Memorandum Circular No 2025-009 sets forth the Rules and Regulations for the Declaration and Creation of the Register of Well-Known Marks in the Philippines.

It takes effect on 28 April 2025, and institutionalizes an administrative procedure of having a mark declared as well known.

Prior to the circular, the only way to have a mark declared as well-known was when a competent authority, such as the Bureau of Trade Marks or a court, declared it as such in the course of opposition or litigation.

Well-known criteria

In determining whether a mark is well known, the following criteria or any combination of them may be taken into account. However, (1), (2), (3) and (4) must be included:

1. the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
2. the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
3. the degree of the inherent or acquired distinctiveness of the mark;
4. the quality, image or reputation acquired by the mark;
5. the extent to which the mark has been registered in the world;
6. the exclusivity of registration attained by the mark in the world;
7. the extent to which the mark has been used in the world;
8. the exclusivity of use attained by the mark in the world;
9. the commercial value attributed to the mark in the world;
10. the record of successful protection of the rights over the mark;
11. the outcome of litigations dealing with the issue of whether the mark is a well-known mark, if any; and
12. the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the party claiming that their mark is a well-known mark.

Procedure

Applications are prosecuted ex-parte. However, any interested party may file a written observation once the application is published.

If no third-party observation is filed, or upon finality of a decision resolving a third-party observation, the Intellectual Property Office of the Philippines (IPOPHL) shall issue a certificate of well-known mark declaration and shall cause the said declaration to be entered in the Register of Well-Known Marks.

The IPOPHL shall also publish the contents of the Register.

If a trade mark previously declared as well-known by a competent authority in the course of litigation is not included in the Register, the trade mark owner or their authorised representative may file a manifestation to such effect with the Bureau of Trade Marks, attaching evidence of the declaration by the competent authority.

The mark previously declared as well-known may then be included in the Register upon the payment of the prescribed fees.

For marks previously declared by a competent authority as well-known, proof of continuous commercial use must be submitted within five years from the date of effectivity of the circular. Thereafter, the required proof of use must be submitted as provided further below.

Failure to submit the requisite manifestation and the proof of continuous use shall result in non-recordation of the previously declared well-known mark in the Register of Well-Known Marks, or the removal thereof, as the case may be.

Duration and renewal

The declaration of well-known mark shall be for a period of 10 years renewable for periods of 10 years.

The registrant is required to prove continuous use in commerce by submitting pieces of evidence such as receipts, actual labels, signages, bills of lading and photos of the product bearing the mark and well-known status by submitting proof such as advertisements, certificates of registrations and financial statements within one year from the fifth anniversary of the declaration and upon each renewal.

If the mark declared as well known is already registered with the IPOPHL, only the evidence of well-known status shall be required within one year from the fifth anniversary of the declaration and upon each renewal, without prejudice to the submission of the Declaration of Actual Use requirements under the Trade Mark Regulations.

Blog post written by Joseph Lyle K Sarmiento, Partner, BCCSLAW in Manila and a member of the MARQUES International Trade Mark Law and Practice Team

The Czech Arbitration Court recently ruled in favour of the EUIPO in a UDRP proceeding concerning the domain name euipp.com.

In the typosquatting case, the Panel found it was the respondent's intention to deceive and divert consumers, as evidenced by their dissemination of scam emails.

The respondent, Mark Traded, sought to take advantage of the EUIPO's goodwill and credibility, luring internet users into using services that may appear to be affiliated with the Office.

The panel acknowledged EUIPO’s reputation and the widespread recognition of the EUIPO mark, which is itself registered as an EU trade mark and as an international mark.

The respondent did not file an effective response to the complaint.

The panel concluded that: the disputed domain name was confusingly similar to EUIPO’s trade mark; the respondent had no right or legitimate interests in the disputed domain name; and it had registered and was using the disputed domain name in bad faith.

In a post on its website, EUIPO stated: “This is the first time the Office has successfully relied on its registered EUTM in a domain name dispute resolution process. The ruling demonstrates how IP rights provide tangible enforcement benefits in holding scammers accountable for misleading consumers.”

As part of its Strategic Plan 2030, the EUIPO has intensified efforts to tackle fraudulent activities.

EUIPO has also secured criminal court rulings in Sweden and Germany in cases involving scams.

For more information on misleading payment requests, view the dedicated webpage on EUIPO’s website or speak to a member of the MARQUES Anti-Fraud task Force.

