The Intellectual Property Office of the Philippines (IPOPHL) will begin accepting applications for international registration and designation of the Philippines using the Madrid Protocol beginning 25 July 2012. Trademark owners should expect the following changes after IPOPHL issued its own regulations covering Madrid:
1. Philippine trademark owners can secure an international registration using one application.
Using a pending local application or an IPOPHL-registered mark, Filipinos can now file a single international application with the International Bureau (IB) of the World Intellectual Property Organization (WIPO) also through the IPOPHL and designate over 80 jurisdictions, including the European Union, United States of America, Japan, China and Singapore, where they can get protection for their trademarks. The designated jurisdictions have at most 18 months to refuse the application in accordance with their respective trademark laws. The national protection in each of the designated jurisdictions will be granted in favor of the applicant where there is no refusal issued within the given period or where the refusal, if made, had been withdrawn.
IPOPHL will be charging a handling fee of Php2,181.00 (about US$52.00) for every international application it receives as an office of origin. Payment for the international application itself will have to be made to WIPO’s IB directly based on each jurisdiction’s fees…in Swiss francs.
2. Philippines now a Designated Contracting Party.
Prior to the accession of the Philippines to the Madrid Protocol, foreign trademark owners need to secure the services of local trademark agents in order to prosecute the registration of their marks in Madrid-member countries. Starting 25 July, foreign trademark owners can check off the Philippines in the list of jurisdictions where their international application will be prosecuted. If they already have an internationally registered mark, the owners can subsequently designate the Philippines to secure protection in this jurisdiction. However, if the IPOPHL issues a refusal within the 18 months from filing or designation, the foreign trademark owners need to secure the services of local counsel in order to overcome the refusal.
3. Philippine trademark owners can update the status of their Madrid-registered marks through one agency.
Any recordal of an assignment or licensing of a trademark covered by an international registration can be done with the IB and such transaction will have the same effect in the Philippines. For license agreements, copies thereof must be submitted with the IPOPHL within two months from recording with the IB in order to prove compliance with the prohibited and mandatory clauses provisions of the IP Code, otherwise these agreements will not be enforceable in the Philippines.
4. Owners of Madrid-registered marks can ask the replacement for their Philippine marks.
Holders of Philippine-registered trademarks can ask for the replacement of said marks with their trademarks previously registered through the Madrid Protocol. Any protection that the trademark owners have acquired through local registration will be tacked on to their international registration. By replacing the local trademarks with Madrid marks, they can now easily manage their marks through the WIPO’s IB website.
5. Cancellation of Madrid marks through central attack now applicable to Philippines.
Foreign trademark owners with marks registered using the Madrid system who designated the Philippines need to ensure that the basic marks which they filed in their office of origin survive the 5-year dependency period. If their basic marks are canceled within the dependency period, their Philippine-designated marks will also suffer the same fate. If this happens, they can always transform their canceled Madrid-registration into individual national applications. Interests of trademark owners Filipinos and foreigners alike) are best served if they wait for the completion of the registration of their basic marks in their office of origin before embarking on Madrid.
(19 June 2012)