Overview of the Philippine trademark system

1. Procedures and flow from application to registration

To protect a trademark in the Philippines, you basically need to file a trademark application with the Intellectual Property Office of the Philippines (IPOPHL) and have it registered. Trademark rights are based on a "first-to-file" system that arises through registration (Article 122 of the Intellectual Property Law), and as a general rule, rights are not granted to unregistered trademarks (excluding well-known trademarks; see below).

Flow of application procedure: The general flow from application to registration of a Philippine trademark is as follows.

• (1) Application submission: Submit your trademark application online (using IPOPHL's electronic filing system eTMFile). The application should include information such as applicant information, trademark indication, designated goods and services (based on the Nice classification), and whether priority is claimed. Foreign applicants must attach a Power of Attorney appointing a local representative (trademark attorney residing in the Philippines) (details below). The language will be English or Filipino (Article 124, Paragraph 1 of the Intellectual Property Law).

• (2) Application date and formality examination: Once the application is submitted and the basic requirements (trademark indication, applicant information, description of designated goods and services, etc.) are complete, a application date will be granted after formality examination.If the required items are missing, amendments will be required, and if the application is not amended within the designated period, the application will be dismissed (Article 132 of the Intellectual Property Law).

• (3) Substantive Examination: Once the application meets the formal requirements, a substantive examination by a trademark examiner will be conducted. The examiner examines whether the trademark is legally registrable (is it distinctive and does not fall under any grounds for refusal), and also determines whether there is any conflict with the earlier filed trademark (relative grounds for refusal). In the Philippines, if there is a registered trademark or a prior application trademark that is identical or similar to the applied trademark, the same or similar goods or services cannot be registered (Article 123, Paragraph 1 (d) of the Intellectual Property Law). The examiner will also conduct a prior trademark search as necessary, and if there is a conflicting application, this will be a reason for refusal [26†L182 -L190].
  Exam Result: If the examiner finds reasons for refusal, an Office Action will be sent. The applicant can respond by submitting a written opinion or amendment within four months of receiving the notification (Article 133, Paragraph 3 of the Intellectual Property Law). After receiving a response, the examination will be resumed, and if the reasons for refusal are resolved, the application will proceed to the next stage. If the reasons for refusal are not resolved even after responding, the application will be rejected as final and it is possible to contest it at trial (an appeal against the examiner's final decision from the Director of the Trademark Bureau to the Commissioner of the Intellectual Property Office will be accepted).

• (4) Application publication and opposition: After clearing the substantive examination, the application will bepublished in the Trademark Gazette (IPOPHL e-Gazette). Thirty days after publication is the opposition period during which a third party can object to the registration of the trademark (Article 134 of the Intellectual Property Law). If an objection is filed, the IPO's Bureau of Legal Affairs will conduct a hearing. As grounds for opposition, you can claim that there is a risk of confusion with an earlier filed/registered trademark, or that the trademark itself violates registration (for example, it is too descriptive). It is possible to apply for an extension of the objection period if there is a valid reason, but the maximum period is set by law. If no objection is filed, or if the objection is dismissed or resolved, the registration process will proceed.

• (5) Registration decision/registration fee payment: After the opposition period expires, the trademark will be registration decision and the applicant will pay the prescribed registration fee (certificate issuance fee). Registration fees must be paid within two months of notification. Once the payment is completed, a Certificate of Registration will be issued. At this point, trademark rights arise and become effective (Article 136 of the Intellectual Property Law). Trademark registration in the Philippines takes effect from the date of issuance of the registration certificate, not from the filing date.

• (6) Post-registration public notice: After the registration certificate is issued, it will be published again in the IPOPHL gazette to inform the public.

Estimated examination period: Normally in the Philippines, if there are no particular reasons for refusal or objections, the process is relatively short, about 5 to 12 months from application to registration. In some cases, a registration certificate can be issued as early as three months. The main factors that prolong the examination period include amendments due to insufficient formal requirements, responses to reasons for refusal, and opposition procedures.

Duration after registration: The duration of trademark rights is 10 years from the date of registration. Renewal is also possible every 10 years, and renewal applications can be made within 6 months before expiry, or even later, within the 6-month grace period by paying an additional fee. Please note that during the renewal procedure, you are also required to submit a declaration of use as described below.

