-day period for submitting a verified Third Party Observation (“TPO”).
An applicant is given an opportunity to comment on the TPO. A consultative committee constituted within the IPOPHL then evaluates both submissions and issues a recommendation, on which the Trademarks Director issues its decision. Generally, the Trademarks Director’s decision may be appealed to the Director General, and subsequently to the Court of Appeals.
(iii) Declaration and Registration of Well-Known Mark
If a TPO is filed, the mark is formally declared well known only upon finality of the decision upholding the declaration. Otherwise, if no TPO is filed, the mark is declared as well-known on the 31st day after publication in the E-Gazette. Thereafter, the Bureau of Trademarks issues a certificate of well known mark status and enters the mark in the Register of Well Known Marks (“Register”).
B. With previous declaration as a well-known mark
If a mark has already been declared well known by a competent authority but is not yet included in the Register, the trademark owner or their authorized representative may file a Manifestation with the Bureau of Trademarks. The Manifestation must include supporting evidence (such as certified copies of the decision and the entry of judgment) and be accompanied by the required fees. If the submission is compliant and satisfactory, the mark will be included in the Register.
3) Effect and Duration of Declaration and Registration
A declaration that a mark is well known serves as prima facie evidence of its well known status for the goods or services covered. It also results in the mark’s inclusion in the Register, which trademark examiners must consider in relation to Section 123.1(e) and (f) of the IP Code when evaluating new trademark registration applications.
The declaration remains valid for 10 years and may be renewed for successive 10 year periods. To maintain the declaration, trademark owners must demonstrate the mark’s continued well known status (such as through advertisements, certificates of registration, or financial statements) within 1 year from the 5th anniversary of the declaration and at every renewal. This requirement applies regardless of whether or not the well-known mark is registered in the Philippines.
For unregistered well-known marks, the trademark owner must also demonstrate continuous commercial use, such as by submitting labels, signages, or photographs of goods bearing the mark. For registered well-known marks, proof of actual use requirements are governed by the trademark registration regulations.
4) Revocation of Declaration and Registration
A declaration that a mark is well known may be revoked by the IPOPHL motu proprio (on its own initiative), if the trademark owner fails to (a) renew the declaration within 6 months before its expiry, or within 6 months after expiry subject to payment of the applicable surcharge, or (b) submit the required proof of continuous commercial use, as discussed above.
Separately, a party may file a petition with the Bureau of Trademarks to revoke a declaration on the ground that the mark no longer maintains its well known status, as supported by substantial evidence.
Conclusion
Trademark owners, particularly those operating across multiple jurisdictions including the Philippines, should periodically assess whether their mark’s reputation and commercial footprint satisfy the criteria under the Rules. Where these criteria are met, pursuing an administrative declaration may be advisable, as it provides a proactive and efficient means of formalizing the well known status that the mark has already earned in the marketplace.
A well known mark declaration also affords stronger protection by extending coverage against later uses or applications that may take advantage of or interfere with the mark’s goodwill. Overall, this measure helps preserve the mark’s commercial value and supports enforcement efforts by placing the owner in a stronger position when addressing trademark challenges.
