Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of December 1, 1998 (as amended up to Office Order No. 49 of 2006), Philippines, WIPO Lex

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English Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of December 1, 1998 (as amended up to Office Order No. 49 of 2006)

PHILIPPINES

RULES AND REGULATIONS ON TRADEMARKS, SERVICE MARKS, TRADENAMES AND MARKED

OR STAMPED CONTAINERS

as amended by Office Order No.49 S.2006

TABLE OF CONTENTS

PART 1 REGISTRATION OF TRADEMARKS AND SERVICE MARKS

Rule 10 Title

Rule 100 Definitions

Rule 101 Registrability

Rule 102 Criteria for Determining whether a Mark is Well-known

Rule 103 Trade Names or Business Names

PART 2 RIGHT TO A MARK

Rule 200 How Marks are Acquired

Rule 201 International Conventions and Reciprocity

Rule 202 Priority Right; Basis for Claiming Priority Right

Rule 203 Requirements for Applications Claiming Priority Right

Rule 204 Declaration of Actual Use

Rule 205 Contents of the Declaration and Evidence of Actual Use

PART 3 WHO MAY APPLY FOR A MARK

Rule 300 The Applicant

Rule 301 Assigned Marks

Rule 302 Representation; Address for Service

Rule 303 Applicant may be Represented by Attorney

Rule 304 Power of Attorney or Authorization

Rule 305 Death, Insanity, Incapacity of Applicant

Rule 306 Signature and Other Means of Self-identification

PART 4 TRADEMARK APPLICATION

Rule 400 Requirements of Application

Rule 401 Office Application Form

Rule 402 Label

Rule 403 Drawing

Rule 404 Drawing for a Service Mark may be Dispensed with in Certain Cases

Rule 405 Drawing to be on Bristol Board

Rule 406 Size of Board; “Sight”

Rule 407 Drawing to be with the Pen or by Other Processing Giving

Satisfactory Results

Rule 408 The Name of the Owner to be within Marginal Lines

Rule 409 When Board may be Turned on Its Side

Rule 410 Manner of mailing the Drawing to the Bureau

Rule 411 Color

Rule 412 Informal Drawing

Rule 413 Use of an Old Drawing in a New Application

Rule 414 The Small Facsimiles of the Drawing, How Prepared

Rule 415 Translation/Transliteration

Rule 416 Nice Classification

Rule 417 Broad Terms

Rule 418 Single registration for goods and/or services

Rule 419 Division of Applications

PART 5 THE FILING DATE

Rule 500 Filing Date

Rule 501 Application Number and Filing Date

PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR REGISTRATION

CHAPTER 1 NATURE OF THE PROCEEDINGS

Rule 600 Application Prosecuted Ex Parte; Protests

Rule 601 Proceedings a Contest between Examiner and the Applicant

Rule 602 Applicant Supposed to Look after His Own Interests

Rule 603 Preliminary Adverse Action of the Examiner Valuable to Applicant

Rule 604 A Preliminary Rejection should Not be Taken Literally; Examiner

is Only Trying to be Helpful

CHAPTER 2 MANNER OF EXAMINATION OF AN APPLICATION FOR REGISTRATION; ACTION

BY THE EXAMINER; RESPONSE BY THE APPLICANT; ABANDONMENT; REVIVAL

Rule 605 Order of Examination; Priority of Action

Rule 606 Jurisdiction of the Examiner

Rule 607 Examination of the Application; Action by the Examiner

Rule 608 Disclaimers

Rule 609 Interview with the Examiners: when no Interview is Permitted

Rule 610 Period for Response, Action by Applicant

Rule 611 Communications Other than the Original

Rule 612 Re-examination

Rule 613 Final Action

Rule 614 Abandonment; Incomplete Response

Rule 615 Revival of Abandoned Application

Rule 616 Time less than Four Months; when Request for Extension should

be Made

Rule 617 Suspension of Action by the Bureau

Rule 618 Provisional Allowance

Rule 619 Express Abandonment

CHAPTER 3 AMENDMENTS TO THE APPLICATION; RESPONSE TO OBJECTIONS OF THE

EXAMINER

Rule 620 Amendments to the Application

Rule 621 Amendments to Description or Drawing

Rule 622 Manner of Making the Amendment

Rule 623 Prohibition against Marking of Papers or Records of the Office

by Applicants

PART 7 PUBLICATION, ALLOWANCE AND ISSUANCE OF CERTIFICATE OF REGISTRATION

Rule 700 Publication in the IPO Gazette; End of Jurisdiction of the

Examiner

Rule 701 Examiner may Petition for the Remand to His Jurisdiction, of

an Allowed Application

Rule 702 Examiner to be in Charge of Publication for Opposition;

Applications Confidential Prior to Publication

Rule 703 Allowance of application and Issuance of Certificate of

Registration

PART 8 EFFECT AND NOTICE OF REGISTRATION

Rule 800 Rights Conferred

Rule 801 Duration

Rule 802 Non-use of a Mark when Excused

Rule 803 Use of a Mark in a Different Form

Rule 804 Use of a Mark for Goods Belonging to the Class Registered

Rule 805 Use of a Mark by Related Company

Rule 806 Certificates of Registration; Records and Copies in Registered

Cases

Rule 807 Contents of Certificate of Registration

Rule 808 Use of Indications by Third Parties for Purposes Other than Those

for which the Mark is Used

PART 9 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR REGISTRATION

CHAPTER 1 VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER BY

THE REGISTRANT OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES

Rule 900 Jurisdiction of the Examiner

Rule 901 Cancellation upon Application by Registrant

Rule 902 Amendment or Disclaimer of Registration

Rule 903 Correction of Mistakes Made by the Office

Rule 904 Corrections of Mistakes Made by Applicant

Rule 905 Surrender, Cancellation, Amendment, Disclaimer, and Correction

to be Given Publicity

CHAPTER 2 RECORDING OF ASSIGNMENTS OF REGISTRATION; OR ANY OTHER

INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED MARK, INCLUDING LICENSES,

DIVISION OF REGISTRATION

Rule 906 Assignment and Transfer of Application and Registration

Rule 907 Form of Assignment or Transfer

Rule 908 Recordal of Assignment or Transfer

Rule 909 Assignment, Other Instruments Affecting the Registration, or

License, and Translation, to be Submitted in Duplicate

Rule 910 Date of Receipt of Instrument to be Recorded Considered Its Date

of Recording

Rule 911 A New Certificate of Registration must be Issued to Assignee

Rule 912 Action may be Taken by Assignee of Record in any Proceeding in

Office

Rule 913 Clearance of Trademark License Agreement Prior to Recordal

Rule 914 Division of Registration

Rule 915 Cancellation of Original Certificate and Issuance of Transfer

Certificates of Registration

Rule 916 Contents of Transfer Certificates of Registration

CHAPTER 3 RENEWAL OF REGISTRATION

Rule 917 Request for Renewal

Rule 918 When to File Request for Renewal

Rule 919 Jurisdiction of the Examiner

Rule 920 Need for Appointing a Resident Agent

Rule 921 Renewal of Prior Act Registration; Use and Proof Thereof,

Required

Rule 922 Prior Act Certificate of Registration to be Surrendered

Rule 923 Refusal of Renewal Registration; Appeal to the Director

Rule 924 Certificate of Renewal of Registration

PART 10 REGISTRATION OF STAMPED OR MARKED CONTAINER

Rule 1000 Rules or registration of Trademarks and Service Marks to Apply

Rule 1001 “Stamped or Marked Container” Defined

Rule 1002 No Drawing Required

Rule 1003 No Labels Required; Sample may be Required

PART 11 PETITIONS AND APPEAL

Rule 1100 Nature of the Function of Examiners

Rule 1101 Petition to the Director to Question the Correctness of the

Action of an Examiner on a Matter not Subject to Appeal

Rule 1102 Appeals to the Director

Rule 1103 Effect of a Final Decision of an Examiner which is Not Appealed

Rule 1104 Time and Manner of Appeal

Rule 1105 Appellant’s Brief Required

Rule 1106 The Examiner’s Answer

Rule 1107 Appellant’s reply

Rule 1108 Appeal to the Director General

Rule 1109 Appellant’s Brief Required

Rule 1110 Director’s Comment

Rule 1111 Appeal to the Court of Appeals

FINAL PROVISIONS

Section 1 Correspondence

Section 2 Fees and Charges to be Prepaid; Fees and Charges Payable in

Advance

Section 3 Applications pending on Effective Date of the IP Code

Section 3.1 Amendment of Pending Applications

Section 3.2 Filing Date of Pending Applications; Declaration of Actual

Use

Section 3.3 Processing of Pending Applications

Section 3.3.1 Interference

Section 3.4 Duration of Registration

Section 3.5 Duration of Renewal of Registration Granted under Republic

Act No. 166

Section 3.6 Abolition of the Supplemental Register

Section 3.7 Renewal of a Registration in the Supplemental Register

Section 3.7.1 Registrations Subsisting on January 1, 1998

Section 3.7.2 Registrations, or Extension Thereof, with Term Ending on

or Before December 31, 1997

Section 3.7.3 Notice to Comply

Section 4 Repeals

Section 5 Separability

Section 6 Effectivity

I.RULES AND REGULATIONS ON TRADEMARKS, SERVICE MARKS, TRADENAMES AND

MARKED OR STAMPED CONTAINERS

(as amended by Office Order No. 39 (2002), Order No. 40 (2002), Office

Order No. 20 (2001), Office Order No. 08 (2000), Office Order No. 17

(1998))

