Protecting brands from bad faith registrations

Last week, the Intellectual Property Office of the Philippines (IPOPHL) joined the Philippines-United Arab Emirates (UAE) Comprehensive Economic Partnership Agreement (CEPA) negotiations in the UAE, allowing us to share with investors and businesses the work we do to protect intellectual property assets in the Philippines.

CEPA is envisioned to expand the flow of goods and services exports to the UAE and the greater Gulf region, hike investment flows from the UAE, and create more job and business opportunities in the country.

This is a critical deal with the UAE being the Philippines’ 17th largest trading partner, our top export market among all Gulf Cooperation Council member states and the second home to one of the largest populations of overseas Filipinos in the Middle East, as well as of reputable home-grown Filipino brands and businesses.

At the consultations, I joined His Excellency Alfonso Ver, Ambassador of the Philippines to the UAE and Undersecretary Allan Gepty, the Chief Negotiator of the Philippines under the Department of Trade and Industry International Relations Group. We had a very interactive exchange with Philippine business councils in franchisers and professional Filipino groups in the UAE.

Investors were pleased with the efforts of IPOPHL to protect the IP ecosystem, such as our whole-of-society work at the National Committee on IP Rights, particularly our work with the Bureau of Customs to build stronger border controls in keeping counterfeits at bay.

Other points that drew the interest of investors were our efforts to protect brand owners and rights holders in the digital space through the E-Commerce Memorandum of Understanding which we facilitate and the site-blocking tool we started implementing early this year.

One of the IP issues raised revolved around the registration in the UAE of famous brands in the Philippines by persons who have no connection to the brands. These are called bad faith applications. This happens when trademark applicants race against the real trademark owner to register the mark.

Applicants do so to hold the trademark “hostage” as they ask for payment in exchange for the real owner to have the registered mark transferred to his or her name and allow them to continue using it without legal implications.

I shared that our Bureau of Trademark (BoT) has been seeing a proliferation of such cases. While there are existing measures implemented at the examination level to prevent bad faith applications, including conducting a thorough prior search, we see a stronger need to address them to prevent the Philippines from becoming a hotbed of bad faith applications. With this goal in mind, we are proposing amendments to the IP Code that will explicitly enable the cancellation of trademarks on bad faith grounds.

We have also been strengthening the capabilities of our BoT examiners against bad-faith filings. Since last year, the Japan External Trade Organization and the Japan Patent Office have been sharing best practices on well-known marks and bad faith with IPOPHL.

And at the start of 2024, the United States Patent and Trademark Office trained us on handling such applications. We also raised this with our counterpart in Qatar. As we hope to seal a partnership soon, we hope to exchange information and conduct capacity-building sessions with them.

For the PH-UAE CEPA negotiations to address IP concerns, we are proposing bad faith trademark provisions and stronger IP enforcement provisions at the border, including civil, criminal, and administrative enforcement and enforcement in the digital space.

In all, bad faith cases magnify the importance of registering trademarks in the early development stages of all kinds of businesses, even and maybe more so for MSMEs.

The longer a trademark is in the market without the basic protection of a registration certificate, the bigger the chances of losing it — and all the hard work and investment poured into it — to hostage takers. So everyone should make trademark protection a vital first step before launching a brand.