2. Recording requirements/examination standards (distinctiveness and reasons for refusal)

Summary of registration requirements: In the Philippines, trademarks can be registered for "visible signs used for goods or services" (Article 121, Paragraph 1 of the Intellectual Property Law). Therefore, as a general rule, characters, figures, symbols, logos, and graphically expressed forms are eligible for registration. In recent years, regulations have recognized such trademarks as 3D trademarks, Color trademarks (limited to combinations with specific shapes), Motion trademarks, Position trademarks, and Hologram trademarks, and the type thereof must be specified in the application. However, non-visual signs such assound marks and olfactory marksare not yet protected under current law (due to visibility requirements). A trademark must have distinctiveness to identify the source of the goods and services of others. The standards regarding distinctiveness and the types of trademarks that cannot be registered (reasons for refusal) are detailed in Article 123 of the Intellectual Property Law. The main points are as follows.

• Absolute grounds for refusal (considerations regarding distinctiveness): The following trademarks cannot be registered as they lack distinctiveness:

  • A mark that directly represents the general name (common name/common name) or common name of a product or service (for example, when registering "APPLE" as a trademark for an apple).

  • Displays that directly indicate the origin, quality, efficacy, use, quantity, value, etc. of goods and services (so-called descriptive marks) (e.g. "SWEET" for confectionery, "TOKYO" brand for products made in Tokyo).

  • Commonly used commonplace signs or commonly used trade markings (e.g. marks commonly used in industry).

  • A trademark consisting of only a simple color (a trademark consisting of only a pure color, not in combination with a shape, etc.).

  • A three-dimensional shape consisting only of the functionally essential shape of the product or the shape of the product itself (functional shapes cannot be protected).

  • Signs that violate public order and morals (things that violate social order or ethics).
    Registration of these trademarks will be refused because they lack distinctiveness and legality as trademarks. Furthermore, even if the descriptive trademarks and commonly used trademarks mentioned above have acquired distinctiveness (secondary meaning) through use in the Philippines, they may be allowed to be registered (Article 123, Paragraph 2 of the Intellectual Property Law). For example, if it can be proven that the product has become well known through continuous exclusive use for five years or more, registration may be granted in exceptional cases.

• Relative reasons for refusal (conflict with other's rights): Registration cannot be made in the following cases due to conflict with another's trademark rights.

  • A trademark that is already registered by another person or a trademark that has been applied for earlier and has priority is identical or similar to the trademark that causes confusion, and the designated goods/services are the same or similar. This provision is intended to prevent conflicts with the holders of trademark rights that have been filed earlier or registered earlier. The Philippines has a first-to-file system, so if an identical or similar trademark has already been applied for or registered, registration will be refused even if you apply later.

  • A trademark that is the same or similar to a well-known/famous trademark and used for the same or similar products or services. Well-known trademarks here refer to trademarks of others that are widely known in the Philippines or internationally, regardless of whether they are registered or not. Even if the application is unregistered, a trademark that is confusingly similar to another person's well-known trademark will be considered a fraudulent application and will be rejected.

  • Dilutive use of a famous trademark: Even if a trademark that is identical or similar to another person's famous trademark (registered in the Philippines and famous) is used for different types of goods or services, registration will be refused if the use is likely to harm the interests of the owner of the famous trademark. This is a provision that extends the protection of well-known trademarks, and also excludes the derogatory use of well-known trademarks on dissimilar products.

• Other reasons for refusal:

  • Trademarks that violate public order and morals or violate the moral rights of others will also be rejected. For example, National flags and emblems and emblems of national government agencies cannot be registered. Trademarks that include the name or likeness of another person without the consent of the person himself (living) or his family (such as the widow of a deceased president) will also be rejected.

  • Indications that are likely to cause confusion will also be rejected. For example, trademarks that cause misunderstanding regarding quality or origin fall under this category.

The requirements for registration are that the trademark does not fall under any of the above reasons for refusal, that is, the trademark must have the ability to distinguish one's own products from others, do not violate public order and morals, and do not conflict with the vested rights of others. Please note that in Philippine examination practice, you may be required to **disclaim (waiver a right claim)** for a part of a trademark. For example, if a patent includes descriptive words or product names, it may be possible to register the entire document by clearly stating at the time of filing that no rights will be claimed for that part (Article 126 of the Intellectual Property Law).