PART 1 Registration of Trademarks and Service Marks

Rule 10 Title

These regulations shall be known as the “Trademark Regulations”. [As

amended by Office Order No. 08 (2000)]

Rule 100 Definitions

Unless otherwise specified, the following terms shall have the meaning

provided in this Rule:

(a) “Bureau” means the Bureau of Trademarks of the Intellectual Property

Office;

(b) “Collective mark” means any visible sign designated as such in the

application for registration and capable of distinguishing the origin

or any other common characteristics, including the quality of goods or

services of different enterprises which use the sign under the control

of the registered owner of the collective mark;

well-known, means the Court, the Director General, the Director of the

Bureau of Legal Affairs, or any administrative agency or office vested

with quasi-judicial or judicial jurisdiction to hear and adjudicate any

action to enforce the rights to a mark;

(d) “Director” means the Director of the Bureau of Trademarks;

(e) “Director General” means the head of the Intellectual Property Office;

(f) “Examiner” means the trademark examiner or any official or employee

of the Bureau of Trademarks authorized to examine applications for

registration or renewals thereof;

(g) “IP Code” means Republic Act No. 8293 otherwise known as the

Intellectual Property Code of the Philippines;

(h) “IPO Gazette” means the Intellectual Property Office’s own

publication where all matters required to be published under the IP Code

shall be published;

(i) “Mark” means any visible sign capable of distinguishing the goods

(trademark) or services (service mark) of an enterprise and shall include

a stamped or marked container of goods;

(j) “Office” means the Intellectual Property Office;

(k) “Regulations” means these set of rules and regulations and such Rules

of Practice in Trademarks and Service Marks as may be formulated by the

Director of Trademarks and approved by the Director General; and

(l) “Trade name” means the name or designation identifying or

distinguishing an enterprise, also known or referred to as business

identifier.

Rule 101 Registrability

A mark cannot be registered if it:

(a) Consists of immoral, deceptive or scandalous matter, or matter which

may disparage or falsely suggest a connection with persons, living or

dead, institutions, beliefs, or national symbols, or bring them into

contempt or disrepute;

(b) Consists of the flag or coat of arms or other insignia of the

Philippines or any of its political subdivisions, or of any foreign nation,

or any simulation thereof;

living individual except by his written consent, or the name, signature,

or portrait of a deceased President of the Philippines, during the life

of his widow, if any, except by written consent of the widow;

(d) Is identical with a registered mark belonging to a different

proprietor or a mark with an earlier filing or priority date, in respect

of:

(i) The same goods or services, or

(ii) Closely related goods or services, or

(iii) If it nearly resembles such a mark as to be likely to deceive or

cause confusion;

(e) Is identical with, or confusingly similar to, or constitutes a

translation of a mark which is considered by the competent authority of

the Philippines to be well-known internationally and in the Philippines,

whether or not it is registered here, as being already the mark of a person

other than the applicant for registration, and used for identical or

similar goods or services; Provided, That in determining whether a mark

is well-known, account shall be taken of the knowledge of the relevant

sector of the public, rather than of the public at large, including

knowledge in the Philippines which has been obtained as a result of the

promotion of the mark;

(f) Is identical with, or confusingly similar to, or constitutes a

translation of a mark considered well-known in accordance with the

preceding paragraph, which is registered in the Philippines with respect

to goods or services which are not similar to those with respect to which

registration is applied for: Provided, That use of the mark in relation

to those goods or services would indicate a connection between those goods

or services, and the owner of the registered mark: Provided, further,

That the interests of the owner of the registered mark are likely to be

damaged by such use;

(g) Is likely to mislead the public, particularly as to the nature, quality,

characteristics or geographical origin of the goods or services.

Geographical indications are indications which identify certain goods

as originating in the territory of a country, or a region or locality

in that territory, where a given quality, reputation or other

characteristic of the goods is essentially attributable to its

geographical origin.

(h) Consists exclusively of signs that are generic for the goods or

services that they seek to identify;

(i) Consists exclusively of signs or of indications that have become

customary or usual to designate the goods or services in everyday language

or in bona fide and established trade practice;

(j) Consists exclusively of signs or of indications that may serve in

trade to designate the kind, quality, quantity, intended purpose, value,

geographical origin, time of production of the goods or rendering of the

services, or other characteristics of the goods or services;

(k) Consists of shapes that may be necessitated by technical factors or

by the nature of the goods themselves or factors that affect their

intrinsic value;

(l) Consists of color alone, unless defined by a given form; or

(m) Is contrary to public order or morality.

As regards signs or devices mentioned in paragraphs (j), (k), and (l),

nothing shall prevent the registration of any such sign or device which

has become distinctive in relation to the goods or services for which

registration is requested as a result of the use that has been made of

it in commerce in the Philippines. The Office may accept as prima facie

evidence that the mark has become distinctive, as used in connection with

the applicant’s goods or services in commerce, proof of substantially

exclusive and continuous use thereof by the applicant in commerce in the

Philippines for five years before the date on which the claim of

distinctiveness is made.

The nature of the goods or services to which the mark is applied will

not constitute an obstacle to registration.

Rule 102 Criteria for Determining whether a Mark is Well-known

In determining whether a mark is well-known, the following criteria or

any combination thereof may be taken into account:

(a) the duration, extent and geographical area of any use of the mark,

in particular, the duration, extent and geographical area of any promotion

of the mark, including advertising or publicity and the presentation,

at fairs or exhibitions, of the goods and/or services to which the mark

applies;

(b) the market share, in the Philippines and in other countries, of the

goods and/or services to which the mark is applied;

(d) the quality-image or reputation acquired by the mark;

(e) the extent to which the mark has been registered in the world;

(f) the exclusivity of registration attained by the mark in the world;

(g) the extent to which the mark has been used in the world;

(h) the exclusivity of use attained by the mark in the world;

(i) the commercial value attributed to the mark in the world;

(j) the record of successful protection of the rights in the mark;

(k) the outcome of litigations dealing with the issue of whether the mark

is a well-known mark; and,

(l) the presence or absence of identical or similar marks validly

registered for or used on identical or similar goods or services and owned

by persons other than the person claiming that his mark is a well-known

mark.

Rule 103 Trade Names or Business Names

(a) A name or designation may not be used as a trade name if by its nature

or the use to which such name or designation may be put, it is contrary

to public order or morals and if, in particular, it is liable to deceive

trade circles or the public as to the nature of the enterprise identified

by that name.

(b) Notwithstanding any laws or regulations providing for any obligation

to register trade names, such names shall be protected, even prior to

or without registration, against any unlawful act committed by third

parties. In particular, any subsequent use of the trade name by a third

party, whether as a trade name or a mark or collective mark, or any such

use of a similar trade name or mark, likely to mislead the public, shall

be deemed unlawful.

Sections 153 to 156 and Sections 166 and 167 of the IP Code shall apply

to trade names mutatis mutandis.

(d) Any change in the ownership of a trade name shall be made with the

transfer of the enterprise or part thereof identified by that name.

However, such transfer or assignment shall be null and void if it is liable

to mislead the public, particularly as regards the nature, source,

manufacturing process, characteristics, or suitability for their purpose,

of the goods or services to which the mark is applied.

PART 2 RIGHT TO A MARK

Rule 200 How Marks are Acquired

The rights in a mark shall be acquired through registration made validly

in accordance with the law.

Rule 201 International Conventions and Reciprocity

(a) Any person who is a national or who is domiciled or has a real and

effective industrial establishment in a country which is a party to any

convention, treaty or agreement relating to intellectual property rights

or the repression of unfair competition, to which the Philippines is also

a party, or extends reciprocal rights to nationals of the Philippines

by law, shall be entitled to benefits to the extent necessary to give

effect to any provision of such convention, treaty or reciprocal law,

in addition to the rights to which any owner of an intellectual property

right is otherwise entitled by the Intellectual Property Code.

(b) The registration of a mark of such person shall be independent of

the registration in the country of origin and the duration, validity or

transfer in the Philippines of such registration shall be governed by

the IP Code and these Regulations.

Rule 202 Priority Right; Basis for Claiming Priority Right

(a) An application for registration of a mark filed in the Philippines

by a person referred to in Rule 201, and who previously duly filed an

application for registration of the same mark in one of those countries,

shall be considered as filed as of the day the application was first filed

in the foreign country.

(b) No registration of a mark in the Philippines by a person described

in this rule shall be granted until such mark has been registered in the

country of origin of the applicant.

is a national, domiciled, or has a bona fide and effective industrial

or commercial establishment.

