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.