WHAT IS “FIRST-TO-FILE” POLICY AND HOW DOES IT APPLY TO PHILIPPINES?
WHAT IS “FIRST-TO-FILE” POLICY AND HOW DOES IT APPLY TO PHILIPPINES?
First to file policy practically means “first come first serve” basis. This means the first party to file their applications would most likely be given the rights to trademark. Therefore, it is really important to file your mark as soon as possible, whether it is big or small. In Philippines, the said policy is implemented since 1998, which means whoever files first gets the exclusive right to prevent third party from using the mark.
Trademarks filed in Philippines demand the applicant to be a local, or it must be applied with Power of Attorney. A Power of Attorney, which is an authorization given to another person such as local agents or attorney to act on behalf of the applicants is needed when applicant is not Filipinos.
Filing Requirements
Therefore, it is worth noting that filing a trademark in Philippines requires applicant to act fast and with particular documents in hand. As applicant who has registered his trademark successfully gain the exclusive rights to stop anyone with any similar marks from registering as it might cause confusion to the public, and also able to indict any applications after them as an act of infringement.
The Dominancy Test
Under section 121 of Republic Act No.8293 or the Intellectual Property Code of the Philippines, trademarks are noticeable signs capable of distinguishing the goods or services provided. In Philippines, the test in determining whether confusion exists is through the dominancy test. In the case of Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., the factors taken into account in determining what establish a distinguish feature are signs, colour, shapes, names or anything that attracts attention of the public. So, any marks that have similarities to the previous shall be liable of infringement.
An act of infringement indicates that criminal or civil actions will be taken against the alleged party as it is against the law. This shows the importance of registering your mark as early as possible. With the help of a local agent or attorney, any unexpected situation would be avoided.
What Is the First-to-File Policy in the Philippines?
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The first-to-file policy means “first come first serve” — whoever files their trademark application first gets the exclusive rights, regardless of who used the mark first. This policy has been implemented in the Philippines since 1998. It gives the first filer the right to prevent third parties from using similar marks.
Do I Need a Power of Attorney to File in the Philippines?
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Yes, if you are not a Filipino citizen or resident. A Power of Attorney is an authorization given to another person (such as local agents or attorneys) to act on behalf of the applicant. Foreign applicants must file through a local representative with a valid Power of Attorney.
What Is the Dominancy Test?
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The dominancy test is used in the Philippines to determine whether trademark confusion exists. As established in Dermaline, Inc. vs. Myra Pharmaceuticals, Inc., courts examine the dominant features that attract public attention — including signs, colors, shapes, and names. If marks have similarities to existing registrations, they may be liable for infringement.
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