(d) Nothing in this rule shall entitle the owner of a registration granted

under this rule to sue for acts committed prior to the date on which his

mark was registered in the Philippines; Provided, That, notwithstanding

the foregoing, the owner of a well-known mark, as defined in the IP Code

and these Regulations, that is not registered in the Philippines, may,

against an identical or confusingly similar mark, oppose its registration,

or petition the cancellation of its registration or sue for unfair

competition, without prejudice to availing himself of other remedies

provided for under the law.

(e) In like manner and subject to the same conditions and requirements,

the priority right may be based upon a subsequent regularly filed

application in the same foreign country: Provided, That any foreign

application that was made the basis of the priority right and filed prior

to such subsequent application has been withdrawn, abandoned, or

otherwise disposed of, without having been laid open to public inspection

and without leaving any rights outstanding, and has not served as a basis

for claiming a right of priority shall not thereafter serve as a basis

for claiming a right of priority.

Rule 203 Requirements for Applications Claiming Priority Right

An application with claim of priority right must be filed within six months

from the date the earliest foreign application was filed. Without need

of any notice from the Office, Bureau or examiner, the applicant shall

file an English translation of a certified copy of any of the following

within three months from the date of filing in the Philippines:

(a) Foreign application showing the date of filing

(b) Foreign registration indicating the date of filing. [as amended by

Office Order No. 39 (2002)]

Rule 204 Declaration of Actual Use

The Office will not require any proof of use in commerce in the processing

of trademark applications. However, without need of any notice from the

Office, all applicants or registrants shall file a declaration of actual

use of the mark with evidence to that effect within three years, without

possibility of extension, from the filing date of the application.

Otherwise, the application shall be refused or the mark shall be removed

from the register by the Director motu proprio.

Rule 205 Contents of the Declaration and Evidence of Actual Use

The declaration shall be under oath, must refer to only one application

or registration, must contain the name and address of the applicant or

registrant declaring that the mark is in actual use in the Philippines,

list the goods where the mark is attached; list the name or names and

the exact location or locations of the outlet or outlets where the products

are being sold or where the services are being rendered, recite sufficient

facts to show that the mark described in the application or registration

is being actually used in the Philippines and, specifying the nature of

such use. The declarant shall attach five labels as actually used on the

goods or the picture of the stamped or marked container visibly and legibly

showing the mark as well as proof of payment of the prescribed fee. [As

amended by Office Order No. 08 (2000)]

PART 3 WHO MAY APPLY FOR A MARK

Rule 300 The Applicant

(a) Applicant may be a person or juridical person.

(b) Unless modified by this Part, all applications for a mark should be

in the name of the applicant(s) who may sign the application. If there

are more than one applicant, all of them should be named as applicant

but anyone may sign the application for and in behalf of all the

applicants.

Rule 301 Assigned Marks

In case the whole interest in the mark is assigned, the application may

be filed in the name of the assignee who may sign the application. In

case the assignee is a juridical person, any officer thereof may sign

the application in behalf of the said person. In case of an aliquot portion

or undivided interest, each of the joint owners will sign the application.

Rule 302 Representation; Address for Service

If the applicant is not domiciled or has no real and effective commercial

establishment in the Philippines, he shall designate by a written document

filed in the Office, the name and address of a Philippine resident who

may be served notices or process in proceedings affecting the mark. The

written document shall be submitted to the Office within sixty days from

filing date without need of any notice from the Office. Such notices or

services may be served upon the person so designated by leaving a copy

thereof at the address specified in the last designation filed. If the

person so designated cannot be found at the address given in the last

designation, such notice or process may be served upon the Director. [As

amended by Office Order No. 08 (2000)]

Rule 303 Applicant may be Represented by Attorney

The owner of a mark may file and prosecute his own application for

registration, or he may be represented by any attorney or other person

authorized to practice in such matters by the Office. The Office shall

not aid in the selection of an attorney or agent other than the furnishing

of the list of Attorneys or agents authorized to practice before the

Office.

Rule 304 Power of Attorney or Authorization

At the time of filing of an application, no power of attorney or

authorization is required. However, the Office may require any attorney

or other recognized person to submit within sixty days from notice a power

of attorney or authorization before he will be allowed to take an initial

or further action in any application or registration.

A substitute or associate attorney may be appointed by an attorney only

upon the written authorization of his principal; but a third attorney

appointed by the second will not be recognized. [As amended by Office

Order No. 08 (2000)]

Rule 305 Death, Insanity, Incapacity of Applicant

When the applicant dies, becomes insane or otherwise incapacitated, the

legally appointed executor, administrator, guardian, conservator or

representative of the dead or insane or incapacitated applicant may

prosecute the application in behalf of the heirs and

successors-in-interest of the applicant.

Rule 306 Signature and Other Means of Self-identification

(a) Where a signature is required, the Office shall accept:

(1) A hand-written signature; or

(2) The use of other forms of signature, such as a printed or stamped

signature, or the use of a seal, instead of a hand-written signature:

Provided, That where a seal is used, it should be accompanied by an

indication in letters of the name of the signatory.

(b) No attestation, notarization, authentication, legalization or other

certification of any signature or other means of self-identification

referred to in the preceding paragraphs, will be required, except, where

the signature concerns the surrender of a registration.

PART 4 TRADEMARK APPLICATION

Rule 400 Requirements of Application

All applications must be addressed to the Director and shall be in Filipino

or English and shall contain the following:

(a) A request for registration;

(b) The name and address of the applicant;

he has domicile; and the name of a State in which the applicant has a

real and effective industrial or commercial establishment, if any;

(d) Where the applicant is a juridical entity, the law under which it

is organized and existing;

(e) The appointment of an agent or representative, if the applicant is

not domiciled in the Philippines;

(f) Where the applicant claims the priority of an earlier application,

a declaration claiming the priority of that earlier application, together

with an indication of:

-- the name of the state with whose national Office the earlier application

was filed or if filed with an Office other than a national Office, the

name of that Office;

-- the date on which the earlier application was filed; and

-- where available, the application number of the earlier application;

(g) Where the applicant wishes to claim color as a distinctive feature

of the mark, a statement to that effect as well as the name or names of

the color or colors claimed and an indication, in respect of each color,

of the principal parts of the mark which are in that color;

(h) Where the mark is a three-dimensional mark, a statement to that effect;

(i) A reproduction of the mark and facsimiles thereof as provided in these

Regulations;

(j) A transliteration or translation of the mark or of some parts of the

mark, as prescribed in these Regulations;

(k) The names of the goods or services for which the registration is sought,

grouped according to the classes of the Nice Classification, together

with the number of the class of the said Classification to which each

group of goods or services belongs;

(l) Where the application is for a collective mark, a designation to that

effect;

(m) A signature by, or other self-identification of, the applicant or

his representative;

(n) Power of Attorney if the filing is through a representative; and

(o) Sworn statement that the applicant is a small entity if such be the

fact.

Rule 401 Office Application Form

For the convenience of applicants, the Office shall draw up and make

available a standard application form which may be reproduced at will

by applicants and other persons at their own cost.

Rule 402 Label

The applicant may include the label as actually used or intended to be

used on the goods or a copy or duplicate made by photo engraving or some

similar process.

The mark must be bigger and more dominant than the generic term of goods

except in the case of medicine as required by law.

Rule 403 Drawing

(a) The drawing of the mark shall be substantially exact representation

thereof as actually used or intended to be used on or in connection with,

the goods or services of the applicant.

(b) A typed drawing may be accepted by the Examiner if no special

characteristics have to be shown such as design, style of lettering, color,

diacritical marks, or unusual forms of punctuation.

A computer print-out may also be accepted by the Examiner if it

substantially complies with the requirement that it must be the exact

representation of the mark.

in determining whether the applications shall be considered complete for

the purpose of granting a filing date.

Rule 404 Drawing for a Service Mark may be Dispensed with in Certain Cases

The drawing of a service mark may be dispensed with but the application

must contain an adequate description of such mark.

Rule 405 Drawing to be on Bristol Board

The Drawing must be made upon pure white paper of a thickness of a Bristol

board. The surface of the paper must be calendered and smooth.

Rule 406 Size of Board; “Sight”

The size of a sheet on which a Drawing is made must be exactly two hundred

ten millimeters (210 mm) by two hundred ninety-seven millimeters (297

mm) or the size of an A4 paper. Nineteen millimeters (19 mm) from its

edges, a single marginal line is to be drawn, leaving the “sight” precisely

one hundred seventy-two millimeters (172 mm) by two hundred fifty-nine

millimeters (259 mm). Within this margin all work and signatures must

be included. One of the shorter sides of the sheet should be regarded

as its top.

Rule 407 Drawing to be with the Pen or by Other Processing Giving

Satisfactory Results

If colors are not claimed, all Drawings must be made with pen only or

by a process which will give them satisfactory reproduction

characteristics. Every line and letter, signatures included, must be

absolutely black. This direction applies to all lines, however fine, and

to shading. All lines must be clean, sharp, and solid, and they must not

be too fine or crowded. Surface shading, when used, should be open.

Rule 408 The Name of the Owner to be within Marginal Lines

The name of the proprietor of the trademark, service mark or trade name

must be within the marginal lines and should not encroach upon the drawing.

