An often overlooked aspect of starting a business is the protection of the company’s brand. A common misconception is that once a business name is registered with either the DTI or SEC, the name is automatically protected as a trademark. This is grossly wrong. While other businesses cannot use the name in their businesses, they can still use the name for their products and services. Another reason is that for a cash-strapped start-up, trademarks registration isn’t exactly a priority since registration requires payment of a sum of money and it’s not a compulsory requirement for the existence of a corporation.
In the long run, however, the brand and reputation a business builds over the years is as valuable, if not more valuable, than any other asset the company owns. The problem arises when some unscrupulous copycat decides to capitalize on the business’s brand and reputation. It would be unfortunate for a business owner, who put in blood, sweat, and tears in building public trust for his brand, to find that some unscrupulous person has registered that brand under his own name. The poor business owner would have a hard time defending himself against the copycat who can now legally use the trademark to fool the public into thinking that his products and services are the same as that of the business owner. Not only does this impact the profits of the company, it also tarnishes its reputation and image, particularly if the competitor’s products and services are of an inferior quality.
It is thus important for a business owner to understand that the protection of his business’s brand is an important step in setting up a business. Registration of a business’s trademark gives the company the exclusive right to prevent others from marketing similar or identical products under the same or a confusingly similar mark. We describe in simple terms the basic concepts of trademarks below.
What is a trademark?
The very first step in developing a brand is the registration of a trademark. In any well-managed business, you will gain goodwill over time, and that goodwill is stored in your trademark. Once you register your trademark, you can prevent others from using a similar mark, so that they cannot confuse consumers and profit from the goodwill that you have gained all those years. At some point, you can also sell your trademark or allow others to use it by way of franchising.
Why do you need to register a trademark?
A trademark is a distinctive sign that distinguishes a business’s goods or services from the goods and services of its competitors. It may consist of words, numbers, numerals, abbrevations, names. It can also be a picture, shape, or color, or a combination of any of the aforestated components.
Can you engage in business without registering your mark?
Yes, however, there is a danger in omitting this important step. If you do not register your trademark, someone just might register it, who in turn might prevent you from using the mark you have nurtured.
How do you begin registering your trademark?
First, let us figure out what business you are in and for which goods and services you will be using your trademark. This would help us figure out the classification of the goods and services that you will associate with your trademark. Second, it is helpful to know what kinds of marks are usually disallowed by the Intellectual Property Office:
Generic Terms - Terms that are generic and commonly used in relation to the goods or services cannot be registered. For example, you cannot register “Water” for a bottled water product or “Massage” for massage services.
Descriptive Terms - Terms that are commonly used to describe a certain good or service are disallowed. For example, an application to register “Fast” for a delivery service may be disallowed.
Deceptive Terms - Terms that may deceive the public as to the nature, quality, or geographical origin of the goods or services may be disallowed. For example, “Cowhide” for a line of vegan leather products would be disallowed.
Marks that are contrary to public order or morality
Marks that bear the flags, arms, official emblems of states and international organizations
Marks that are confusingly similar with other registered marks that are in the same class of goods and services.
How long is a mark protected?
A trademark can be protected in perpetuity if regularly monitored and properly maintained.
The period of protection is ten (10) years from the date of issuance and is renewable for a period of ten (10) years at a time.
Where do we file the application?
The application is filed with the Intellectual Property Office. It may be done manually or online.
How long does it take to get a trademark registered?
It takes 3-10 months depending on the results of the registrability report.
How much are the fees involved?
The fees vary depending on the number of classes to be registered in relation to the mark, whether you are making a claim for color, and whether you are making a priority claim in another country. For small entities whose assets are not worth more than Php 100 Million, the fees involved in registering a mark under one classification are as follows:
9. What are the next steps?
After the filing of the application, it will undergo the following steps:
Search - the application will undergo a search process in order to determine if there are identical or similar marks which are already registered.
Substantive Examination - an examiner will conduct an assessment of the mark in accordance with Philippine intellectual property laws and regulations. If the examiner has any findings, the examiner will issue a Registrability Report to which the applicant must reply. If there are no findings, the examiner will issue a Notice of Allowance.
Publication for Opposition - Should the mark be allowed by the examiner, the application is published in the IP Philippine Gazette to allow others who might be injured by the registration of the mark to oppose the registration.
Registration - Should no opposition be filed, a Certificate of Registration will be issued. Such Certificate shall be published in the IP Philippines Gazette and shall be entered in the records of the IPO.
Declaration of Actual Use (3rd Year) - within 3 years from filing of the application
Declaration of Actual Use (5th Year) - within 1 year from the 5th anniversary of the registration
Renewal - the registration of the mark may be renewed by the applicant after 10 years.
Should you have any questions on trademarks or if you wish to have us handle your trademark registration, kindly contact us here.