Examination standards and operations: IPOPHL conducts examinations based on the above laws, but specific examination standards are stipulated in the "Trademark Regulations." The revised Trademark Regulations in 2023 have improved the handling of multi-class applications and new types of trademarks. In the Philippines, it is possible to designate multiple classes in one application (multi-class application), and the application fee increases depending on the number of classes specified (an additional fee of the same amount as the first class is paid for each additional class). This is the same operation as in Japan. At the time of examination, even if the applied trademark lacks distinctiveness, it is possible to request registration by asserting obtaining conspicuousness through 5 years of use as mentioned above. Furthermore, even if there is a conflict with a cited trademark, registration may be approved by submitting a **Letter of Consent** from the right holder. The Philippine Intellectual Property Office will take the consent form into consideration, but it will still be judged on a case-by-case basis to prevent confusion, and even a consent form will not guarantee registration.

3. Obligation to use and non-use cancellation system

The major features of the Philippine trademark system are the obligation to use trademarks and cancellation system based on non-use. This is something that Japanese companies need to be especially careful about.

• Required to submit a Declaration of Actual Use (DAU): In the Philippines, it is mandatory to submit a Declaration of Actual Use (DAU), which declares and certifies that the trademark has been actually used within a certain period of time after filing. Specifically, documents proving the use of the trademark (declaration of use and evidence of use such as photographs and advertisements) must be submitted within 3 years from the filing date. If you do not submit a DAU within this three-year period without justifiable reason, your application will be rejected and will not result in registration. Even if it has already been registered, the registered trademark will be deleted from the register (Article 124, Paragraph 2 of the Intellectual Property Law). In practice, you should submit your DAU online by the third anniversary of your application. If you are unable to start using it in time, you can apply for a 6-month extension (must apply within the deadline), but an extension fee will be charged.
  In addition, a declaration of use must also be submitted after 5 years from registration. Within one year after the fifth anniversary of the registration date, you must submit a DAU proving continued use of the trademark. This provision is similar to the "Certification of Use" system in the United States, but is a statutory requirement in the Philippines. Furthermore, a declaration of use must be submitted at the time of renewal. The 2017 rule changes added the requirement to submit DAUs within one year of renewal registrationand within one year after each renewal, five years after each renewal. In other words, in the Philippines, it is necessary to continuously declare the status of use of a trademark at each of the following points: (a) 3 years after filing, (b) 5 years after registration, (c) after renewal, and (d) 5 years after renewal. Please note that if you miss these deadlines even once, your registration will be canceled and you will no longer be able to maintain your trademark rights.

• Cancellation for non-use (cancellation request by a third party): Apart from the above DAU system, if a registered trademark has not been used for a certain period of time, a third party can cancel the registration. Pursuant to Article 151, Paragraph 1 (c) of the Philippine Intellectual Property Act, if a registered trademark is unused in the Philippines for three consecutive years without justifiable reason, an interested party (a third party with an interest) may file a request for cancellation due to non-use. This three-year non-use period generally begins on theregistration date (can be claimed at least three years after registration). If the cancellation request is approved, the trademark registration will be cancelled. In the Philippines, emphasis is placed on the use of trademarks when exercising rights, and it is difficult to maintain formal registration and only retain rights.
  However, exceptions may be made if there are justifiable reasons (circumstances) for non-use. For example, if the product cannot be used due to import regulations or force majeure, non-use can be exempted (Article 152 of the Intellectual Property Law). In addition, even if the form of use is slightly different from that of a registered trademark, it is recognized as use as long as the difference does not impair the distinctiveness of the trademark (for example, a change in font), and there are also regulations that if it is used on some products, it is also considered use on other products in the same class. Therefore, if you are actually using it, you can prevent it from being revoked by proving it.

Comparison with Japan: In Japan, use of trademarks is not required at the time of application or registration, and even after registration there is no obligation to periodically submit declarations of use like in the Philippines. However, if a registered trademark has remained unused for three years or more, any person can request the Patent Office for a trial for cancellation of non-use (Article 50 of the Trademark Law). In both the Philippines and Japan, a trademark's value is realized only when it is actually used, so it is important to start using it as soon as possible and continue using it after registration. In the Philippines, if the start of use is delayed, it will be difficult to comply with DAU in the third year, so the timing of trademark application should be considered in accordance with local sales and business plans.