It should be signed by the owner or his Attorney of record. However, a

printed or stamped signature or the use of seal accompanied by an

indication in letters of the name of signatory is also accepted.

Rule 409 When Board may be Turned on Its Side

When the view is longer than the width of the sheet, the sheet should

be turned on its side.

Rule 410 Manner of mailing the Drawing to the Bureau

Drawing transmitted to the Office should be sent flat, protected by a

sheet of heavy binder’s board, or should be rolled for transmission in

a suitable mailing tube. They should never be folded.

Rule 411 Color

Where color is a material feature of the mark as used or intended to be

used, the color or colors employed may be actually reproduced in the

drawings and facsimiles. Otherwise, a statement must be made giving the

name or names of the color or colors claimed indicating the principal

part or parts of the mark which are in such color or colors.

Rule 412 Informal Drawing

A Drawing not executed in conformity with the foregoing rules may be

accepted for the purpose of examination, but the Drawing must be corrected

or a new one furnished, as may be required, before the mark can be published

for opposition or the application allowed. Substitute Drawings will not

be accepted unless they have been required by the Examiner or unless

correction of original Drawing would require that the mark or trade name

be substantially entirely redrawn.

Rule 413 Use of an Old Drawing in a New Application

In an application filed in place of an abandoned or rejected application,

a new complete application is required, but the old Drawing, if suitable,

may be used. The application must be accompanied by a request for the

transfer of the Drawing, and by a permanent photographic copy, or an order

for such copy, of the Drawing to be placed in the original file. A drawing

so transferred or to be transferred cannot be amended.

Rule 414 The Small Facsimiles of the Drawing, How Prepared

The ten small facsimiles of the Drawing must be printed in black ink or

in color, if colors are claimed, one facsimile on Bristol board and the

other nine facsimiles on an ordinary coupon bond paper and must be capable

of being satisfactorily reproduced when published in the IPO Gazette.

The size of the sheet on which these facsimiles are to be printed must

be seventy millimeters (70 mm) long and thirty-five millimeters (35 mm)

wide.

Rule 415 Translation/Transliteration

A translation or transliteration of the mark or some parts of the mark

must accompany the application if the mark or of some parts of the mark

is/are foreign word(s), letter(s) and character(s), or foreign sounding.

Transliteration is an act, process or instance of representing or spelling

of words, letters or characters of one language in the letters and

characters of another language or alphabet.

Translation is an act, process or instance of translating as rendering

from one language or representational system into another.

Rule 416 Nice Classification

The applicant must indicate the names of the goods or services for which

the registration is sought, grouped according to the classes of the Nice

Classification, together with the number of the class of the Nice

Classification to which each group of goods or services belongs.

(a) CLASSIFICATION OF GOODS

TITLE Class

1 Chemical products used in industry, science, photography,

agriculture, horticulture, forestry; artificial and synthetic

resins; plastics in the form of powders, liquids or plates, for

industrial use; manures (natural and artifician( � fire

extinguishing compositions; tempering substances and chemical

preparations for soldering; chemical substances for preserving

foodstuffs; tanning substances; adhesive substances used in

industry.

Chemicals used in industry, science and photography, as well as in

agriculture, horticulture and forestry; unprocessed artificial

resins, unprocessed plastics; manures; fire extinguishing

compositions; tempering and soldering preparations; chemical

substances for preserving foodstuffs; tanning substances; adhesives

used in industry.

2 Paints, varnishes, lacquers, preservatives against rust and against

deterioration of wood; coloring matters; dyestuffs; mordants;

natural resins; metals in foil and powder form for painters and

decorators

3 Bleaching preparations and other substances for laundry use;

cleaning, polishing, scouring and abrasive preparations; soaps;

perfumery; essential oils, cosmetics, hair lotions, dentrifices

4 Industrial oils and greases (other than edible oils and fats and

essential oils);lubricants; dust laying and absorbing compositions;

fuels (including motor spirit) and illuminants; candles, tapers,

nightlights and wicks

5 Pharmaceutical, veterinary and sanitary substances; infants’; and

invalids’ foods; plasters, material for bandaging; material for

stopping teeth, dental wax; disinfectants; preparations for killing

weeds and destroying vermin

6 Unwrought and partly wrought common metals and their alloys;

anchors, anvils, bells, rolled and cast building materials; rails

and other metallic materials for railway tracks; chains (except

driving chains for vehicles); cables and wires (non-electric);

lock-smiths’ work ; metallic pipes and tubes; safes and cash boxes;

steel balls; horseshoes; nails and screws; other goods in

non-precious metal not included in other classes; ores

7 Machines and machine tools; motors (except for land vehicles);

machine couplings and belting (except for land vehicles); large size

agricultural implements; incubators

8 Hand tools and instruments; cutlery, forks and spoons; side arms

9 Scientific, nautical, surveying and electrical apparatus and

instruments (including wireless), photographic, cinematographic,

optical, weighing, measuring, signalling, checking (supervision),

life saving and teaching apparatus and instruments; coin or

counter-freed apparatus; talking machines; cash registers;

calculating machines; fire-extinguishing apparatus

10 Surgical, medical, dental and veterinary instruments and apparatus

(including artificial limbs, eyes and teeth)

11 Installations for lighting, heating, steam generating, cooking,

refrigerating, drying, ventilating, water supply and sanitary

purposes

12 Vehicles; apparatus for locomotion by land, air or water

13 Firearms; ammunition and projectiles; explosive substances;

fireworks

14 Precious metals and their alloys and goods in precious metals or

coated therewith ( except cutlery, forks and spoons); jewelry,

precious stones; horological and other chronometric instruments

15 Musical instruments (other than talking machines and wireless

apparatus)

16 Paper and paper articles, cardboard and cardboard articles; printed

matter, newspaper and periodicals, books; bookbinding materials;

photographs; stationery, adhesive materials (stationery); artists’

materials; paint brushes; typewriters and Office requisites (other

than furniture); instructional and teaching material (other than

apparatus);playing cards; (printers’) type and cliches (stereotype)

17 Gutta percha, india rubber, balata and substitutes, articles made

from these substances, and not included in other classes; plastics

in the form of sheets, blocks and rods, being for use in

manufacturers; materials for packing, stopping or insulating;

asbestos, mica and their products; hose pipes (non-metallic)

18 Leather and imitations of leather, articles made from these

materials, and not included in other classes; skins, hides, trunks

and travelling bags; umbrellas, parasols and walking sticks; whips,

harness and saddlery

19 Building materials, natural and artificial stone, cement, lime,

mortar, plaster and gravel; pipes of earthenware or cement;

road-making materials; asphalt, pitch and bitumen; portable

buildings; stone monuments; chimney pots

20 Furniture, mirrors, picture frames; articles (not included in other

classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory,

whale-bone, shell, amber, mother-of-pearl, meerschaum, celluloid,

substitutes for all these material, or of plastic

21 Small domestic utensils and containers (not of precious metal, nor

coated therewith);combs and sponges; brushes (other than paint

brushes);brush-making materials; instruments and materials for

cleaning purposes; steel wool; unworked or semi-worked glass

(excluding glass used in building); glassware, porcelain and

earthenware not included in other classes

22 Rope, string, nets, tents, awnings, tarpaulins, sails, sacks;

padding and stuffing materials (hair, capoc, feathers, seaweeds,

etc.); raw textile materials

23 Yarns, threads

24 Tissues (piece goods); bed and table covers; textile articles not

included in other classes

25 Clothing, including boots, shoes and slippers

26 Lace and embroidery, ribbons and braids; buttons, press buttons,

hooks and eyes, pins and needles; artificial flowers

27 Carpets, rugs, mats and matting; linoleums and other materials for

covering existing floors; wall hangings (non-textile)

28 Games and playthings; gymnastic and sporting articles (except

clothing); ornaments and decorations for Christmas trees

29 Meat, fish, poultry and game; meat extracts; preserved, dried and

cooked fruits and vegetables; jellies, jams; eggs; milk and other

dairy products; edible oils and fats; preserves, pickles

30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes;

flour, and preparations made from cereals; bread, biscuits, cakes

pastry and confectionery, ices; honey, treachel; yeast,

baking-powder; salt mustard; pepper, vinegar, sauces; spices; ice

31 Agricultural, horticultural and forestry products and grains not

included in other classes; living animals; fresh fruits and

vegetables; seeds; live plants and flowers; foodstuffs for animals,

malt

32 Beer, ale and porter; mineral and aerated waters and other

non-alcoholic drinks; syrups and other preparations for making

beverages.

33 Wines, spirits and liqueurs

34 Tobacco, raw or manufactured; smokers’ articles; matches

(b) CLASSIFICATION OF BUSINESS OR SERVICES

35 Advertising and business

36 Insurance and financial

37 Construction and repair

38 Communication

39 Transportation and storage

40 Material treatment

41 Education and entertainment

42 Miscellaneous

Rule 417 Broad Terms

In any application, the use of broad terms in identifying the goods,

business or services shall be unacceptable. Applicants whose application

are based on foreign registration shall be required to specify the goods

covered by such foreign registration in all cases where the foreign

registration used broad terms in identifying the goods, business or

services.

