The Intellectual Property Office of the Philippines (IPOPHL) issued the Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks (Memorandum Circular No. 2025-009) which took effect on 28 April 2025.

The Regulations provides official recognition to well-known marks even if they are not registered in the Philippines, through an administrative ex-parte procedure, rather than an adversarial inter-partes opposition or cancellation action or court litigation.

BENEFITS OF A DECLARATION OF WELL-KNOWNNESS

A mark that is declared to be well-known enjoys a prima facie evidence of its well-known status, in accordance with Section 123 (e) and (f) of the Intellectual Property Code. An unregistered mark declared to be well-known is protected against identical or confusingly similar marks covering identical goods or services as those of the unregistered mark.  The protection accorded to registered marks declared to be well-known covers dissimilar goods and services, when its use would indicate a connection between those goods or services, and the owner of the registered mark, and the interests of the registered owner are likely to be damaged by such use.

It also strengthens the owner’s position in opposition, cancellation, and infringement cases, and ensures recognition during the examination of future trademark applications. Filing for well-known status is a strategic move to safeguard valuable brand equity and assert stronger rights in the Philippine market.

The Application

Aside from the notarized application, the applicant will need to submit evidence demonstrating the mark’s well-known status and an affidavit disclosing  involvement in any pending case before a government agency, tribunal, or court where the issue of well-known status is being raised.

Mandatory Criteria for Determining Whether a Mark is Well-Known

The Regulations requires the submission of proof evidencing the following:

(a) Duration, Extent and Geographical Area of the Use of the Mark which includes the duration, scope, and geographical areas where any promotion, advertisement, or publicity of the mark was conducted, such as at fairs or exhibitions of the goods and/or services to which the mark applies;
(b) Market share in the Philippines and in other countries of the goods and/or services to which the mark applies;
(c) The Mark’s Distinctiveness, inherent or acquired; and
(d) The quality, image, or reputation acquired by the mark

Procedure

The Examiner will assess the application and may issue an Office Action or a recommendation to the Director of the Bureau of Trademarks that the mark be declared as well-known, or refusal if it does not comply with the criteria. The Director will review the Examiner’s recommendation and will issue a decision on the declaration of the mark as well-known or refuse the application. If granted, the declaration will be published for one month  in the E-Gazette.

Third-Party Observation

Within one-month from publication and upon payment of the fee, any party who may be adversely affected by the declaration may file a Notice of Third-Party Observation. A verified written observation, with supporting documents, must be filed within one month from receipt by the Director of the Bureau of Trademarks, without need of notification. The applicant is given one month to comment from receipt of the Director’s Order.  The Director will render a decision after receipt of the consultative committee’s recommendation.

If no Third-Party Observation is filed, the declaration becomes effective on the 31st day following publication.

Validity and Renewal with Proof of Continuous Use

The declaration is valid for ten (10) years and may be renewed for successive ten-year periods.

To maintain the declaration, Rule 15 requires the submission within one year from the fifth anniversary of the declaration  and upon each renewal, the following:

• Evidence of continuous use in commerce such as receipts, actual labels, signages, bills of lading, or photos of the product bearing the mark; and
• Evidence of well-known status by submitting advertisements, certificates of registrations, financial statements, among others.

If the mark declared as well-known is already registered in the Philippines, the registrant will need to submit only the (ii) evidence of well-known status, without prejudice to compliance with the Declaration of Use requirements under the Trademark Regulations.

Previously Declared Well-Known Marks not included in the Register

For marks previously declared as well-known as a result of an inter partes opposition or cancellation action or court litigation, the trademark owner will need only to file a  Manifestation together with the  evidence of the declaration, including certified copies of the Entry of Judgment and the Decision declaring the mark as well-known.

To maintain the Declaration, it is likewise necessary to submit the evidence of continuous commercial use within five years from the date of the effectivity of the Regulations. Thereafter, the required proof of use must be submitted, as required under Rule 15.