How to Conduct a Trademark Search in the Philippines: A Step-by-Step Guide

A trademark search helps you confirm if your desired mark is unique and not already registered or in use. This step is vital to avoid conflicts with existing trademarks and to secure exclusive rights to your brand. Here’s how to perform a comprehensive trademark search in the Philippines to protect your brand effectively.

Understand the Importance of a Trademark Search

A trademark search allows you to determine if your desired mark is already in use or if there are similar marks that could conflict with yours. This is important for several reasons:

• Avoiding Legal Conflicts: Registering a trademark similar to an existing one can result in costly legal disputes or rejections by the Intellectual Property Office of the Philippines (IPOPHL).

• Ensuring Market Exclusivity: Conducting a thorough search helps ensure that you have the exclusive rights to use your brand name or logo in the market, protecting your brand identity and reputation.

Determine the Scope of Your Search

Different types of searches can be conducted depending on the scope:

• Identical Search: Checks for trademarks that are exactly the same as your proposed mark.

• Similarity Search: Looks for trademarks that may not be identical but are similar enough in appearance, sound, or meaning to cause confusion.

• Comprehensive Search: Involves both identical and similarity searches and may include searches for marks that are phonetically similar or have similar meanings in different languages.

Use the WIPO Global Brand Database for Preliminary Search

The World Intellectual Property Organization (WIPO) provides a free online tool, the Global Brand Database, which can be used to search for existing trademarks globally, including in the Philippines. This tool allows you to:

• Search for existing trademarks by name, classification, or applicant.

• Filter results by trademark status, owner, jurisdiction, and more.

• View detailed information such as registration number, filing date, owner, and current status of the trademark.

Conducting a preliminary search using the WIPO Global Brand Database will help you identify potential conflicts across multiple jurisdictions. This search should be thorough, covering various spelling variations, translations, and phonetic similarities of your mark.

Consider Hiring a Professional

While the WIPO Global Brand Database is a valuable tool for an initial search, hiring a professional trademark attorney or agent like Recurra can provide a more comprehensive analysis. Professionals have access to advanced databases and are skilled in interpreting results, including nuanced factors like phonetic similarities or translational issues that could lead to conflicts. They can also guide you through the registration process if conflicts arise.

Evaluate the Search Results

After conducting the search, analyze the results to identify any marks that could pose a conflict. Consider the following:

• Similarity in Appearance, Sound, or Meaning: Even if the marks are not identical, check for any similarities that could confuse consumers.

• Class of Goods or Services: Ensure that the trademark you want to register does not conflict with existing marks in the same class of goods or services. The Nice Classification is used in the Philippines, so make sure to cross-reference your search results with this classification.

• Geographical Limitations: Some trademarks might be registered in certain jurisdictions only. If you plan to expand beyond the Philippines, check if the mark is also registered in other countries.

Check for Non-Traditional Marks

The latest trademark regulations in the Philippines now formally recognize several types of non-traditional visual trademarks, such as color marks, position marks, motion marks, hologram marks, three-dimensional marks, and certification marks. These additions bring new opportunities for brand differentiation and require specific criteria for registration. For example, certain marks must show acquired distinctiveness, while others need a clear visual depiction to meet registration requirements.

However, these regulatory changes apply only to visual trademarks and do not yet cover non-visual trademarks like sound or scent. Under the current Intellectual Property Code, trademarks are defined strictly as “visual signs.” This means marks that rely on other senses, such as auditory or olfactory marks, are not currently eligible for registration. For the Philippines to include sound and smell as recognized trademarks, legislative amendments would be necessary, which may take time. Meanwhile, businesses should focus on visual elements when exploring non-traditional trademarks for brand protection.

Consider the Madrid System for International Registration

If you plan to use your trademark internationally, consider filing under the Madrid Protocol. IPOPHL has integrated its processes with the Madrid Filing system, allowing for streamlined application and registration for international trademarks. A trademark search should include both the WIPO Global Brand Database and other international databases to check for conflicts in various jurisdictions.

Document Your Search Process

Keep a detailed record of your search process, including all terms used, databases searched, and any relevant findings. This documentation can be useful if any legal issues arise later or if you need to demonstrate due diligence in avoiding conflicts.

Next Steps if Conflicts are Found

If your search reveals potential conflicts:

• Consider Altering Your Mark: You may need to modify your mark to avoid conflicts. This could involve changing its appearance, wording, or logo design.

• Proceed with a Legal Opinion: Consult a trademark attorney or an agent like Recurra for an opinion on the likelihood of successful registration. They may also advise you on potential opposition proceedings or provide alternative strategies, such as coexistence agreements.

Conclusion

A thorough trademark search is essential for protecting your brand. By ensuring your mark is unique, you avoid legal issues and establish a strong brand identity. Use tools like WIPO Global Brand Database, stay updated on regulations, and seek professional advice. This will help you secure exclusive rights to your brand and build a successful business.

For more information on recent developments and regulations related to trademarks in the Philippines, refer to official publications by IPOPHL and other reliable sources.

Need Expert Guidance?

Contact us today for a free consultation and we will guide you throughout the entire trademark registration process.