4. Rights infringement and remedies

Efficacy of trademark rights: The right holder of a registered trademark (trademark right holder) has the exclusive right to request an injunction against a third party who uses a mark that is the same or similar to the registered trademark for registered goods or services (or goods or services similar to these) without permission (Article 147, Paragraph 1 of the Intellectual Property Law). In particular, when the same trademark is used for the same product, there is a natural presumption that there is a risk of confusion, making it easier to find infringement. The scope of this right is almost similar to Japan's trademark law, and trademark owners can protect their registered trademarks to the extent that they are similar to their registered trademarks and protect against unauthorized use by third parties.

Types of Infringement: Under Philippine Trademark Law, there are broadly two types of trademark infringement.

• ① Infringement of registered trademark rights: The act of using a sign (or product packaging) that is identical or similar to a registered trademark on goods or services that are identical or similar to the goods or services designated by the registered trademark constitutes an infringement of trademark rights. Typically, this includes the sale of counterfeit or counterfeit products with registered trademarks, and the distribution and advertising of products bearing trademarks without permission. In order to establish trademark infringement, it is sufficient that there is a risk that consumers in the market will be confused about the origin of the product. It should be noted that in the Philippines, a trademark infringement lawsuit cannot be filed unless a trademark is registered (unregistered trademarks are treated as unfair competition acts, as described below).

• ② Infringement of a well-known trademark: The act of using a sign that creates an association with another person's well-known mark can be an infringement even if the designated goods or services are different. For example, a trademark that is confusingly similar to a world-famous brand may be attached to a product in a completely different field. If this dilutes the trademark or damages its reputation and harms the interests of the owner of a well-known trademark, Philippine law recognizes it as infringement (Article 147, Paragraph 2 of the Intellectual Property Law). In this way, well-known trademarks are afforded extensive protection that extends to other similar products.

Remedies: In the event of trademark infringement, rights holders may seek civil remedies. The main remedies are:

• Injunction (including provisional disposition): You can request the court to stop the infringing activity or seize the infringing product. In urgent cases, it is also possible to seek prompt relief by filing for an injunction. The judgment can also issue orders for the destruction of infringing goods, their packaging, and advertising materials (Article 157 of the Intellectual Property Law). In particular, counterfeit goods must be removed from the market and destroyed.

• Compensation for damages: The right holder can demand compensation from the infringer for damages incurred as a result of the infringing act. Philippine law allows the amount of damages to be calculated by (a) the amount equivalent to the profits that the right holder would have earned had there been no infringement, (b) the amount of profits earned by the infringer, and (c) if the above is difficult, an appropriate rate based on the amount of sales of the infringing product (Article 156, Paragraph 1 of the Intellectual Property Law). In addition, if the infringement is determined to be malicious or intentional (such as intentional deception), the court may, at its discretion, order punitive damages of up to twice the amount of the awarded damages. For example, if a counterfeit trademark is used to intentionally damage trust, double compensation can be imposed. However, in order to claim damages, it is necessary to prove that the infringer knew that the trademark was a registered trademark (intentionally), and it is easier to prove this if the trademark is marked as registered, such as by attaching the Ⓡ mark.

• Others: The Philippines also has border enforcement as an administrative remedy. In order to prevent the import of counterfeit brand products, there is a system in which trademarks are registered and monitored by the customs authorities (as stipulated in Articles 166 to 169 of the Intellectual Property Law). In addition, malicious infringements may result incriminal penalties. The Intellectual Property Law provides forintentional trademark infringement or unfair competition that is the misuse of a registered trademark to be punishable by2 to 5 years' imprisonment or a fine of P50,000 to P200,000 (or both). In the case of repeated offenses, even harsher penalties are stipulated, and in especially egregious cases such as selling counterfeit goods for profit, criminal prosecution may occur. In Japan, violations of trademark law are subject to criminal penalties such as imprisonment for up to 10 years, and in the Philippines, similarly, criminal penalties are used to deter infringement.

