Whether patents, trademarks or another intellectual asset, sometimes protecting your IP can be confusing. Neptali L. Bulilan, Leonides M. Madrielejo, Angelica O. Uy, Monique C. Collado and Criszus Niño V. Ibon present a range of proven and practical approaches designed to help companies navigate the intricacies of IP law more effectively. 

 

Intellectual property can often feel like a tangled web – complex, confusing, and, at times, overwhelming. This holds true whether it is a start-up taking its first steps, an innovator pushing the limits of creativity or an established business working to safeguard its intellectual capital. These challenges can disrupt momentum, derail plans and leave companies uncertain about how to move forward. 

But it doesn’t have to be this way. With the right strategies in place, businesses can cut through the complexity and regain control.  

This article presents a range of proven and practical approaches designed to help companies navigate the intricacies of IP law more effectively. These strategies equip rights holders with the clarity and confidence needed to handle even the most challenging aspects of IP management. 
 

Patents, designs and utility models  

Falling short of inventive step 

Strategy: Convert to a utility model 

Securing a patent can be difficult, especially when an invention fails to meet the requirement of inventive step. This means the invention must not be obvious to someone skilled in the art at the time of filing. While this requirement preserves the quality of patents, it often becomes a barrier for applicants whose inventions are new and useful but not considered inventive enough. 

The IP Code of the Philippines offers a practical alternative. If the inventor runs out of arguments to overcome the rejection of lack of inventive step, he may avail of the conversion remedy pursuant to Section 110 of the IP Code which provides that  at any time before the grant or refusal of a patent application, an applicant for a patent may convert his application into a utility model which shall be accorded the filing date of the initial application. This gives the inventor an alternative mode to secure exclusive rights for his new technology that fall short of the inventive step threshold. 

In the case of Jessie G. Ching v. William M. Salinas, et al., the Supreme Court clarified that a utility model differs from a patent in at least three important aspects. First, the requisite “inventive step” is not required for a utility model, unlike a patent for invention. Second, the maximum term of protection for a utility model is only seven years, compared to 20 years for a patent, both reckoned from the filing date. Finally, the provisions on utility models dispense with substantive examination, opting instead for a less complicated system that is quicker and more affordable. 

Utility models are faster to obtain, cost less and are well-suited for any novel and useful product, process, implement or tool that is industrially applicable but short of the inventive step threshold. Although the term is shorter, seven years with no extension, it still grants legal rights against unauthorized commercial exploitation by third parties. In this way, the utility model system acts as a safety net by helping innovators protect valuable ideas that may not meet the higher threshold of a patent. 
 

Weakness in enforcement of utility models 

Strategy: Immediately get registrability report 

Utility model registrations are quickly processed because they do not undergo substantive examination on novelty and industrial applicability, only formality check. If all the formal requirements are met, the utility model will proceed to publication in the E-gazette and if there was no adverse information filed within 30 days, the certificate of registration will be issued. This lack of substantive examination has become a problem during enforcement. Without rigorous review, some utility models that have been granted registration may not be novel and may have insufficient disclosure, vague or weak claims, making them vulnerable to invalidity challenge during actual infringement dispute.  

Accused infringers may argue that the utility model lacks novelty, creating uncertainty for the rights holder. Overcoming such challenge can lead to long and tedious litigation. 

To strengthen enforcement, applicants should immediately request for a registrability report from the Bureau of Patents of the Intellectual Property Office ( IPOPHL). This report provides an expert opinion, on whether the utility model is novel and industrially applicable. While not as detailed as a full patent examination, it offers an early assessment of the application’s strength and validity. It can guide adjustments to enforcement strategies. From a business standpoint, this report adds credibility, supports licensing negotiations, and can save legal costs by reducing the risk of future disputes. 
 

Patent infringement through trivial modifications 

Strategy: Apply the doctrine of equivalents 

More often than not, patent infringement does not always involve exact copies or one is to one correspondence of the essential elements recited in the claim/s of the patent vis-à-vis the essential elements of the accused product or process. Many infringers introduce improvements or make small changes or trivial deviations  to avoid infringement liability. And some even obtain patent or utility model for such changes. These situations are common in crowded art and highly competitive industries where innovation is quickly imitated. 