Rule 418 Single registration for goods and/or services

One application may relate to several goods and/or services, whether they

belong to one class or to several classes of the Nice Classification.

Where goods and/or services belonging to several classes of the Nice

Classification have been included in one application, such an application

shall result in one registration.

Rule 419 Division of Applications

(a) Any application referring to several goods or services referred to

as the “initial application” may be divided by the applicant into two

or more applications hereafter referred to as the “divisional

applications” by distributing among the latter the goods or services

referred to in the initial application.

(b) A single class shall not be subdivided.

the initial application or within two months from mailing date of the

first action of the Bureau.

(d) Upon receipt of the divisional applications, the Office shall cancel

the initial application together with its application number. New

application numbers shall be given to the divisional applications but

the filing date shall be the same as the filing date of the initial

application. The divisional applications shall likewise preserve the

benefit of the right of priority of the initial application.

PART 5 THE FILING DATE

Rule 500 Filing Date

Subject to the provisions on priority right, the filing date of an

application shall be the date on which the Office received the payment

for the required fee and the following indications and elements in English

or Filipino:

(a) An express or implicit indication that the registration of a mark

is sought;

(b) The identity of the applicant;

if any;

(d) A reproduction of the mark whose registration is sought; and

(e) The list of the goods or services for which the registration is sought.

Rule 501 Application Number and Filing Date

(a) Before starting to examine the registrability of a mark, the Examiner

or such other personnel as the Director may authorize, shall examine

whether the application satisfies the requirements for the grant of a

filing date as provided in these Regulations. If the application does

not satisfy the filing date requirements, the Bureau shall notify the

applicant who shall, within a period of one month from mailing date of

the notice, complete or correct the application as required; otherwise,

the application shall be considered withdrawn.

(b) If the application did not satisfy the requirements for grant of a

filing date at the time that the filing fee and other indications were

received by the Office, the filing date that was given shall be cancelled

and a new filing date shall be entered in the records of the Office. The

new filing date shall be the date on which the Office received the

completed or corrected application as specified in the notice to the

applicant.

PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR REGISTRATION

CHAPTER 1 NATURE OF THE PROCEEDINGS

Rule 600 Application Prosecuted Ex Parte; Protests

An application for registration is prosecuted ex parte by the applicant;

that is, the proceedings are like a lawsuit in which there is a plaintiff

(the applicant) but no defendant, the court itself (the Examiner) acting

as the adverse party.

No attention shall be paid to ex parte statements or protests of persons

concerning pending applications to which they are not parties, unless

information of the pendency of these applications shall have been

voluntarily communicated by the applicants.

Rule 601 Proceedings a Contest between Examiner and the Applicant

An ex parte proceeding in the Office for the registration of a mark is

a law contest between the Examiner, representing the interest of the

public and the applicant (or his attorney), representing his own private

interests.

Rule 602 Applicant Supposed to Look after His Own Interests

The Office, represented by the Examiner, is not supposed to look after

the interest of an applicant. The law imposes that duty upon the applicant

himself. The Examiner is charged with the protection of the interests

of the public and hence must be vigilant to see that no registration issues

for a mark contrary to law and these Regulations.

Rule 603 Preliminary Adverse Action of the Examiner Valuable to Applicant

The positive value of a preliminary adverse action of the Examiner should

be fully appreciated by the applicant or his attorney. A hard-fought

application will produce a registration much more likely to stand in court

than a registration which has slid through the Office easily. The reason

for this is that every point raised by the Examiner and finally decided

by the Office in favor of the applicant will give the applicant a prima

facie standing on that point in court.

The Office is empowered by law to pass upon applications for registration

and, because of the authority vested in it, its decisions with respect

to the grant of a registration, or on any point connected with it, are

presumed to be correct by the courts.

Rule 604 A Preliminary Rejection should Not be Taken Literally; Examiner

is Only Trying to be Helpful

A preliminary rejection by the Examiner is never to be taken literally.

An applicant should remember that the Examiner may not be actually

rejecting his application. The Examiner may in fact be quite prepared

to admit the application, and is only trying to give the applicant a chance

to explain away some reference or some difficulty rather than have him

wait until the registration is granted and become involved in a litigation,

when it may then be difficult for him to make the explanation.

CHAPTER 2 MANNER OF EXAMINATION OF AN APPLICATION FOR REGISTRATION; ACTION

BY THE EXAMINER; RESPONSE BY THE APPLICANT; ABANDONMENT; REVIVAL

Rule 605 Order of Examination; Priority of Action

(a) Applications shall be examined for registrability in the order in

which the complete requirements for grant of filing date are received

by the Office. Ordinarily, the order of the application number assigned

to them by the Office will be followed and no application bearing a higher

application number shall be examined in advance of the applications with

lower application numbers unless the filing date of the application

bearing the higher number is earlier than those bearing a lower number.

(b) Priority of action and/or examination may be granted upon petition

under oath with payment of fees and upon order of the Director, to

trademark applications falling under any of the following:

1. Re-filing by the same registrant or assignee of a mark previously

registered but cancelled for failure to meet the maintenance requirement.

2. Re-filing by the same applicant of a mark previously filed but abandoned

and can no longer be revived.

3. An application for registration of a mark, names or abbreviation of

names, logos of any nation, intergovernmental or international

organizations.

4. An application for registration of a mark, names, abbreviation of names,

logos of any sports competition conducted within a short period of time

or when periodically conducted, the TM registration is necessary to

promote goodwill or image before the commencement of the sports activity.

5. An application for registration of mark, names, abbreviation of names,

logos of product and services of applicants introduced and/or

participating in a trade mission and/or exposition local or abroad and

will be conducted within a short period of time.

6. An application for registration of mark, names, abbreviations of names,

logos of a religious, social or charitable, educational activity the early

registration of which is necessary to achieve its purpose or objective.

7. Domain names (as service mark); and,

8. Trademarks, servicemarks, and tradenames used or to be used in

Information and Communications Technology (ICT) infrastracture. [As

amended by Office Order No. 20 (2001)]

Rule 606 Jurisdiction of the Examiner

The Examiners shall have original jurisdiction over the examination of

all applications for registration and over their allowance for

publication in the IPO Gazette for purposes of opposition. Their decision,

when final, shall be subject to petition and appeal to the Director.

Applicants, their attorneys or agents shall take up the problems arising

from their pending applications only with the respective Examiners in

charge and with no other person in the Office.

Rule 607 Examination of the Application; Action by the Examiner

(a) If, after the examination, the applicant is found not entitled to

registration for any reason, he will be so notified by the Examiner. He

will be advised of the reasons therefor and of any formal requirements

or objections, and he will be given such information and references as

may be helpful to him in the further prosecution of his application.

(b) All Examiners are required to include all grounds of objection

existing at the time of the issuance of an action in that action. Piece

meal action shall be prohibited.

Rule 608 Disclaimers

The basic purpose of disclaimers is to make of record, that a significant

element of a composite mark is not being exclusively appropriated apart

from the composite. The following portions of a mark when forming part

of the composite mark, must be disclaimed to permit registration, namely

(a) a generic term; (b) a descriptive matter in the composite mark; (c)

a matter which does not function as a trademark, or service mark or a

trade name.

Such disclaimer shall not prejudice or affect the applicant’s rights then

existing under some other law or thereafter arising in the disclaimed

matter, nor shall such disclaimer prejudice or affect the applicant’s

rights to registration on another application of later date, where the

disclaimed matter has become distinctive of the applicant’s goods,

business or services.

Where the examiner determines that any portion of a mark contains

unregistrable matter which must be disclaimed, he shall communicate his

finding to the Applicant by means of an Action document. If the applicant

fails to respond within the time allowed under these Rules, the finding

of the examiner shall become final and the unregistrable matter shall

be disclaimed. [as amended by Office Order No. 39 (2002)]

Rule 609 Interview with the Examiners: when no Interview is Permitted

Interviews with Examiners concerning applications pending before the

Office can be held only upon written request specifying the query he would

want to propound and after payment of the required fee, but in respect

of which the Examiner has the discretion to grant the interview or instead

reply to the query in writing. The interview shall take place within the

premises of the Office and during regular office hours as specified by

the Examiner. All interviews or conferences with Examiners shall be

reduced to writing and signed by the Examiner and the applicant

immediately after the conference. Such writing shall form part of the

records of the Office. Interviews for the discussion of pending

applications shall not be held prior to the first official action thereon.

Rule 610 Period for Response, Action by Applicant

The applicant has two months from the mailing date of any action of the

Examiner to respond thereto. Such response may be made with or without

amendment and must include such proper action by the applicant as the

nature of the action of the Examiner and the condition of the case may

require. The period to respond may be extended upon written request and

upon payment of the required fee but in no case shall the total period

to respond exceed four months from the mailing date of the Examiner’s

action requiring the response.