• Unfair Competition: Even in business activities using signs that are not registered trademarks, deceptive acts that cause people to confuse them with the products and business of others are prohibited as Unfair Competition (Article 168 of the Intellectual Property Law). For example, the act of impersonating another person's product by confusingly identifying it as a famous brand can be prosecuted civilly or criminally as unfair competition, even if the other party is not registered in the Philippines. This provision is equivalent to Japan's Unfair Competition Prevention Act, and in the Philippines there is scope for unregistered well-known trademarks to be protected under this provision. However, even in this case, the burden of proof is heavy, so it is still desirable to register important trademarks locally as a defensive measure.

As mentioned above, when trademark infringement occurs in the Philippines, the main remedy is Claim for injunction and compensation through civil litigation, just as in Japan. The right holder will first apply for a warning based on proof of content (sending a warning letter), or if necessary, apply for a provisional disposition, and if negotiations are unsuccessful, the right holder will file a formal lawsuit. In the Philippines, courts with specialized intellectual property divisions (Special Intellectual Property Courts) have been designated, and cases are handled by judges who are well versed in intellectual property litigation. IPOPHL's Legal Affairs Bureau also provides a **mediation** system between the parties, facilitating early resolution of disputes. In any case, it is important for Japanese companies operating in the Philippines to understand the local legal system and enforcement mechanisms so that they can promptly respond to infringements of their trademarks.

5. Relationship with international applications (Madrid system)

The Philippines joined the Madrid Protocol in 2012 and can use the international trademark application system. For Japanese companies, by designating the Philippines as a country through the Madrid Protocol, it is possible to obtain trademark protection without having to directly apply locally. The following is a summary of points to keep in mind regarding the relationship between the Philippine trademark system and the Madrid system.

• International application designating the Philippines: Based on the basic application or registration in Japan, it is possible to file an international application designating the Philippines as a country via the Madrid Protocol. In this case, the application procedure itself will be carried out via WIPO, and a notification of international registration will be sent from WIPO to the Intellectual Property Office of the Philippines (IPOPHL). Once received, IPOPHL conducts a substantive examination in the same way as an application in your home country. The examination standards and procedures are basically the same as for the domestic application described above, and the application goes through the same process, including formal requirements, examination of absolute and relative reasons for refusal, notification of refusal as necessary, publication and filing of opposition.

• Rejection Notification and Response: If IPOPHL finds grounds for refusal of an international registration designated in the Philippines, it will issue aprovisional refusal notification via WIPO. Upon joining Madrid, the Philippines declared an extension of the period for notification of refusal to 18 months, and normally some kind of notification is made within 18 months. If notified of reasons for refusal, the international registration holder (Japanese company) must respond to IPOPHL withintwo months. This response (written opinion, amendment, etc.) must be submitted in English and through a representative in the Philippines. It is possible to extend the deadline depending on the situation, but basically you are required to respond within a short period of time. If the reasons for refusal are resolved by an appropriate response, a notification of grant of protection will be sent to WIPO and the international registration will be deemed to have been protected (registered) in the Philippines.

• Objection: Even if the application goes through Madrid, the procedures for public notice and opposition are carried out in the same way in the Philippines. If an objection is raised within the publication period (30 days), IPOPHL will sendNotice of Refusal Based on Objection to WIPO. The hearing of the opposition is carried out at the BLA in the same way as for domestic applications, and if the opposition is ultimately dismissed, protection will be granted, and if it is approved, the rejection will be finalized to that extent and notified to WIPO. In the case of the Philippines, it has been declared that a final decision on an objection can be notified to WIPO even after 18 months.

• Creation of rights through international registration: An international registration designating the Philippines has the same effect as a domestic registration unless rejected by IPOPHL. If 18 months pass without a notification of refusal, protection is automatically granted for all designated goods and services in the Philippines. If no objections are raised thereafter, the trademark will ultimately be treated as equivalent to a domestic registration in the Philippines and recorded in the Trademark Registry. The term of protection under an international registration is 10 years from the date of international registration (depending on the validity period of the international registration itself), and from then on, if you renew your international registration, your protection in the Philippines will be automatically renewed.

