You Might as Well-Known: Highlights of IPOPHL’s Rules on the Register of Well-Known Marks
By: Atty. Luis Teodoro B. Pascua
Well-known Marks are a subset of trademarks that possess a high degree of reputation, recognition, and consequently, protection. In the Philippines, well-known marks, “whether registered or unregistered, is afforded substantial legal protection by granting the exclusive right to prevent others from using identical or confusingly similar marks on related goods or services, thereby minimizing the risk of infringement and brand dilution.”[1]
While the Intellectual Property Code of the Philippines (“IP Code”) offers some added level of protection to well-known marks, operationalizing this can be a lengthy, tedious, and costly process. The IP Code provides that a mark cannot be registered if it is identical with or confusingly similar to a mark which is considered by the competent authority of the Philippines to be well-known internationally, whether or not the mark is registered here, when used for identical or similar goods or services.[2] However, for a mark to be “considered by the competent authority of the Philippines to be well-known internationally”, the only options available to trademark owners are the various adversarial litigation processes (e.g., IP Code violation, trademark opposition, and infringement cases).
On 08 April 2025, 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 (“Regulations”), paving the way for a more streamlined, cost- and time-efficient option for trademark owners. The Regulations, which took effect on 28 April 2028, offer a non-adversarial and purely administrative alternative by, among others, establishing an ex parte system for declaring well-known marks which can then be registered in the IPOPHL’s Register of Well-Known Marks (“Register”).
Through the Regulations, the Philippines joins a host of countries such as Japan, Brazil, Mexico, Belarus, Russia, China, among others, as one of the few jurisdictions that maintain a register for well-known marks.
Salient provisions of the Regulations include:
Criteria for Determining Well-Known Status
Rule 5 of the Regulations provides that in determining whether a mark can be declared as “Well-Known”, the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark, must be considered. Further, the Regulations state that a mark must satisfy the following mandatory criteria to be declared as Well-Known:
- duration, extent and geographical area of any use of the mark of the goods and/or services to which the mark applies;
- market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
- degree of the inherent or acquired distinction of the mark; and
- quality, image, or reputation acquired by the mark.
In addition to the above, other factors may be considered, such as the extent to which the mark has been registered or used in the world, and the record of successful protection of the rights over the mark.
Effect of Declaration
A Declaration of Well-Known Status (“Declaration”) serves as prima facie evidence of the “well-known status of the mark with respect to goods and services stated in the application”. Among its practical effects are:
- The Declaration would dispense with the need to produce voluminous records in litigation to prove the mark’s well-known status;
- Owners of Well-Known marks can proactively protect their marks across related and unrelated industries;
- The well-known mark status of the mark will be strengthened globally; and
- Trademark protection would be administratively easier, as examiners will now consider the Register in reviewing trademark applications.
Duration, Renewal, and Revocation
Pursuant to Rule 15 of the Regulations, the Declaration is valid for ten (10) years, renewable for a period of ten (10) years at a time, provided that the registrant proves continuous use and well-known status within one (1) year from the fifth anniversary of the declaration and upon each renewal.
A Registrant’s failure to comply with the above requirement or to renew the Declaration within six (6) months from its expiration, or a successful Petition to revoke the Declaration may lead to the revocation of the Declaration.
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The Regulations significantly strengthens the protection of well-known marks in the Philippines, solidifying the country’s position as a leader in trademark protection within Asia. With regular monitoring, proper reporting and compliance, the Regulations effectively allow declared well-known marks to be protected in perpetuity. By offering a streamlined and non-litigious process, trademark owners are expected to proactively seek recognition and protection of their well-known marks, thus fostering, among others, a more conducive environment for investment and trade in the Philippines.
Click here to search for marks declared by the IPOPHL as “Well-Known”. You may also view the streamlined procedure here.
[1] https://www.ipophil.gov.ph/well-known-marks/
[2] Sections 123.1 (e) and (f) of the IP Code.
Luis Teodoro B. Pascua is a Junior Associate and a member of the Firm’s Litigation, Corporate Services, Data Privacy, Anti-money Laundering/Counter-Terrorist Financing (AML/CTF), and Intellectual Property Departments. Luis’ handles dispute resolution matters in a wide range of industries, such as importation, public transportation, real estate, and media. Luis also has experience in IP licensing and protection, and the safeguarding of publicity rights against unauthorized use in Artificial Intelligence applications.