To address this issue, the court applies the doctrine of equivalents. This legal principle holds that even if a product or process does not literally match the elements of the patent claims, it may still infringe if it performs the same function, in the same way, to achieve the same result. 

In the case of Philips Seafood Philippines Corporation v. Tuna Processors, the Supreme Court applied the doctrine of equivalents to assess whether patent infringement occurred. It clarified the application of the doctrine by applying the “all elements” test. Under this doctrine, the court examines whether the elements in the allegedly infringing product or process are equivalent to those outlined in the patent’s claims. Infringement is found if the allegedly infringing product or process captures the innovative concept of the patent. In the instant case however, the court found that while some process steps were equivalent, others were not, thus, no patent infringement was found.  

This doctrine is already embodied in the IP Code. Specifically, Section 75.2 provides that the extent of protection for a patent should consider such elements which are equivalent to those recited in the claims. 

By applying this doctrine, courts focus on the substance of the invention, not just on the language of the claims. This helps patent owners protect their innovations from subtle imitations or trivial modifications. For local and foreign patentees alike, the doctrine of equivalents is a vital tool for plugging the legal loopholes in the language of the patent claims thereby enforcing the rights effectively. 
 

Trademarks 

A mark with multiple meanings 

Strategy:1. Focus on the perception of the Philippine consumers 

Strategy 2. Acquire distinctiveness through secondary meaning 

Brands often cross borders but their meanings do not always travel with them. A trademark that is registrable in one country may not always be in another due to linguistic or geographic interpretations. While this seems like a slight snag, this presents a real challenge for businesses expanding internationally. 

For instance, a mark with no geographic meaning in the Philippines might be linked to a place abroad. Unfortunately, this can present complications in Philippine trademark registration. Section 123.1(j) of the Intellectual Property Code proscribes the registration of marks that are primarily geographically descriptive or misleading. This protects consumers and preserves geographic terms for general use. 

Imagine a proprietor in the Philippines crafting a mark that seemed novel as consumers do not associate it with any location, files for its registration, and the examiner finds that the same refers to a place outside the Philippines or has geographic meaning in another continent. Despite the lack of local connection, the trademark application may be denied based on this foreign meaning. This could happen even if the mark has been used continuously and exclusively in the Philippines for years. 

Fortunately, the law provides a solution. Section 123.2 allows registration of marks that would normally be barred, if they have acquired distinctiveness through use in Philippine commerce. A mark acquiring a secondary meaning means that a mark originally descriptive or geographic can become a protected brand when the public identifies it with a specific source. 

An illustration of this is found in the case involving the mark “Fino Deli”. Its registration was initially refused, citing the mark’s potential to designate characteristics of goods and services. It was then argued that Fino Deli is an Italian term for “updated”, implying that the products are carefully selected to meet modern taste. The owner of the mark pointed out that the Italian meaning of the subject mark may be considered a fanciful or arbitrary mark in the Philippine setting and that the mark bears no logical relation to the actual characteristics of the product that it presents. Breaking down the words, fino translates to “fine” in Spanish, while deli is derived from the Latin delicates, meaning delightful or pleasing, suggesting the offering or delightful products to the market. “Deli” also a short term for delicatessen in English. The application was then allowed for registration and has been continuously used in commerce for more than five years.  

Under the IP Code, five years of continuous, exclusive, and open use in the Philippines is considered prima facie evidence of acquired distinctiveness. The Supreme Court confirmed this in Philippine Nut Industry Inc. v. Standard Brands, Inc., where it was held that a descriptive term may gain protection if consumers associate it with a particular business. Similarly, the U.S. court in Burke-Parsons-Bowlby Corp. v. Appalachian Log Homes ruled that a mark gains distinctiveness when people no longer see it as geographic but as a commercial source. 

For marks which application is encountering refusal based on geographic interpretation, demonstrating secondary meaning offers a practical remedy. Continuous and consistent use coupled with strong public recognition can transform the mark into a legally protectable and valuable asset. 