• Submission of declaration of use (for international registrations): It should be noted that even if protection is obtained in the Philippines via Madrid, the obligation to submit a declaration of use (DAU) is imposed just as with domestic applications. In other words, the holder of an international registration that designates the Philippines must also submit a DAU directly to the Philippine Intellectual Property Office within three years from the date of the international registration (or the later date of designation of the Philippines). Submissions must be made to IPOPHL and cannot be submitted via WIPO. Furthermore, DAU submission is required at the same timing as for the domestic registration mentioned above, even after 5 years have passed since the grant of protection or after renewal. For example, if you obtain basic registration in Japan → international application → designate the Philippines and the international registration date is January 1, 2025, you must start using it in the Philippines by January 1, 2028, and submit a DAU by the same day. After that, if protection is granted in the Philippines in 2025, the obligation to submit will continue for the fifth year in 2030, within one year after renewal in 2035, and after five years in 2040. If you fail to submit a DAU within the deadline, the Philippine Intellectual Property Office will remove the trademark's protection from the register and notify WIPO of the loss of protection in the Philippines.
  Thus, the requirements for the use of Philippine domestic law are fully applicable even when transiting through Madrid. When Japanese companies designate the Philippines in their Madrid applications, it is extremely important to manage the DAU deadline in cooperation with a local agent.

• International filing from the Philippines to overseas countries: For reference, it is also possible for Philippine companies to apply to foreign countries such as Japan using the Madrid Protocol. File an international application in English with the Philippines as the original office and designate the foreign country. In this case, the response period in the event of a refusal in Japan varies by country, such as within three months, but joining the Madrid system has made it easier for Philippine companies to file multinational trademark applications.

As mentioned above, the Philippines is compatible with the Madrid system, and Japanese companies can obtain Philippine trademarks using the Madrid application. However, local examination and usage requirements are the same as for domestic applications, so cooperation with local agents and deadline management are essential. In particular, the existence of a declaration of use is a system that does not exist in Japan, so it is necessary to follow up through Madrid as well.

6. Requirements specific to foreign applicants (need for local representative, etc.)

When foreign companies and foreign residents apply for and register trademarks in the Philippines, there are some unique requirements and points to keep in mind. When Japanese companies apply for trademarks in the Philippines, they should mainly keep the following points in mind.

• Appointment of a local agent (Philippine trademark attorney): In the Philippines, if the applicant does not have a residence or place of business in the Philippines, it is required by law to appoint a local resident as agent or address of service (Articles 124(1)(e) and 125 of the Intellectual Property Law). Specifically, we delegate the procedures to a local trademark agent (patent attorney or lawyer), who handles all procedures locally, including application, examination, registration, and opposition handling. A Power of Attorney is required for power of attorney, but no notarization or consular certification is required; just a signature is sufficient. The local agent will handle everything from submitting application documents to managing various deadlines, so it is important to choose a reliable agency. Note that unlike Japan, procedures in the Philippines are basically online, so it is possible to proceed with electronic delegation while in Japan, but a local agent is essential for communication with government offices and compliance with local rules.

• Address for Service: Apart from a local agent, non-Philippine residents must specify a delivery address within the Philippines (usually the agent's address). This is stipulated in Article 125 of the Intellectual Property Law, and even if the notification does not reach the agent, it will be effective if it is delivered to the agent's address. In practice, all notifications are sent to the agent, so there is no need for the applicant to prepare one specifically, but this is a legal requirement.

• Registration status in other countries: A unique provision in the Philippine Intellectual Property Law is Article 131, Paragraph 2, which states that ``A person who seeks to obtain a trademark registration in the Philippines based on a foreign application under the Paris Convention may not obtain registration in the Philippines until the trademark is registered in his or her home country (the country to which the applicant belongs).'' This is an old provision established in the context of reciprocity under the Paris Convention, and it is said that it is not strictly applied in current operation, but when Japanese companies file applications in the Philippines to claim priority, etc., they must keep in mind the possibility of successful registration in their home country. However, if a product is not registered in Japan but is approved for registration in the Philippines first, this provision is rarely applied in practice, and in fact, there are cases where the registration in the Philippines takes precedence. However, it should be noted that in theory, the Philippine Office may require the submission of proof of registration** in the country of the basic application.

