Fast-Tracking the Protection of Well-Known Marks

Introduction

The Intellectual Property Office (IPOPHL) and the courts are the competent authorities that can determine whether a mark is well known in the Philippines.[1] However, a well-known mark declaration is merely incidental to the resolution of an enforcement action (e.g., opposition, cancellation, or infringement proceeding). Moreover, the legal processes involved in obtaining such a declaration are often protracted, spanning years or even decades. Notably, HARVARD took six years of litigation before recognition[2]; PHILIPS endured eight years of proceedings[3] and an additional eleven years in a separate case[4]; and JAMES BOND waited eleven years.[5]

To address these issues, IPOPHL has introduced an alternative administrative procedure for the declaration of well-known marks. In lieu of court litigation or inter partes proceedings before the Bureau of Legal Affairs, trademark owners may now apply directly to the Bureau of Trademarks through an ex parte administrative process.

Legal Framework

Under IPOPHL Regulations on Well-Known Marks (IPOPHL Memorandum Circular No. 2025-009 dated 5 February 2025), trademark owners may apply for a declaration of well-known mark by submitting a notarized application and supporting documents. 

The status of the mark as well-known is determined based on the knowledge of the relevant sector of the public (rather than the public at large), including knowledge in the Philippines acquired through promotion. 

To be considered well-known, the mark must satisfy four (4) primary and mandatory criteria, namely:

 a.    Duration, extent and geographical area of any promotion of the mark, including advertising or public presentation

b.    Market share in the Philippines and in other countries of the specified goods or services

c.    Mark’s degree of inherent or acquired distinction

d.    Mark’s quality, image, or reputation

In addition, other secondary criteria may be considered, such as:

e.    Extent of trademark registrations

f.     Exclusivity of trademark registration

g.    Extent of worldwide use

h.    Exclusivity of use

i.      Commercial value

j.     Successful enforcement action

k.    Judicial declarations of well-known mark

l.      Presence of identical or confusingly similar marks registered or used on identical goods or services

The well-known mark declaration lasts for ten (10) years and may be renewed upon showing of the mark’s continuous commercial use. 

A well-known mark declaration produces two legal effects:

•  It serves as prima facie evidence that the mark is well-known for the specified goods or services.

• It results in the inclusion of the mark in the Register of Well-Known Marks, which the examiners may consider in evaluating other trademark applications.

Illustrative examples

As of February 2026, the IPOPHL had declared eighty-four (84) well-known marks, such as Jollibee logo, Chickenjoy, Milo, Lexus, Nikon, Apple, Hitachi, Red Bull, Facebook, Blackberry, Nokia, and Yahoo.

[1] Rule 2 (a), IPOPHL Regulations on Well-Known Marks (IPOPHL Memorandum Circular No. 2025-009 dated 5 February 2025)

[2] Fredco Manufacturing Corporation v. President and Fellows of Harvard College (Harvard University), G.R. No. 185917, June 01, 2011. The case started in 2005 and ended in 2011.

[3] Philips v. Court of Appeals, G.R. No. 96161 February 21, 1992. Case started in 1984 and ended in 1992.

[4] Dy v. Koninklijke Philips, G.R. No. 186088, March 22, 2017. The case started in 2006 and ended in 2017.

[5] Suyen Corporation v. Danjaq LLC, G.R. No. 250800, July 06, 2021. The case started in 2010 and ended in 2021.