The Madrid System is a useful and cost-effective system for registering and managing trademarks worldwide.

An international application may be filed only by a natural person or a legal entity having an industrial or commercial establishment in, or being domiciled in, or a national of, the Philippines.

Yes. Under the Madrid Protocol, an international trademark application must be based on a mark that has been registered (“basic registration”) or has been applied for, but not yet registered (“basic application”).

The following are the minimum requirements that must be contained in the application form:

1. Name, address and contact details of the applicant or the address and contact details of the applicant’s representative, if any;
2. The Designated Contracting Parties;
3. Reproduction of the mark; and
4. Indication of the goods and services for which registration of the mark is sought.

An international application and any communication for transmittal to the International Bureau made through IPOPHL must be in English. All other documents submitted directly to IPOPHL by the applicant or holder shall also be in English.

The international application will be forwarded to the International Bureau when it complies with all the requirements together with an indication of the date on which the international application was received. The IPOPHL will forward the international application to the International Bureau as the office of origin.

If an international application has designated the Philippines, the application will undergo substantive examination in accordance with the Philippine Intellectual Property Code (IP Code) and the Trademark Rules and Regulations. Upon completion of the substantive examination and the international application is allowed, it will be published on the E-Gazette for opposition purposes.

If an opposition is filed by a third party, opposition proceedings will ensue. If there is no opposition, the IPOPHL will issue a Statement of Grant of Protection.

If the international registration covers a collective trademark, a copy of the agreement governing the use of the collective mark shall be submitted directly by the holder to the IPOPHL within two (2) months from the date of international registration with the International Bureau. The international registration will not be examined unless the agreement is received by the IPOPHL.

If the trademark examiner finds that the international application cannot be protected in the Philippines, the IPOPHL shall, before the expiry of the refusal period under Article 5(2)(b) of the Madrid Protocol, notify the International Bureau of a provisional refusal of protection following the requirements of the Madrid Protocol and the Common Regulations. The holder of the international registration shall enjoy the same remedies as if the mark had been filed directly with the IPOPHL.

No. Instead, the IPOPHL will send to the International Bureau a Statement of Grant of Protection in the Philippines before the eighteen (18)-month time limit.

Where the IPOPHL has notified to the International Bureau a provisional refusal of protection, with all the procedure before the IPOPHL having been completed and such provisional refusal has been either totally or partially withdrawn, the IPOPHL shall send to the either:

1. a statement to the effect that the provisional refusal is withdrawn, and that the protection of the mark is granted in the Philippines for all goods and services for which protection has been requested; or
2. a statement to the effect that the provisional refusal is withdrawn, and that protection of the mark is granted in the Philippines for some of the goods and services for which protection has been requested, and specifying therein goods and services for which protection is granted.

Where the IPOPHL has sent to the International Bureau a notification of provisional refusal, with all the procedures before the IPOPHL having been completed, and the IPOPHL has decided to confirm such refusal of protection of the mark in the Philippines for all goods and services for which protection has been requested or the opposition to the registration of the mark has been upheld by the Director of the Bureau of Legal Affairs of the IPOPHL or by the Director General of IPOPHL upon an appeal, but regardless of any appeal to the regular courts, the IPOPHL shall send to the International Bureau a statement to the effect that there is total refusal of protection of the mark.

The IPOPHL shall notify the International Bureau of any subsequent decision affecting the protection of the mark in the Philippines as soon as it receives such information from the applicant, the court, or any interested party. The notification shall contain a statement indicating the goods and services for which the mark is protected in the Philippines.

If the basic application or registration ceases to have effect, the IPOPHL, as the office of origin, shall inform the International Bureau and shall request the cancellation of the international registration in respect of the goods and services affected.

Yes, a Declaration of Actual Use or Declaration of Non-Use must be filed with the IPOPHL for international applications/registrations designating the Philippines.

A Declaration of Actual Use or Declaration of Non-Use must be filed within the following periods:

1. Within three (3) years from the date of the international registration or the date of the recordal of the subsequent designation of the Philippines;
2. Within one (1) year from the fifth (5th) anniversary of the date of the statement of grant of protection of the trademark;
3. Within one (1) year from the fifth (5th) anniversary of the date of each renewal of the registration of the trademark; and
4. Within one (1) year from the date of renewal of registration of the mark.

Failure to file the Declaration of Actual Use and Declaration of Non-Use will result in the removal of the trademark from the IPOPHL’s trademark register.

Except in cases where when use of a registered mark or mark subject of an active application has been interrupted or discontinued by a pending litigation, non-use of the mark shall not be allowed for a total of more than six (6) years from the date of grant of protection. For this purpose, actual use must commence and the DAU filed within one (1) years from the 5th anniversary of the statement of grant of protection, otherwise, the mark shall be removed from the register.

An international registration lasts for ten (10) years from the date of registration, and may be renewed for periods of ten (10) years at its expiration by paying a renewal fee to the International Bureau.

Yes. The holder of an international registration may request the IPOPHL to take note of that international registration in the register where:

1. A mark registered in the Philippines is also the subject of an international registration, and the protection resulting therefrom extends to the Philippines;
2. The same person is recorded as holder of the registration in the Philippines and of the international registration;
3. All the goods and services listed in the registration in the Philippines are also listed in the international registration of the mark in the Philippines; and
4. Extension of the international registration to the Philippines took effect after the date of registration of the mark in the Philippines.

Yes. Where an international registration designating the Philippines is cancelled at the request of the office of origin, because the basic mark ceases in effect, in respect of all or some of the goods and services listed in the international registration, an application may be made to the IPOPHL, within three (3) months from the date on which the international registration was cancelled, by the person who was the holder of the international registration at the date of its cancellation, for registration of the same mark (“an application resulting from transformation”), in respect of goods and services covered by the list of goods and services contained in the international registration.

Where an international mark has become protected in the Philippines on or before the date on which the international registration was cancelled and, provided that all the requirements relating to an application resulting from transformation have been met, that mark shall be registered by the IPOPHL without need to undergo another substantive examination. The date of registration shall be the date of the cancelled international registration, or the date of recording of the territorial extension to the Philippines made subsequently to the international registration, as appropriate, and that registration shall enjoy any priority enjoyed by the cancelled international registration.

Where an international mark has not yet become protected in the Philippines on or before the date on which the international registration was cancelled, any procedures or measures already undertaken on or before the date on which an application resulting from transformation is filed for the purpose of the international registration shall be considered as having been undertaken for the purposes of the application resulting from transformation. The filing date of the application resulting from transformation shall be the date of the international registration of the date of recording of the territorial extension to the Philippines made subsequently to the international registration, as appropriate.

An application resulting from transformation shall be made in the prescribed form and shall, in addition, include the following:

1. A statement that the application is made by way of transformation;
2. The international registration number of the international registration which has been cancelled;
3. The date of the said international registration, or the date of recording of the territorial extension made subsequently to the international registration, as appropriate;
4. The date on which the cancellation of the international registration was recorded; and
5. Where applicable, the date of any priority claimed in the international application and recorded in the International Register.