• Language and Documents: All procedures, including application, examination, and opposition, are conducted in English or Filipino (mostly English in practice). Japanese companies must prepare an application in English and specify the product/service name in English. When applying for a Japanese trademark (for example, katakana or kanji), you are required to include transliteration of the pronunciation and translation of the meaning in the application. This is a requirement to accurately convey the reading and meaning in examinations and public notices. Local agents can help with translations into English, but please be careful as misinterpreting the meaning may be grounds for rejection.

• Claiming priority: Based on the Paris Convention, it is possible to claim priority if the application is filed in the Philippines within 6 months of filing in Japan. If you file within 6 months from the priority date and claim priority in your application, the filing date in Japan will be treated as the filing date in the Philippines. Priority documents (such as a copy of the Japanese application gazette) must be submitted with an English translation after being requested by the Philippine Office (deferral of submission may be granted). The priority system operates in the same way as in Japan, so Japanese companies can first apply in Japan and then use it when expanding overseas, including to the Philippines.

• Other costs: The trademark application fee (government fee) in the Philippines is approximately 5,800 Philippine pesos per class (as of 2025 for large companies). There is a discount for small businesses, which costs around P3,600. Each additional class costs the same amount. Although the government fees themselves are lower than in Japan, please note that the aforementioned DAU submission and renewal costs are also incurred. There will also be a local agent fee, which varies depending on the agent. Overall, the cost is about the same as trademark registration in Japan, or it may be slightly higher depending on the number of classes.

The above are the main points for foreign (Japanese) applicants to keep in mind when acquiring and maintaining trademarks in the Philippines. In particular, appointment of a local agent and management of deadlines for declaration of use are elements that do not exist in Japan, so these must be handled carefully. Additionally, the Philippine Intellectual Property Office is deepening its cooperation with other countries including Japan, and English guidelines for Japanese companies have also been developed. If you have any doubts, please consult your local representative or Japanese patent attorney and deal with them appropriately.

7. Comparison of trademark systems in the Philippines and Japan

Finally, we will summarize the main differences and commonalities between the Philippine and Japanese trademark systems in a comparison table. Please use this as a reference when Japanese companies develop their trademark strategies in the Philippines.

