Are you a foreign company seeking to expand your business in the Philippines? Trademarking a foreign business in the Philippines presents opportunities, but it carries challenges, too.
This article answers 3 important trademark questions that foreign companies should consider when expanding into the Philippines, helping them navigate a smooth and legally compliant entry into the Philippine market.
An Overview of Trademarking a Foreign Business in the Philippines
Section 2 of the Intellectual Property Code (IP Code)1 states that the State recognizes an effective intellectual and industrial property system that is vital to the development of domestic activity and attracts foreign investments, among others.
Accordingly, Section 3 of the IP Code provides the reciprocity principle, which means that Any individual who is a national of, domiciled in, or has an active industrial establishment in a country that has an intellectual property agreement with the Philippines, or grants reciprocal rights to Philippine nationals, is entitled to the benefits of such agreements, alongside the rights granted under this Act.2
Read further to know the answers to the key questions on trademarking a foreign business.
3 Questions and Answers About Trademarking a Foreign Business
Before one can enforce trademark rights, the owner must first comply with the legal requirements to acquire a trademark:
1. Can I trademark my foreign business in the Philippines?
Yes, but subject to qualifications. Foreign businesses can apply for trademarks in the Philippines provided that the application is accompanied by a trademark registration request signed by the applicant or its local agent.
2. What are the requirements for foreign applicants?
Just like any other local business trademarking their brand, foreign businesses should comply with the legal requirements provided under the IP Code. Non-residents and foreigners can apply, but they must be represented by a legally authorized local agent who can receive notices related to court or administrative proceedings concerning the trademark application or registration.
To know more about foreign businesses in the Philippines, check out the provisions on foreign corporations under the Revised Corporation Code of the Philippines.
3. What enforcement mechanisms are available to foreign corporations?
The IP Code also reserves to any foreign corporation the right to sue in trademark or service mark infringement. The foreign corporation must meet the requirements under Section 3 of the same Code and must not engage in business in the Philippines. Such foreign corporation may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines under existing laws.3 For example, the suing party in the case of Victorio P. Diaz v. People of the Philippines is Levi Strauss and Company (Levi’s), a foreign corporation based in the State of Delaware, United States of America, that had been engaged in the apparel business and is the owner of trademarks and designs of Levi’s jeans.4
Conclusion
Thinking of trademarking your business? Be fully equipped with the right information first before you tread on the next big step. Remember that knowing your rights as a foreign registrant and complying with the requirements under the law will protect your brand in the Philippine market.
To know more about trademarking a foreign business, book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for other Purposes, Republic Act No. 8293, §2 (January 1, 1998) [hereinafter Intellectual Property Code of the Philippines]
2 Intellectual Property Code of the Philippines, §3
3 Intellectual Property Code of the Philippines, §160
4 Victorio P. Diaz v. People of the Philippines and Levi Strauss, Inc. G.R. No. 180677, February 18, 2023
