The Philippines officially acceded to the Madrid Protocol on July 25, 2012. By virtue of the Madrid Protocol, trademark owners are able to protect their marks in over 120-member countries through a single international application filed via the World Intellectual Property Organization (WIPO). The system has streamlined international trademark protection and reduced the administrative burden associated with filing separate national applications. While the Madrid System has significantly simplified the process of obtaining trademark protection across multiple jurisdictions, it has also given rise to procedural questions such as the propriety of directly serving notices to answer to foreign applicants that have designated the Philippines, bypassing the International Bureau of the WIPO, and the foreign agent responsible for handling said international registration.

The emerging practice of direct service upon foreign trademark holders

In several opposition proceedings involving Madrid designations, trademark agents have observed that the Intellectual Property Office of the Philippines (IPOPHL) has issued Notices to Answer directly to the foreign owner of the International Trademark Registration without corresponding service upon the representative recorded at the World Intellectual Property Organization (WIPO). Applying the provisions of the Madrid Protocol, in case of an opposition filed with the IPOPHL, it is the duty of the IPOPHL to send notice to the WIPO International Bureau and not to the applicant being opposed.

Further, the IPOPHL needs to send the notice no longer than seven months after the opposition period begins. These rules are even confirmed in Rule 11 and Rule 15(2) of the IPOPHL’s Memorandum Circular No. 2024-024. The IPOPHL inter partes rules do not provide for extraterritorial service. However, the Rules of Court which are suppletorily applied to IPOPHL cases, do allow extraterritorial service under certain conditions, two of which are: (i) the grounds for serving extraterritorially must be expressly stated in the complaint, and (ii) the action must be in rem or quasi-in rem. Verified Notices of Opposition (the complaint to reject a trademark application) do not meet the requirements of the Rules of Court for extraterritorial service considering that it is necessary for the foreign applicant to appoint a resident agent/counsel to transact with the IPOPHL. Also, an opposition is not an action in rem. While a trademark application is an intangible asset, and therefore a property (res), the action does not result in the adjudication of rights against the whole world, but only involving the parties.

An illustrative case: Fédération Internationale De Football Association (FIFA) v. Wooting Technologies

The applicant Wooting sought the subsequent designation in the Philippines of its trademark with WIPO through the Madrid Protocol. At the time of filing, Wooting was represented by its WIPO agent on record, Abcor. On May 21, 2025, Abcor received a communication from WIPO stating that on May 15, 2025, it received from the IPOPHL a “Notification of a Provisional Refusal of an International Registration Designating the Philippines.” The notification likewise stated that an opposition case had been filed in the Philippines against Wooting’s trademark on March 18, 2024. FIFA filed an opposition to Wooting’s application for registration of the mark , bearing IR No. 1761699 under IPC case no. C/2024/52, claiming it is confusingly similar to its mark . Following the June 20, 2025, deadline provided in the WIPO communication, Wooting, through its Philippine agent, filed a Motion for Extension to File Verified Answer on that date.

On July 15, 2025, Wooting was shocked to receive an order denying its motion for extension because it had already been declared in default. In the challenged order, it was stated that the Notice to Answer was served through courier to Wooting on May 21, 2024, and that the latter had 30 days from such service to file its Verified Answer, failing which, it would be declared in default. It was only then that Wooting learned that a Notice to Answer was extraterritorially couriered directly to its office in the Netherlands, effectively bypassing both the WIPO and its agent Abcor. Wooting challenged the order of default by filing a Motion to Lift Order of Default and Admit Verified Answer on the grounds that the extraterritorial service of the notice to answer was in violation of the Madrid Protocol and that the same violated Wooting’s right to due process.

The opposition period began on January 3, 2024, as stated in the notification sent by the IPOPHL to WIPO. Therefore, the IPOPHL should have sent the notification to WIPO on or before July 3, 2024. However, the notification was issued to WIPO only on May 15, 2025, more than a year after the opposition period began. Worse still, the IPOPHL sent its notification to WIPO only after the applicant had already been declared in default, rendering the notification moot and academic. For issuance of summons or notices to answer to Philippine residents, service to both the applicant and/or counsel is the practice. Thus, where a holder of an international registration has a duly recorded representative under the Madrid system, service of a Notice to Answer directly upon the foreign applicant, while bypassing the representative, is inconsistent with the principles underlying the Madrid Protocol and falls short of the procedural fairness expected in inter partes proceedings. 

It should be noted that Wooting had a WIPO agent on record – Abcor. Nonetheless, IPOPHL opted to send the notice directly to Wooting, the applicant.These circumstances are akin to a situation where notice is sent to an address other than that of the counsel on record. By the time the proper notification was sent by the IPOPHL to WIPO and received by the respondent’s WIPO agent, the IPOPHL had already declared the respondent-applicant in default prior to such notification. This situation clearly violated its right to be heard.

Subsequently, a decision was issued dismissing the opposition to the respondent-applicant’s trademark registration. The dismissal was based on substantive grounds, specifically the opposer’s lack of Philippine trademark registrations, inadequate evidence of prior use within the country and failure to establish the mark as well-known.

FIFA did not appeal the decision which became final and executory. To date, there has been no decision rendered on Wooting’s Motion to Lift Order of Default and Admit Verified Answer, and no decision may be forthcoming given that the decision dismissing the opposition case has already attained finality. Nonetheless, while no definite decision has been rendered regarding the proper service of notice to foreign applicants, the present case offers some guidance to IP practitioners. It is hoped that the IPOPHL would issue additional or clarificatory rules in the matter of proper service of a notice to answer to foreign or non-resident applicants. As it is, the applicable rules would be the Rules of Court, which are suppletory to the IPOPHL rules. It must also be noted that for administrative proceedings, the precept of liberality in the application of procedural rules is recognized.