Rule 611 Communications Other than the Original

“Communication” shall mean any response filed with the Office except

compliance with filing date requirements. The Office shall accept

communications to it by telecopier, or by electronic means. When

communications are made by telefacsimile, the reproduction of the

signature, or the reproduction of the seal together with, where required,

the indication in letters of the name of the natural person whose seal

is used, must appear. Within twenty-four hours from receipt of the

telefacsimile by a machine of the Office, the Examiner shall confirm the

date of receipt of the telefacsimile by means of a notice requiring the

applicant to pay the cost, as may be established by the Office from time

to time, incurred by the Office to enable the Office to receive such

telefacsimile. The original copy of such communication and the payment

of the cost herein provided must be received by the Office within one

month from date of receipt of the telefacsimile. Otherwise, the

communication shall be deemed withdrawn and expunged from the records.

In all cases, the burden of proof lies on the applicant that such documents

have been received by the Office.

Rule 612 Re-examination

After response by the applicant, the application will be re-examined or

reconsidered by the Examiner, and if the registration is again refused

or formal requirements insisted upon, but not stated to be final, the

applicant may respond again.

Rule 613 Final Action

On the first or any subsequent re-examination or reconsideration, the

Examiner may state that the refusal of the registration or the insistence

upon a requirement is final. Thus, the applicant’s recourse is limited

to an appeal to the Director or to a compliance with the requirement made

by the Examiner.

Rule 614 Abandonment; Incomplete Response

If an applicant fails to respond, or to submit a complete response, within

the period given counted from the mailing date of an action of the Examiner,

the application shall be deemed abandoned as of the day immediately

following the last day of the aforesaid period.

Rule 615 Revival of Abandoned Application

(a) An abandoned application may be revived as a pending application

within three months from the date of abandonment, if it is shown to the

satisfaction of the Director, and upon payment of the required fee, that

the delay was due to fraud, accident, mistake, or excusable negligence.

(b) A request to revive an abandoned application must be accompanied by

a statement of the causes of the delay in submitting the complete response

and by the proposed response, unless the same has been previously filed.

Any application not revived within the specified time will be deemed

forfeited upon the expiration of the three-month period to revive.

revived once before on the same issue.

Rule 616 Time less than Four Months; when Request for Extension should

be Made

(a) The applicant may be required to prosecute his application in a time

shorter than four months but not less than one month from the mailing

date of the examiner’s action whenever such shorter time is deemed

necessary or expedient. Unless the applicant is notified in writing that

response is required in less than four months, a maximum period of four

months is allowed.

(b) The time for reply, when a time less than four months has been set,

will be extended only for good and sufficient cause and for a reasonable

time specified. Any request for such extension must be filed on or before

the day on which the response of the applicant is due. In all cases, the

maximum time within which to submit a response to an action shall not

exceed four months from the mailing date of the action.

Rule 617 Suspension of Action by the Bureau

Action by the Bureau may be suspended upon written request of the applicant

for good and sufficient cause, for a reasonable time specified and upon

payment of the required fee. The Examiner may grant only one suspension,

and any further suspension shall be subject to the approval of the Director.

An Examiner’s action, which is awaiting a response by the applicant, shall

not be subject to suspension.

Rule 618 Provisional Allowance

If the only issue remaining in an application based on foreign application

claiming priority right is the submission of a certified copy of the

foreign or home registration, the Examiner may provisionally allow the

application and suspend the submission of the certified copy of the

foreign or home registration for a period not exceeding twelve(12) months

counted from allowance. On request of the applicant and subject to the

approval of the Director and payment of the required fee, said twelve

month period may be extended for good cause by an additional period not

exceeding twelve (12) months. Should the applicant fail to submit the

certified copy of the foreign or home registration within the maximum

period of twenty-four months counted from allowance, the claim to priority

right will be deemed waived. The application will thereafter be published

for opposition upon payment of the required fees.

Rule 619 Express Abandonment

An application may be expressly abandoned by filing with the Bureau a

written declaration of abandonment signed by the applicant himself or

by the assignee of record.

CHAPTER 3 AMENDMENTS TO THE APPLICATION; RESPONSE TO OBJECTIONS OF THE

EXAMINER

Rule 620 Amendments to the Application

The application may be amended to correct formalities, to overcome

objections made by the Examiner, or for other reasons arising in the course

of examination.

Rule 621 Amendments to Description or Drawing

Amendments to the description or drawing of the mark may be permitted

only if warranted by the mark as shown on the labels originally filed,

but may not be made if the nature of the mark is changed thereby.

Rule 622 Manner of Making the Amendment

In every amendment the exact word or words to be stricken out or inserted

must be specified and the precise point indicated where the erasure or

insertion is to be made. All such amendments must be on sheets of paper

separate from the papers previously filed, and written on only one side

of the paper.

Rule 623 Prohibition against Marking of Papers or Records of the Office

by Applicants

The applicant or his representative shall not make any erasure, addition,

insertion, or mutilations of any papers or records of the Office.

PART 7 PUBLICATION, ALLOWANCE AND ISSUANCE OF CERTIFICATE OF REGISTRATION

Rule 700 Publication in the IPO Gazette; End of Jurisdiction of the

Examiner

An application for registration is subject to opposition proceeding

before issuance of the certificate of registration. Thus, after

examination or re-examination of an application for registration, if it

should appear to the Examiner in charge of the examination thereof that

the applicant is entitled to have his mark registered, the mark will,

upon the recommendation of said Examiner, be ordered by the Director to

be published in the IPO Gazette for opposition, and the applicant notified

of such action.

The jurisdiction of an Examiner over an application ceases after the

Director has ordered the mark to be published for opposition.

Rule 701 Examiner may Petition for the Remand to His Jurisdiction, of

an Allowed Application

After allowance and within one month from publication of the allowed

application, the Examiner may again exercise jurisdiction over an

application upon petition by him to the Director on the ground of newly

discovered ex parte objections to the registration of the mark.

After an application has been remanded to the Examiner, any amendment

recommended by the Examiner may be approved by the Director and may be

made without withdrawing the allowance, provided the payment for the

issuance of the certificate has not been received by the Office.

Rule 702 Examiner to be in Charge of Publication for Opposition;

Applications Confidential Prior to Publication

The Examiner shall be in charge of all matters relating to the publication

for opposition of all marks and trade names ordered by the Director to

be published as provided in these Regulations.

Access to files of pending applications will not be given to anyone prior

to publication for opposition of the mark or trade name or name and other

mark of ownership stamped on containers, without the written authority

of the applicant. However, an index of pending applications stating the

name and address of the applicant, a description of the mark or trade

name or name and other mark of ownership, the goods, business or service

or container with which the mark or trade name or name or other mark of

ownership is used, the class number, the application number and filing

date of the application will be available for public inspection as soon

as practicable after filing.

Rule 703 Allowance of application and Issuance of Certificate of

Registration

(a) Upon certification by the Director of the Bureau of Legal Affairs

that no notice of opposition, whether or not verified and whether or not

by means of the original copy, has been filed within one month from the

date of release for circulation of the IPO Gazette publishing the

application for opposition, and upon payment of the required fee, the

office shall issue the certificate of registration. The Director of the

Bureau of Legal Affairs shall issue such certification within two months

from the date of release for circulation of any IPO Gazette publishing

applications for opposition. The issuance of the certificate of

registration shall be published in the IPO Gazette and shall be entered

on the records of the Office.

(b) If the application is deficient in any formal matter relating to form,

documents, or other papers necessary for the preparation and issuance

of the certificate of registration or for the publication of such

registration, the Examiner shall send a notice thereof to the applicant.

The applicant shall complete such deficiency within two months from

mailing date of the notice; otherwise the application shall be declared

abandoned. The abandoned application, however, may be revived subject

to the requirements of these Regulations.

PART 8 EFFECT AND NOTICE OF REGISTRATION

Rule 800 Rights Conferred

(a) The owner of a registered mark shall have the exclusive right to

prevent all third parties not having the owner’s consent from using in

the course of trade identical or similar signs or containers for goods

or services which are identical or similar to those in respect of which

the mark is registered where such use would result in a likelihood of

confusion. In case of the use of an identical sign for identical goods

or services, a likelihood of confusion shall be presumed.

(b) The exclusive right of the owner of a well-known mark which is

registered in the Philippines, shall extend to goods and services which

are not similar to those in respect of which the mark is registered:

Provided, That use of the mark in relation to those goods or services

would indicate a connection between those goods or services and the owner

of the registered mark: Provided further, That the interests of the owner

of the registered mark are likely to be damaged by such use.

Rule 801 Duration

A certificate of registration shall remain in force for ten years;

Provided, That, without need of any notice from the Office, the registrant

shall file a declaration of actual use and evidence to that effect, or

shall show valid reasons based on the existence of obstacles to such use,

as prescribed by these Regulations, within one year from the fifth

anniversary of the date of the registration of the mark. Otherwise, the

Office shall remove the mark from the Register. Within one month from

receipt of the declaration of actual use or reason for non-use, the

Examiner shall notify the registrant of the action taken thereon such

as acceptance or refusal.

Rule 802 Non-use of a Mark when Excused

(a) Non-use of a mark may be excused if caused by circumstances arising

independently of the will of the trademark owner. Lack of funds shall

not excuse non-use of a mark.

(b) The special circumstances to excuse non-use in affidavits of non-use

shall not be accepted unless they are clearly beyond the control of the

registrant such as the prohibition of sale imposed by government

regulation.

