Well-Known Marks EXAMINATION GUIDELINES

 

Examination Process

The examination process for declaring a mark well-known internationally and in the Philippines, based on the Rules, involves several key steps:

  1. Ex-Parte Process: The application for the declaration of a well-known mark is processed ex parte, meaning it is handled without the involvement of an opposing party. The examiner evaluates the evidence submitted by the applicant.
  2. Evaluation of Evidence: The examiner reviews the  evidence submitted to determine whether the mark meets the criteria for being well-known. The applicant must submit sufficient documentation, including proof of the mark’s use, reputation, market share, distinctiveness, and registration status, both domestically and internationally, to support its claim of well-known status.
  3. Office Actions: If the evidence provided by the applicant is deemed insufficient or requires clarification, the examiner may issue an office action. The applicant has two months from the mailing date of the office action to respond. If additional time is needed, an extension of up to two months may be requested with a fee.
  4. Third-Party Observation: After the application is published, any interested person may file a third party observation that challenges the well-known status of the mark. The applicant is given the opportunity to respond to these observations. The Bureau of Trademarks reviews the observation and the Comment of the applicant, including evidence attached thereto,, and a consultative committee is formed to assess the merits of the case.
  5. Recommendation: After reviewing the evidence and any third-party observation, the examiner makes a recommendation to the Director of Trademarks. This recommendation may either support the declaration of the mark as well-known or propose its refusal, with clear justifications provided.
  6. Final Decision: The Director of Trademarks makes the final decision based on the examiner’s recommendation and any third-party input. If the mark is declared well-known, the declaration is published in the E-Gazette, and the mark is recorded in the Register of Well-Known Marks.

Grounds for Refusal

An application for the declaration of a well-known mark in the Philippines may be refused on several grounds, including insufficient evidence to demonstrate the mark’s well-known status, failure to meet the established criteria (such as market share, distinctiveness, and reputation), or the existence of conflicting marks that may cause confusion or dilution.

Other reasons for refusal include the lack of exclusive use, ongoing litigation involving the mark’s well-known status, failure to address the third-party observation, and non-compliance with formal requirements such as submitting necessary documents or paying the required fees.

These grounds ensure that only marks with clear and substantial evidence of recognition and exclusivity are granted well-known status.

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Grounds for Revocation

A declared well-known mark may be revoked based on the following grounds:

  1. Failure to renew the declaration of a mark as well-known within six (6) months prior to its expiration, or within six (6) months after its expiration upon payment of surcharge, shall cause the revocation of such declaration motu proprio. 
  2. Failure to submit the required evidence of continuous use in commerce as prescribed in Rule 15 shall cause the revocation of the declaration of well-known status motu proprio. 
  3. A declaration made by the Director of Trademarks may likewise be revoked by filing a Petition to the latter with payment of the applicable fees, on the ground that the well-known status of the mark no longer exists as may be proven by substantial evidence.