Item	Philippine trademark system	Japanese trademark system
Accrual principle	Registration principle (first-to-file principle). Rights arise with registration. In principle, there are no rights if it is not registered (well-known trademark protection available)	Registration principle (first-to-file principle). If it is not registered, there is no right to it (well-known signs are protected under the Unfair Competition Prevention Act).
Application language	English or Filipino (working English). Japanese trademarks require romanization and translation.	Japanese (Application forms, etc. should be in Japanese).
Application method	Unified into electronic filing (eTMFile). Although it is possible to apply on paper, it is generally online. You can apply for multiple classes in one application.	Electronic or paper filing. You can apply for multiple classes in one application.
Examination details	Formal examination + substantive examination. There are absolute reasons for refusal (lack of discernment, violation of public order and morals, etc.) and relative reasons for refusal (conflict with earlier registration/earlier application). During the examination, a similar trademark search was conducted and the application was rejected as there was a conflict.	Similarly, method + substantive examination. There are absolute reasons for refusal and relative reasons for refusal (reasons for refusal include conflicts with well-known trademarks and prior applications). Examiners conduct similar searches using J-PlatPat, etc.
Means for resolving reasons for refusal	Available with a written opinion/amendment (within 4 months). If there is a conflict with the previous registration, consider submitting a consent form (case by case). Descriptive trademarks can be claimed to have distinctiveness after being used for 5 years or more.	Respond by written opinion/amendment. In principle, registration is not allowed if it is similar to a previous registration (submission of consent form is possible in Japan, but please judge carefully). It is possible to claim that the product has acquired distinctiveness (proven as well-known by using the product for more than 3 years).
Examination period	Average 5 to 12 months (if things go well, registration assessment will be done in 3 to 5 months).	On average, it takes about 6 to 10 months for the first screening results. The JPO's goal is within six months. If all goes well, you can register around 8 months after applying.
Objection system	Post-publication and pre-registration opposition system. Oppositions can be filed within 30 days from the publication of the application (extension possible). Registration refused due to opposition. If there are no objections, proceed to registration.	Post-registration objection system. Anyone can file an objection within two months after the publication of the registration gazette. Registration canceled due to opposition (similar to invalidation). If there is no objection, the rights are vested. (*Since 2015, Japan has abolished the pre-registration opposition system and replaced it with a post-registration opposition system)
Duration/Update	10 years from the date of registration. Renewals are accepted every 10 years, starting 6 months before expiry (with 6 months grace period). Renewal fee required.	Also 10 years from the registration date. Renewal is possible every 10 years, starting 6 months before expiry (6 months grace period). Renewal fee required (for each category).
Use obligation	Declaration of Use (DAU) must be submitted: Report of use history is required within 3 years after application, after 5 years of registration, after renewal, and after 5 years of renewal. Registration canceled due to non-submission.	No use declaration system: No need to use at the time of application/registration. Proof of use is not required for renewal.
Cancellation of non-use	Interested parties can request cancellation if it is not used for more than 3 years after registration. Registration will be canceled without a valid reason. Just cause provision.	After three years have passed since registration, any person can request a trial for cancellation of non-use (Article 50 of the Trademark Law). Cancellation without justifiable reason.
Scope of rights	Excludes use for the same or similar goods and services to the same or similar extent as the registered trademark. Famous trademarks have protection that extends to dissimilar products.	Excludes use for the same or similar goods and services to the same or similar extent as a registered trademark (Article 37 of the Trademark Law). Famous trademarks can be objected to and invalidated if they are diluted with other similar products.
Exercise of rights (civil)	It is possible to request an injunction and claim compensation for damages. There are provisions on how to calculate damages and punitive compensation (up to double). It is possible to request the destruction of infringing products.	It is possible to request an injunction and claim compensation for damages. The amount of damages is calculated from lost profits, infringer's profits, etc. (Civil Code + Patent Law Article 105-2 applied mutatis mutandis). There is no system for punitive damages (only compensation for actual damages). It is possible to order the destruction of counterfeit products.
Enforcement of rights (criminal)	Malicious infringements are subject to criminal penalties: 2 to 5 years in prison, fines of 50,000 to 200,000 pesos, etc. Unfair competition is also subject to criminal penalties.	Malicious infringement is punishable by imprisonment for up to 10 years and a fine of up to 10 million yen (Article 78 of the Trademark Law). Both countries have criminal crackdowns on counterfeit products.
Joining international treaties	Joined the Paris Convention and WTO/TRIPS. Joined the Madrid Protocol (since 2012). Nice classification is adopted (the Nice Agreement itself is not a member). Not a member of the Trademark Law Treaty (TLT).	Joined the Paris Convention and WTO/TRIPS. Joined the Madrid Protocol (from 2000). Joined the Nice Agreement. Joined the Trademark Law Treaty.
Madrid system compatible	Designation accepted for international applications (refusal notification period 18 months). DAU submission is also required for international registration. Direct IR is possible without a local agent, but an agent is required at the time of refusal response or DAU.	Designation accepted (rejection notification period 12 months). Japan can submit international applications as an office of origin. Even in IR designated countries, there is no obligation to use it, but non-use can be canceled. A domestic representative of the IR holder is required for refusal responses, etc.
Local agent	Foreign applicants need representation. Power of attorney required (signature only).	Foreigners need a Japanese patent attorney or other representative. A power of attorney is usually not required (only in special cases).

Note: The above is based on information as of 2025. The Philippine trademark system may be amended, so please obtain the latest information from official announcements from the Intellectual Property Office of the Philippines (IPOPHL) or your local agent.

Conclusion: Although the Philippine trademark system has many basic frameworks in common with Japan, there are also unique operations such as the "Declaration of Use" system. When Japanese companies acquire and maintain trademarks in the Philippines, it is important to fully understand these system points and to manage deadlines and respond to local practices. In particular, early use of a trademark and timely submission of a declaration of use are key to maintaining rights. Also, please refer to this report when considering legal measures in the unlikely event of infringement and the use of the international application system. Although the Philippine Intellectual Property Office does not have a Japanese-language counter, they do provide ample information in English, so make sure to work with your local agent to obtain the latest practical information. Above, I have explained the trademark system in the Philippines from a practical perspective. We hope that this will be of assistance to Japanese companies in their overseas intellectual property strategies.

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

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