Rule 803 Use of a Mark in a Different Form

The use of the mark in a form different from the form in which it is

registered, which does not alter its distinctive character, shall not

be ground for cancellation or removal of the mark and shall not diminish

the protection granted to the mark.

Rule 804 Use of a Mark for Goods Belonging to the Class Registered

The use of a mark in connection with one or more of the goods or services

belonging to the class in respect of which the mark is registered shall

prevent its cancellation or removal in respect of all other goods or

services of the same class.

Rule 805 Use of a Mark by Related Company

The use of a mark by a company related with the registrant or applicant

shall inure to the latter’s benefit, and such use shall not affect the

validity of such mark or of its registration: Provided, That such mark

is not used in such manner as to deceive the public. If use of a mark

by a person is controlled by the registrant or applicant with respect

to the nature and quality of the goods or services, such use shall inure

to the benefit of the registrant or applicant.

Rule 806 Certificates of Registration; Records and Copies in Registered

Cases

A certificate of registration of a mark shall be prima facie evidence

of the validity of the registration, the registrant’s ownership of the

mark, and of the registrant’s exclusive right to use the same in connection

with the goods or services and those that are related thereto specified

in the certificate.

After a mark or trade name or name or other mark of ownership has been

registered, the statement, the drawings, and all documents relating to

the case are subject to general inspection, and copies will be furnished

upon payment of the required fees.

Rule 807 Contents of Certificate of Registration

The certificate of registration of a mark shall include a reproduction

of the mark and shall mention its number, the name and address of the

registered owner and, if the registered owner’s address is outside the

country, his address for service within the country; the dates of

application and registration; if priority is claimed, an indication of

this fact, and the number, date and country of the application, basis

of the priority claims; the list of goods or services in respect of which

registration has been granted, with the indication of the corresponding

class or classes; and such other data as the Regulations may prescribe

from time to time.

Rule 808 Use of Indications by Third Parties for Purposes Other than Those

for which the Mark is Used

Registration of the mark shall not confer on the registered owner the

right to preclude third parties from using bona fide their names,

addresses, pseudonyms, a geographical name, or exact indications

concerning the kind, quality, quantity, destination, value, place of

origin, or time of production or of supply, of their goods or services:

Provided, That such use is confined to the purposes of mere identification

or information and cannot mislead the public as to the source of the goods

or services.

PART 9 OTHER PROCEEDINGS AFFECTING THE APPLICATION OR REGISTRATION

CHAPTER 1 VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER BY

THE REGISTRANT OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES

Rule 900 Jurisdiction of the Examiner

The Examiner shall have original jurisdiction over all matters relating

to voluntary surrender, voluntary cancellation, voluntary amendment, and

voluntary disclaimer of registration, and his decisions, when final,

shall be subject to appeal to the Director in the same manner that final

decisions of the Examiners in respect of applications for registration

may be appealed to the Director. In all such matters, registrants or

assignees, their attorneys or agents will deal with him exclusively, or

with such other officials and employees whom the Director may designate

to assist him.

Rule 901 Cancellation upon Application by Registrant

Upon application of the registrant, the Office may permit any registration

to be surrendered for cancellation, and upon cancellation the appropriate

entry shall be made in the records of the Office. The application for

cancellation of registration shall be under oath and shall be duly

authenticated or legalized if the registrant is a non-resident.

Rule 902 Amendment or Disclaimer of Registration

(a) Upon application of the registrant and payment of the prescribed fee,

the Office, for good cause, may permit any registration to be amended

or to be disclaimed in part: Provided, That the amendment or disclaimer

does not alter materially the character of the mark. Appropriate entry

shall be made in the records of the Office upon the certificate of

registration or, if said certificate is lost or destroyed, upon a

certified copy thereof.

(b) Upon application of the registrant and payment of the prescribed fee,

a replacement certificate may be issued by the Office stating on its face

the fact that it is a replacement and bearing the same entry regarding

the amendment or disclaimer that was made on the certified copy of a lost

or destroyed certificate. A duplicate original of such replacement

certificate shall be kept in the records of the Office.

Rule 903 Correction of Mistakes Made by the Office

Whenever a material mistake in a registration incurred through the fault

of the Office is clearly disclosed by the records of the Office, a

certificate stating the fact and nature of such mistake shall be issued

without charge, recorded and a printed copy thereof shall be attached

to each printed copy of the registration. Such corrected registration

shall thereafter have the same effect as the original certificate; or

in the discretion of the Director of the Administrative, Financial and

Human Resource Development Service Bureau a new certificate of

registration may be issued in accordance with these Regulations and

without charge. All certificates of correction heretofore issued and the

registration to which they are attached shall have the same force and

effect as if such certificates and their issuance had been authorized

by the IP Code.

Rule 904 Corrections of Mistakes Made by Applicant

(a) Whenever a mistake is made in a registration and such mistake occurred

in good faith through the fault of the applicant, the Office may issue

a certificate upon the payment of the prescribed fee: Provided, That the

correction does not involve any change in the registration that requires

republication of the mark.

(b) The application for correction must be under oath and must specify

the mistake for which correction is sought, the manner in which it arose

and must state that it occurred in good faith.

copy of the registration.

Rule 905 Surrender, Cancellation, Amendment, Disclaimer, and Correction

to be Given Publicity

Notice of the cancellation, surrender, amendment, disclaimer, and

correction shall be published in the IPO Gazette. The cost of publication

shall be for the account of the registrant or assignee of record, except

when the notice of correction refers to a mistake of the Office.

CHAPTER 2 RECORDING OF ASSIGNMENTS OF REGISTRATION; OR ANY OTHER

INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED MARK, INCLUDING LICENSES,

DIVISION OF REGISTRATION

Rule 906 Assignment and Transfer of Application and Registration

An application for registration of a mark, or its registration, may be

assigned or transferred with or without the transfer of the business using

the mark.

Such assignment or transfer shall, however, be null and void if it is

liable to mislead the public particularly as regards the nature, source,

manufacturing process, characteristics, or suitability for their purpose,

of the goods or services to which the mark is applied.

Rule 907 Form of Assignment or Transfer

The assignment of the application for registration of a mark, or of its

registration, shall be notarized and require the signature of the

applicant, registrant or the assignee of record in case of subsequent

assignment. Transfers by mergers or other forms of succession may be

evidenced by the deed of merger or by any document supporting such

transfer.

Rule 908 Recordal of Assignment or Transfer

Assignments and transfers shall have no effect against third parties until

they are recorded at the Office. Assignments and transfers of registration

of marks shall be recorded at the Office on payment of the prescribed

fee; assignment and transfers of applications for registration shall,

on payment of the same fee, be provisionally recorded, and the mark, when

registered, shall be in the name of the assignee or transferee.

Rule 909 Assignment, Other Instruments Affecting the Registration, or

License, and Translation, to be Submitted in Duplicate

The original document of assignment, other instrument or license and its

translation, together with a signed duplicate thereof, shall be submitted.

After recordal, the Office shall retain the signed duplicate, and return

the original to the party filing the instrument with a notation of the

fact of recording.

Rule 910 Date of Receipt of Instrument to be Recorded Considered Its Date

of Recording

The date of recording of an assignment, other document or license is the

date of its receipt at the Office in proper form and accompanied by the

full recording fee.

Rule 911 A New Certificate of Registration must be Issued to Assignee

Upon written request of an assignee of record, and upon payment of the

required fee, a new certificate of registration for the unexpired period

of the registration must be issued to the assignee.

Rule 912 Action may be Taken by Assignee of Record in any Proceeding in

Office

Any action in any proceeding in the Office which may or must be taken

by a registrant or applicant may be taken by the assignee to the exclusion

of the original owner, registrant, applicant or earlier assignee,

provided the assignment has been recorded. Unless such assignment has

been recorded, no assignee will be recognized to take action.

Rule 913 Clearance of Trademark License Agreement Prior to Recordal

Any trademark license agreement shall be applied for clearance with the

Documentation Information and Technology Transfer Bureau (DITTB) of the

Office and shall be recorded only upon certification by the Director of

the DITTB that the agreement does not violate Sections 87 and 88 of the

IP Code.

Rule 914 Division of Registration

At any time during the life of a certificate of registration, and upon

payment of the required fee, the owner of the registered mark may request

in writing and under oath that the registration be divided. The request

must state the name and address of the owner of record or his

representative of record, the mark, the number and date of issuance of

the certificate to be divided, the goods and/or services into which the

registration is to be divided specifying the number of the class of said

goods and/or services according to the Nice Classification.

The Bureau may grant the request to divide the registration provided that

the division shall not involve any change in the registration that

requires republication of the mark and provided that a single class shall

not be subdivided.

Rule 915 Cancellation of Original Certificate and Issuance of Transfer

Certificates of Registration

Upon approval of the request to divide a registration and payment of the

required fee, the Director shall order that the original certificate be

cancelled and new certificates of registration be issued for the remainder

of the term covered by the original certificate.

