Effective April 28, 2025, marks may now be registered as well-known marks in the Philippines’ inaugural Well-Known Marks Register, established by the Intellectual Property Office of the Philippines (IPOPHL) under Memorandum Circular No. 2025-009. The Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks, introduces a formal mechanism for the recognition and recording of well-known marks in the country. This regulatory development marks a significant milestone in the protection of intellectual property rights in the Philippines, providing brand owners with enhanced recognition and legal safeguards against infringement. The new regulations introduce an ex parte system for the declaration of well-known marks.
The Register enables the administrative recognition of well-known marks by the Director of Trademarks through a non-adversarial process, dispensing with the need for litigation. Prior to the new Regulations, a mark may only be declared as a well-known mark through an adversarial procedure, through an opposition, cancellation IPV cases, infringement cases, or unfair competition cases. Now, trademark owners may take advantage of the simplified system to obtain a declaration that its marks are well-known.
Well-Known Marks
Under the Intellectual Property Code of the Philippines (IP Code), a “Well-Known Mark” is a mark declared by the competent authority to be well-known based on the criteria laid down in the IP Code, Supreme Court issuances, and these Regulations, whether or not the mark is registered in the Philippines.
Registration
To register, an ex-parte notarized application is required, identifying the mark as “well-known.” The application must be submitted along with the other requirements provided in the Regulations and the payment of filing fees. Once all the documentary requirements are complied with and duly submitted, the Examiner recommends to the Director of Trademarks whether to declare the mark as well-known. This Recommendation is based on compliance with the well-known mark criteria. The Director of Trademarks then reviews the recommendation and makes the final decision.
Criteria for Determination of Well-Knownness
A mark may be qualified as well-known provided that the following minimum criteria are met:
- the duration, extent and geographical area of any use of the mark;
- the market share in the Philippines and in other countries
- the degree of the inherent or acquired distinction of the mark;
- the quality, image, or reputation acquired by the mark;
Third-Party Observation
If the mark is declared well-known, it will be published in the E-Gazette. Within 1 month of publication, any damaged party can file a Notice of Third-Party Observation (with a fee). A verified written observation with supporting documents must be submitted within 1 month of the notice. Failure to comply leads to dismissal.The Office provides a copy to the applicant, who can comment within 1 month. The period to file the verified written observation or comment, may be extended for another one (1) month upon written request. Observations, comments, and a committee recommendation are considered in the decision. A consultative committee reviews Third-Party Observations which membership is comprised of personnel from the Bureau of Trademarks and the Bureau of Legal Affairs.The Director of Trademarks makes the final decision after receiving the committee’s recommendation.
Validity, Effect and Duration
The declaration is prima facie evidence of the mark’s well-known status for the specified goods/services. Inclusion in the Register means examiners will consider it during ex parte examination of trademark application. The declaration lasts for 10 years and is renewable for 10-year periods. Renewal requires proof of continuous use and well-known status. If the mark declared well known is already registered, only evidence of well-known status is needed within (1) one year from the fifth anniversary of the declaration.
Registration of Previously Declared Well-Knownness
If a trademark has already been declared well-known by a competent authority through a final decision issued in an opposition or cancellation proceeding, a new application under the Regulations is not necessary. In such cases, the trademark owner or their authorized representative may instead submit a Manifestation to the Bureau of Trademarks, accompanied by evidence of the prior declaration, including certified true copies of the decision and the corresponding entry of judgment. The trademark owner must also provide proof of continuous commercial use of the mark within five (5) years from the effectivity of the Regulations. The mark shall be included in the Register of Well-Known Trademarks and published in the E-Gazette after the payment of the applicable fees.
Well-known marks, due to their established reputation, naturally command consumer trust. Being officially recognized in such a registry further solidifies the mark’s market position. Thus, this recognition allows for additional opportunities, including licensing, franchising, and strategic partnerships. The registry plays a crucial role in safeguarding the brand owner’s commercial interests.
The establishment of the Register is also aligned with the broader policy objectives of streamlining trademark registration processes and bolstering the enforcement of intellectual property rights within the country.
