SIXTEENTH CONGRESS OF THE REPUBLIC 
OF THE PHILIPPINES 
Second Regular Session 
SENATE 
) 
) 
) 
'15 
APR 16 P2 :20 
S. NO_. ~_2_7_2_3~~~~~~j_" 
~_.i_. '_" ~;;Y. _._~_ 
Introduced by Senator Miriam Defensor Santiago 
AN ACT 
ESTABLISHING A REGISTRY OF WELL-KNOWN TRADEMARKS 
EXPLANATORY NOTE 
The Constitution, Article 12, Section 6 provides: 
Section 6. The use of property bears a social function, and all 
economic agents shall contribute to the common good. Individuals and 
private groups, including corporations, cooperatives, and similar collective 
organizations, shall have the right to own, establish, and operate economic 
enterprises, subject to the duty of the State to promote distributive justice 
and to intervene when the common good so demands. 
Section 14 further provides: 
Section 14. The sustained development of a reservoir of national 
talents consisting of Filipino scientists, entrepreneurs, professionals, 
managers, high-level technical manpower and skilled workers and 
craftsmen in all fields shall be promoted by the State. The State shall 
encourage appropriate technology and regulate its transfer for the national 
benefit. ... 
The purpose of this Act is to create a registry of internationally well-known 
trademarks for the purpose of simplifying evidentiary proceedings in Court when 
enforcing provisions of Republic Act No. 8293, otherwise known as the Intellectual 
Property Code. 
The protection of well-known or famous marks is provided for under the Paris 
Convention for the Protection ofIndustrial Property and the Agreement on Trade-Related 
Aspects ofIntellectual Property Rights 1 (the TRIPS Agreement) of which the Republic of 
1 https:llwww.wto.org/english/tratop __ c/trips_e/t_agInO_e.htm 


the Philippines is a signatory. The Philippines has complied with the TRIPS Agreement 
in large part through the enactment of the Intellectual Property Code as cited above. This 
code provides protection for internationally well-known marks, although they may not be 
registered in the Trademark Rcgistry. 
Proving, for the purposes of enforcing one's rights under the Intellectual Property 
Code, that one is an owner of an internationally well-known mark is a long, difficult, and 
expensive process, to say the least. A person must show, for instance, that his goods or 
services under the mark has been advertised and sold in a large number of countries. Each 
piece of evidence must go through a long process of veritication, not only with the Court 
but with the Department of Foreign Atlairs, Department of Trade and Industry, 
Department of Customs, and all other agencies related to international trade and industry. 
This is not to mention the possibility of having to prove this fact in many different 
lawsuits. The difficulty and expense of having to gather this gargantuan amount of 
evidence is inimical to the process oflitigation. 
It is therefore necessary, in the interest of the speedy disposition of lawsuits, to 
provide a registry of well-known marks, such that entry thereto will constitute prima 
facie evidence of being a well-known mark. One need only prove his claim once, and at 
his own convenience, to competent authorities in the Intellectual Property Office. 
Additionally, if one is able to prove his claim in Court at least once, this shall be 
sufficient to be entered into the registry without further evidence. 
2 


SIXTEENTH CONGRESS OF THE REPUBLIC 
OF THE PHILIPPINES 
Second Regular Session 
) 
) 
) 
Introduced by Senator Miriam Defensor Santiago 
1,1'; 
',:,' 
"]'3 
IIPR 16 P2 :2() 
Be it enacted by the Senate and the House of Representatives of the Philippines in 
Congress assembled: 
1 
AN ACT 
2 
ESTABLISHING A REGISTRY OF WELL-KNOWN TRADEMARKS 
3 
SECTION 1. Short Title. - This Act shall be known as thc "Well-Known Marks 
4 
Registry Act". 
5 
SECTION 2. Definition of "Well-Known Mark" - For the purposes of this Act, a 
6 
'Well-Known Mark' is understood in the same contemplation as an internationally well-
7 
known mark provided for in Section 123.1 (e) of Republic Act No. 8293 otherwise 
8 
known as the "Intellectual Property Codc of the Philippines". 
9 
SECTION 3. Designation of Lead Agency. - The Intellectual Property Office 
10 
(IPO) is hereby directed to establish, within one (1) year from the effcctivity of this Act, 
11 
an official Registry of Well-Known Marks, hereinafter referred to as 'the registry'. The 
12 
IPO shall likewise be responsible for the maintenance and publication of the registry, as 
13 
wcll as all acts necessary for the efficient implementation of this Act. The IPO shall issue 
14 
all pertinent implementing rules and regulations for the application of any mark into the 
15 
registry, Provided, that no declaration of use in the Philippines shall be required for entry 
16 
thereto. 
17 
SECTION 4. Effect of Registry. - Official entry into the registry shall constitute 
18 
prima facie evidencc that a mark under litigation is well-known. No further evidence 


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shall be required by the Court for determining whether a mark is well-known, Provided, 
2 
that there are no fatal defects in the cntry of the mark into the registry. 
3 
SECTION 5. Automatic Registry By Order of the Court. - Any mark deemed by 
4 
the Court through final judgment, to be internationally well-known, shall be entered into 
5 
the registry by operation of law. 
6 
SECTION 6. Period of Registry. - Entry into the registry shall be effective for a 
7 
period of fifteen (15) years, subject to renewal. 
8 
SECTION 7. Disclaimer. - The registry is not an exclusive list. Nothing in this 
9 
Act shall be interpreted to mean that a mark that is not registered is not well-known. 
10 
SECTION 8. Separability Clause. - If any provision or part hereof: is held invalid 
11 
or unconstitutional, the remainder of the law or the provision not otherwise affected shall 
12 
remain valid and subsisting. 
13 
SECTION 9. Repealing Clause. -
Any law, presidential decree or issuance, 
14 
executive order, letter of instruction, administrative order, rule or regulation contrary to 
15 
or is inconsistent with the provision of this Act is hereby repealed, modified, or amended 
16 
accordingly. 
17 
SECTION 10. Effectivity Clause. - This Act shall take effect fifteen (15) days 
18 
after its publication in at least two (2) newspapers of general circulation. 
Approved, 
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