Another demonstration involves the trademark “Segnatempo” for retail cosmetics, apparel, sunglasses, optical store products and related services. Its application was initially refused by the IPOPHL stating that the mark is likely to mislead the public regarding the nature of the services, particularly as it translates to “timepieces” in Google search results. The applicant argued that the inclusion of stylization in the mark makes it sufficiently distinctive for registration, as it is not solely composed of generic or descriptive signs. They emphasized their entitlement to the mark’s registration as the true owner in the Philippines, having adopted, used and filed the mark first, and that “Segnatempo” is a coined word, translating to “time signal,” formed from Italian terms, and therefore capable of appropriation as a trademark. The applicant further argued that the mark had acquired secondary meaning through continuous use in the Philippines for over five years. The refusal was then overturned and the mark was allowed registration on the merits of the aforementioned bases.  

In cases such as these, what must be given more weight is the perception of Filipino consumers. If they perceive a mark as a brand rather than a geographic term, it can be protected, even if it has a geographic meaning elsewhere. This is especially valuable for startups and growing companies. It ensures that foreign meanings that are inapplicable in the Philippines do not override local recognition. The Supreme Court affirmed this principle in the case Ginebra San Miguel, Inc. v. Director of Bureau of Trademarks, et al., where it held that a generic term a century ago may become a distinctive mark today because of the change in its primary significance based on public perception, and the same works inversely. 

The Court said the doctrine of foreign equivalents is not an absolute rule and should only be considered as a guideline. The doctrine of foreign equivalents will not apply when, based on the test of primary significance pursuant to public perception, the relevant public has placed a different or alternate meaning or assessment to a foreign word. Finally, “Ginebra” has acquired secondary meaning (through continuous, substantial and exclusive use in commerce in the Philippines over many years), so that the consuming public recognizes “Ginebra” not just as the generic term but as a brand associated with GSMI’s gin. 

In today’s global economy, trademark meanings can shift. The law must reflect how consumers actually perceive brands and adapt with the changing times. Secondary meaning allows businesses to protect their marks which have earned their place in the local market. 
 

Trademark squatting? 

Strategy: Charge the squatters with bad faith registration 

The "first-to-file" trademark system in the Philippines is a double-edged sword – what can be beneficial for legitimate trademark owners can also pose a significant risk for foreign companies entering the Philippine market.  

This can lead to the practice of trademark squatting, where an individual or entity registers a foreign company’s trademark in the Philippines in bad faith, with the intention of either using it to their own advantage or selling it back to the rightful owner for a profit. This occurs when a party registers another’s trademark as his own in a jurisdiction where the original trademark owner has yet to register. 

Bad faith registration occurs when an individual knowingly files a trademark application despite the prior use of the same or a confusingly similar mark by another business. A registrant may have acted in bad faith by leveraging insider status and goodwill built by the company exploiting the first-to-file rule where registration priority trumps prior use. In Ecole de Cuisine Manille, Inc. v. Renaud Cointreau & Ciel the Supreme Court upheld the finding of bad faith when it noted that petitioner had been fully aware of the respondent’s prior use of the marks because its directress had trained in the respondent’s culinary school in Paris.  

The expansive reach of the digital age, coupled with the widespread accessibility of social media platforms, has considerably amplified the risk of trademark squatting and bad faith registrations. In such circumstances, affected parties are not without recourse. The IP Code provides several legal tools to combat this abuse:  

Opposition to a trademark application. If the squatter’s application has not yet been registered, an opposition to the application may be filed with the IPOPHL’s Bureau of Legal Affairs (BLA) within 30 days from the date of publication. 

Cancellation of registration. If bad faith can be proven, the registration can be cancelled, which applies retroactively, or as if the registration was never allowed. This process protects rightful owners and maintains the integrity of trademark law. In the recent case of Gloria Maris Shark’s Fin Restaurant, Inc. v. Pacifico Q. Lim, the court reiterated that a certificate of registration may be cancelled if, among others, it was fraudulently made.  

Administrative, civil or criminal case 

These actions can be pursued concurrently with IPOPHL proceedings. An administrative case for trademark infringement and/or unfair competition can be filed under the IP Code. A civil case can also be filed in a designated commercial court to recover damages from a trademark squatter. Lastly, a criminal case for trademark infringement or unfair competition can be filed with law enforcement agencies.  

For businesses working in international markets, maintaining intellectual property integrity remains vital. These remedies restore rights and protect brand reputation against opportunistic registrations.  
 