In 2021 the UK IPO launched its five-year 'Transformation Programme' to modernise and aggregate its services for different categories of intellectual property.

The findings of the 2^nd Consultation regarding the Programme were published last Thursday (10 April 2025); the responses relate to proposed changes in the following areas:

• online public document inspection service for trade marks and designs;
• rules governing public inspection of trade mark and design documents and requests for confidentiality;
• series trade mark service;
• length of supplementary protection certificate (SPC) fee payment periods;
• collection and publication of addresses for patent inventors; and
• ways to encourage more mediation during IPO tribunal proceedings.

Online trade mark and design documents

The Programme aims to create an online service where trade mark and design documents will be published and available for inspection online, much like the UK IPO's existing service for inspecting patents.

This is a significant update from the current system where trade mark and design documents have to be requested directly from the IPO.

The response from the consultation was favourable, though the IPO notes the concerns regarding confidentiality and potential data scraping by third parties.

Series mark service discontinued

The series mark service (in place currently) allows for a single trade mark application to contain up to six variations of a mark.

In order to qualify, the marks in question must resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trade mark.

However, about 40% of series mark applications do not meet these requirements. The IPO intends to discontinue the system for series marks, and requested responses on its user experience.

The majority of the responses favoured the system. Respondents found the service practically very useful, given its low cost and administrative benefits, but some were confused about whether a series mark provides any actual or perceived additional protection compared to a standalone trade mark. Many respondents said that six is a good maximum number for a series.

There was general opposition to the removal of the series service altogether, because applying for standalone marks would come at an increased cost (both in terms of application fees and enforcement costs), and might create difficulties for existing, valid series marks.

Despite this feedback, the UK IPO intends to remove the series mark service: it estimates that a small proportion of applicants would need to make additional applications, and most customers would benefit from the simplification.

It would also put an end to the high volume of invalid series applications. The IPO says the costs of applying are “already low”, in response to criticism of its fees.

Mediation

The IPO believes that there is an imbalance between the high number of IPO Tribunal proceedings and the relatively low number of parties using its commercial mediation service.

It seeks to encourage mediation by introducing Mediation Information and Assessment Meetings (MIAMs) into the IPO Tribunal process, in which parties would be briefed on the benefits of ADR and can see if their case is suitable to be mediated.

The IPO says it will introduce a Pilot MIAMs scheme for proceedings where there are private individuals on both sides.

Responses were broadly in favour of MIAMs taking place during proceedings, particularly for unrepresented parties, but warned that they would not like being “forced” to mediate.

What's next for the programme?

The IPO intends to launch its updated digital patent service later in 2025, followed by its online trade mark and design service in 2026.

Report by Gavin Stenton, Chair of the MARQUES International Trade Mark Law and Practice Team. The Team will continue to monitor this topic and report on any further developments.

The 2025 Kay Uwe Jonas Memorial Lecture was delivered by Lydia Gobena, of Fross Zelnick Lehrman & Zissu, PC, during the MARQUES Team Meetings in Barcelona in March.

The topic of Lydia’s lecture was “The Case for Creativity”. In the talk, she described “how participating in creative endeavours outside of your practice can benefit you professionally and personally”.

Lydia (a member of the MARQUES Famous and Well-Known Marks Team) drew on her own experience of jewellery making, from her first weekend class at a prestigious fashion school in 2001 and making jewellery for friends and family to launching a small business and exhibiting in galleries and exhibitions.

She also illustrated her talk by wearing items of jewellery she had made, including rings and a necklace.

“It has been more than two decades since I first stepped in to the jewellery marking studio and it has been one of the most educational and satisfying adventures I have undertaken. As I explored my creativity, I learned several valuable lessons,” she said.

These lessons include: a greater appreciation for clients’ needs, the need for flexibility and taking a business perspective; developing foresight, problem-solving and imagination; managing anxiety; coping with disappointment; finding a safe space to make mistakes; being authentic and being comfortable with who you are; and seizing the moment.

“Some of the most interesting and beautiful things that you can create will be a product of your mistakes,” said Lydia. “Sometimes, I may even rejoice in those mistakes when they turn out differently than what I had imagined. Thus, instead of dwelling on them or amplifying them, I try to figure out how to avoid them next time - or, better yet, glean something positive from an otherwise negative situation.”

