May 7, 2012
Philippine trademark holders and applicants can now file more easily
trademark applications in more than 80 countries after President Benigno
Aquino III signed the Instrument of Accession of the Philippines to the
Madrid Protocol on 25 April 2012. Madrid Protocol operations in IPOPHL
will commence on 25 July 2012.
Currently, a Philippine trademark holder seeking protection abroad has to apply separately in every country of interest. This involves different application forms, languages and payments in different currencies.
The Madrid Protocol will provide a cost-effect, centralized procedure that will allow a trademark owner to obtain protection for its mark in different countries by filing one international application in the Intellectual Property Office of the Philippines (“IPOPHL”). The IPOPHL then forwards the application to the International Bureau of the World Intellectual Property Office (“WIPO”), which then registers the mark after checking fees and formalities, and notifies the IP offices of the countries designated in the international application. The system effectively simplifies the filing, maintenance and renewal procedure and reduces costs of the filing of trademark applications and renewals in multiple jurisdictions.
The Madrid Protocol, however, does not grant an “internationally effective” trademark. Through its IP Office, a country designated in the international application has the prerogative to grant or refuse protection based on its own trademark law. The Madrid Protocol does not supplant the governing IP statute of a country that determines whether a mark may be granted protection in that country. This means that an international application must still comply with the trademark laws and practices of the designated countries.
Through its IP office, every designated country will examine the international registration based on its own laws. Any objections during examination or resulting from opposition will be forwarded to the International Bureau who in turn will advise trademark holder. A designated country may require a local representative or address for service of office actions and notices. A refusal in one designated country does not necessarily mean that the international registration will be refused in all other designated countries. If the IP office of the designated country grants protection, the trademark will have the same protection like any other trademark registration in that country.