Proving actual use in trademarks: Turn commercial presence into legal strength 

Another recourse to deter trademark squatting instituted by the IPOPHL is the requirement of trademark maintenance. The filing of a Declaration of Actual Use (DAU) to prove genuine use is particular only in three countries, namely, the Philippines, Cambodia and the United States. The maintenance of a trademark is a fundamental requirement for the preservation of brand identity and the enforcement of intellectual property rights. In keeping their exclusive rights over their marks, trademark owners must establish ongoing and bona fide use of the mark in commerce through the submission of a Declaration of Actual Use. By requiring proof of genuine use, the DAU requirement helps to filter out these bad-faith registrants and free up marks for legitimate businesses. 

Traditionally, sales invoices, shipping records or packaging prove this. But with the rise of online businesses, these can be scarce or insufficient. With the rise of online commerce, digital evidence is increasingly accepted. Active websites, online marketplaces and social media accounts can demonstrate actual use, provided they clearly show the mark in commerce. Rule 210 of the IPOPHL MC No. 2017-010 states that downloaded pages from the website clearly showing that the goods are being sold or the services are being rendered in the Philippines as evidence of use is now acceptable.  

For example, a website displaying the trademark alongside products supports claims of use. Features like online purchasing or timestamps strengthen the case. Likewise, regular activity on ecommerce platforms or social media showing customer interaction adds weight. These digital signals prove the trademark is actively used in business and help protect rights in the digital age. 

However, it is possible that a legitimate trademark owner who has registered its mark in good faith cannot provide proof of use within the period required by law. In such cases, a Declaration of Non-Use (DNU) may be filed instead of a DAU. Valid reasons for non-use are limited to specific circumstances, such as a government agency-imposed requirement preventing use, a court-issued restraining order, or if the mark is the subject of an opposition or cancellation case. 
 

Intellectual property in general 

Limited national IP protection 

Strategy: Align with international patent and trademark systems 

To succeed globally, IP protection must extend beyond national borders. IPOPHL has aligned its systems with key international frameworks. This helps Filipino innovators file abroad more efficiently, reduce costs and strengthen global strategies. 

One example is the Patent Cooperation Treaty (PCT). Through the Intellectual property Office of the Philippines (IPOPHL) as a receiving office, applicants can file one international patent application valid in over 150 countries. This simplifies the process, provides up to 30 months before entering national phases, and offers early patentability assessments. 

Another important program is the Patent Prosecution Highway (PPH), including an agreement between IPOPHL and the Japan Patent Office (JPO), the Korea Intellectual Property Office (KIPO), the U.S. Patent Office ( USPTO) and the European Patent Office (EPO). Applicants with a favourable decision in any of these countries can request accelerated examination in the Philippines based on their earlier allowed/granted applications. In addition, the Philippines is also an active participating country in the ASEAN Patent Examination Cooperation (ASPEC) programme, which provides accelerated examination among participating ASEAN countries.  

For trademarks, the Madrid Protocol streamlines registrations in multiple countries. After a national registration with IPOPHL, owners can file one application covering many jurisdictions. This simplifies managing trademark portfolios and protects brands worldwide. 
 

Inadequate and unqualified IP representation 

Strategy: Choose IPOPHL-recognized representatives  

Lastly, behind every successful IP strategy is a qualified professional. Selecting a recognized representative is critical. IPOPHL formalized accreditation through Memorandum Circulars No. 2024-012 and 2024-013. These set standards for lawyers, agents and IP professionals. 

Non-lawyers must be officially recognized to represent clients. For lawyers, recognition is voluntary but recommended. All representatives must meet strict qualifications, ensuring legal and technical proficiency. 

IPOPHL supports this through training programs like the Trademark Agents and Attorneys Training Course and the Patent Agents and Attorneys Training Course. These prepare candidates with knowledge and skills. Qualifying exams are upcoming, expanding the pool of certified professionals. 

This recognition system reflects IPOPHL’s goal to professionalize IP practice and raise legal standards. It improves advocacy quality and builds trust among local and international stakeholders. 

So, for anyone filing patents or trademarks or involved in IP disputes, one key question matters: Is your representative officially recognized by IPOPHL? Because when IP becomes tangled, the right strategy, and the right professionals, can help straighten it out.