Lydia dedicated the speech to the memory of Kay Uwe Jonas, Cory Joshua Germaine Alleyne and her mother Abebetch Gobena. She concluded: “Live your life fully, imaginatively and without regret and, in the process, you might learn some things and end up finding joy.”

The full text of Lydia’s speech is available to read on the MARQUES website here.

WIPO is hosting a conference to mark the 25^th anniversary of the Uniform Domain Name Dispute Resolution Policy (UDRP).It will take place in Geneva, Switzerland on 23 April this year with online attendance also possible.

According to WIPO: “The conference will include a retrospective on the UDRP, taking stock of jurisprudential trends and looking ahead to the planned review of the UDRP by ICANN. Sessions will also look at ADR systems for blockchain domains, the upcoming introduction of new gTLDs, and DNS industry and enforcement forecasts including the potential impacts of AI.”

The conference will include opening remarks by WIPO Director General Daren Tang and Assistant Director General, IP and Innovation Ecosystems Sector, Marco Alemán followed by sessions on: the UDRP in numbers; UDRP retrospective (a global blueprint); WIPO’s ccTLD program; UDRP review expert group report; WIPO Overview 3.1; WIPO’s e-filing system and case platform; ICANN’s new gTLD program; applying the UDRP model to Web3/Blockchain domains/Alt Roots; and the future of DNS enforcement: AI tools/state of play.

There will also be time set aside for open discussion.

The conference is open to the public including brand owners, trade mark practitioners, counsel, registrars, ccTLD administrators, academics and other domain name and Internet stakeholders. 

It is being held in a hybrid format. On-site attendance includes lunch and a cocktail reception.

For more information on the program and speakers, visit WIPO’s website here.

To register to attend online, click here.

To join the waiting list for on-site attendance, email arbiter.meetings@wipo.int.

EUIPO has published details of its approach to artificial intelligence, including information on its current use of AI tools.

The information is available on the EUIPO website here. There is also a video by EUIPO available on YouTube.

The information on the website sets out EUIPO's responsible approach to AI, which is bult on five pillars: AI as a strategic enabler; adopting AI in a structured way; applying AI in a practical way; cooperating and sharing knowledge on AI; and introducing AI with a human-centric approach.

EUIPO says it uses AI "to empower staff, helping them achieve greater productivity, accuracy, and efficiency" and builds AI systems that are "transparent, unbiased, and secure, with strong safeguards to protect privacy and data".

It adds: "Our commitment to AI governance focuses on ensuring that all AI solutions are developed with ethics, user trust, and positive impact at their core. By harnessing AI's potential, we aim to drive meaningful change across the EU, enhancing both our services and the experiences of those we serve."

AI tools are currently used at various stages of the trade mark lifecycle (see chart below), including in tools such as TMview, DesignView, eSearch plus and eTranslation for eSearch Case Law.

Illustration from EUIPO website used with permission

A section on Brazil has been added to the chart on self-regulatory organisations (SROs) for advertising and unfair competition matters.

The chart is compiled by the MARQUES Unfair Competition Team and can be downloaded on the Team’s page on the MARQUES website (MARQUES log-in required).

Team Co-Vice-Chair Felipe Dannemann Lundgren of Dannemann Siemsen in Rio de Janeiro has completed the questionnaire for Brazil. The project is led by Philippe Probst of Fuhrer Marbach & Partners in Switzerland.

The chart now covers Brazil, Finland, France, Germany, Italy, Portugal, Sweden, Switzerland, Turkey and the USA.

The purpose of the questionnaire is to provide corporate lawyers, attorneys and others with a practical and user-friendly overview of SROs for advertising and unfair competition matters operating in various jurisdictions with general powers over the full spectrum (or a broad range) of industries.

Some jurisdictions may have separate SROs and/or separate rules and procedures with respect to different types of matters.

The questionnaire is intended to cover advertising and unfair competition matters, not consumer protection matters (redress for defective products and services, price regulations, consumer credit law, etc).

Industry-specific SROs are also not covered by the questionnaire (e.g. tobacco, alcohol, medical and health, or food industry SROs) except to the extent that these are of significant importance and handle advertising and/or unfair competition matters.

The five questions for each jurisdiction encompass: existence and identity of self-regulatory organisations; matters handled; rules, eligible parties and fees; procedure; and penalties and enforceability.

Further jurisdictions will be added soon. If you have any questions, please contact a member of the Unfair Competition Team.