Rule 916 Contents of Transfer Certificates of Registration

The transfer certificates of registration shall include a reproduction

of the mark and shall mention their numbers, the name and address of the

registered owner, and if the registered owner’s address is outside the

country, his address for service within the country; the name of the

registered owner of the original certificate in case the owner of the

transfer certificate be a different person; the date of request for

division of the original registration; the date of the issuance of the

transfer certificate of registration; the date of filing and registration

of the original registration; if priority is claimed, an indication of

this fact, and the number, date and country of the application which is

the basis of the priority claims; the list of goods or services covered

by the transfer certificate of registration with the indication of the

corresponding class or classes; and such other data as the Regulations

may prescribe from time to time.

CHAPTER 3 RENEWAL OF REGISTRATION

Rule 917 Request for Renewal

A certificate of registration may be renewed for periods of ten years

at its expiration upon payment of the prescribed fee and upon filing of

a request. The request shall contain the following indications:

(a) An indication that renewal is sought;

(b) The name and address of the registrant or his successor-in-interest,

hereafter referred to as the “right holder”;

(d) The filing date of the application which resulted in the registration

concerned to be renewed;

(e) Where the right holder has a representative, the name and address

of that representative;

(f) The names of the recorded goods or services for which the renewal

is requested or the names of the recorded goods or services for which

the renewal is not requested, grouped according to the classes of the

Nice Classification to which that group of goods or services belongs and

presented in the order of the classes of the said Classifications;

(g) A signature by the right holder or his representative; and

(h) In case there has been material variation in the manner of display,

five sets of the new labels must be submitted with the application.

Rule 918 When to File Request for Renewal

Such request shall be in Filipino or English and may be made at any time

within six months before the expiration of the period for which the

registration was issued or renewed, or it may be made within six months

after such expiration on payment of the additional fee herein prescribed.

Rule 919 Jurisdiction of the Examiner

The Examiner shall have original jurisdiction over applications for

renewal registration, and his decisions, when final, are subject to appeal

to the Director under the conditions specified in these Regulations for

appeals to the Director from the final decisions of the Examiners in

respect of applications for registration. If the Office refuses to renew

the registration, it shall notify the registrant of his refusal and the

reasons therefor.

Rule 920 Need for Appointing a Resident Agent

If the registrant, assignee or other owner of the mark which is the subject

of a petition for renewal registration is not domiciled in the Philippines,

and if the petition for renewal is being filed by a person who is not

his representative or resident-agent of record, the power of attorney

appointing the person filing the petition as the representative of the

registrant must be filed and, upon payment of the required fee, must be

recorded before the Office can act upon the petition for renewal.

Rule 921 Renewal of Prior Act Registration; Use and Proof Thereof,

Required

Marks registered under Republic Act No. 166 shall remain in force and

effect but shall be deemed to have been granted under the IP Code and

shall be renewed within the time and manner provided for renewal of

registration by these Regulations; provided, that marks whose

registration have a remaining duration as of January 1, 1998 of more than

six and one-half years shall be required to submit the declaration and

evidence of actual use prescribed in these Regulations within one year

following the tenth and fifteenth anniversaries of the registration or

renewal registration under Republic Act No. 166; provided, further, that

marks whose registrations have a remaining duration of six and one-half

years or less may no longer be subject to the requirement of declaration

and evidence of use but shall be renewed within the time and in the manner

provided for renewal of registration by these Regulations and, upon

renewal, shall be reclassified in accordance with the Nice Classification.

The renewal shall be for a duration of ten years. Trade names and marks

registered in the Supplemental Register under Republic Act No. 166 whose

registration, including any renewal thereof, was subsisting as of January

1, 1998 shall remain in force but shall no longer be subject to renewal.

Rule 922 Prior Act Certificate of Registration to be Surrendered

With the application for the renewal of a registration made under Republic

Act No. 166 the certificate of registration to be renewed must be

surrendered to the Office, if the official copy of such certificate of

registration is not in the files of the Office.

After he has surrendered the certificate of registration granted under

Republic Act No. 166, the applicant for renewal may, if he so desires,

obtain a certified copy thereof, upon payment of the usual fees.

Rule 923 Refusal of Renewal Registration; Appeal to the Director

The application for renewal may be refused by the Examiner for any valid

reason. The application for renewal may then be completed or amended in

response to the refusal, or the case may be appealed to the Director if

the refusal has become final.

Rule 924 Certificate of Renewal of Registration

The Office may issue a certificate of renewal of registration in all cases

where the request for renewal is approved and the registrant requests

in writing and pays the required fee for the issuance of said certificate.

The certificate of renewal of registration shall contain the number of

the certificate of registration and the mark being renewed, the date of

original issuance thereof, the duration of the renewal registration, all

the data required to be contained in a certificate of registration

provided in these Regulations including any limitation contained in the

order of the Director approving the renewal of the registration.

PART 10 REGISTRATION OF STAMPED OR MARKED CONTAINER

Rule 1000 Rules or registration of Trademarks and Service Marks to Apply

Unless otherwise provided by these Regulations, the registration of

container marks shall be the same as that of trademarks and service marks.

Rule 1001 “Stamped or Marked Container” Defined

“Stamped or marked container” means, any container of goods upon which

a mark is impressed or molded which will give a distinctive effect,

provided that the mark cannot be deleted or removed from the container.

The stamp or mark on the container must be legible and visible for

registration.

Rule 1002 No Drawing Required

No drawing is required for this registration. In lieu of the drawing,

two photographs of the container, duly signed by the applicant or his

representative, showing clearly and legibly the mark sought to be

registered, shall be submitted. The photographs shall be of the same size

as required for trademarks and service marks. No “sight” is required.

Rule 1003 No Labels Required; Sample may be Required

If the Examiner so requires, the applicant or his representative shall

bring a sample of the container to the Bureau on a date and time specified

by the Examiner. The sample shall not be left in the Office and shall

be brought by the applicant or his representative with him immediately

after the viewing thereof by the Examiner.

PART 11 PETITIONS AND APPEAL

Rule 1100 Nature of the Function of Examiners

The function of determining whether or not an application for registration

or renewal thereof should be allowed or denied under the facts disclosed

in the application and in the references consulted by the Examiner and

under the applicable law (statutory and decisional), is a quasi-judicial

function and involves the exercise of judicial discretion.

Thus, with respect to such function, the Director cannot lawfully exercise

direct control, direction and supervision over the Examiners but only

general supervision, exercised through a review of the recommendation

they may make for the grant of registration and of other actions, and

through a review of their adverse decisions by petition or appeal.

Rule 1101 Petition to the Director to Question the Correctness of the

Action of an Examiner on a Matter not Subject to Appeal

Petition may be filed with the Director from any repeated action or

requirement of the Examiner which is not subject to appeal and in other

appropriate circumstances. Such petition, and any other petition which

may be filed, must contain a statement of the facts involved and the point

or points to be reviewed. Briefs or memoranda, if any, in support thereof

should accompany or be embodied in the petition. The Examiner, as the

case may be, may be directed by the Director to furnish a written statement

setting forth the reasons for his decision upon the matter averred in

the petition, supplying a copy thereof to the petitioner. The mere filing

of a petition will not stay the maximum period of four months counted

from the mailing date of the Examiner’s action subject of the appeal for

replying to an Examiner’s action nor act as a stay of other proceedings.

Rule 1102 Appeals to the Director

Every applicant for the registration of a mark or other mark of ownership

may, upon the final refusal of the Examiner to allow registration, appeal

the matter to the Director. Appeal may also be taken to the Director from

any adverse action of the Examiner in any matter over which these

Regulations give original jurisdiction to the Examiner. A second adverse

decision by the Examiner on the same grounds may be considered as final

by the applicant, petitioner, or registrant for purposes of appeal.

Rule 1103 Effect of a Final Decision of an Examiner which is Not Appealed

A final decision of an Examiner which is not appealed to the Director

within the time permitted, or, if appealed, the appeal is not prosecuted,

shall be considered as final to all intents and purposes, and shall have

the effect of res judicata in respect of any subsequent action on the

same subject matter.

If an application is considered abandoned for failure of the applicant

to respond to an action of the examiner on the merits e.g. citation of

confusingly similar marks, the order declaring the application as

abandoned which has become final shall likewise have the effect of res

judicata.

Rule 1104 Time and Manner of Appeal

Any petition or appeal must be taken by filing the petition in duplicate

or a notice of appeal, as the case may be, and payment of the required

fee within two months from the mailing date of the action appealed from,

must specify the various grounds upon which the appeal is taken, and must

be signed by the petitioner or appellant or by his attorney of record.

The period herein provided shall, in no case, exceed the maximum period

of four months from the mailing date of the action appealed from.

Rule 1105 Appellant’s Brief Required

In case of an appeal, the appellant shall, within two months, without

extension, from the date of filing of the notice of appeal, file a brief

of the authorities and arguments on which he relies to maintain his appeal.

On failure to file the brief within the time allowed, the appeal shall

stand dismissed.

Rule 1106 The Examiner’s Answer

The Examiner shall furnish a written statement in answer to the petition

or appellant’s brief, as the case may be, within two months from the order

of the Director directing him to submit such statement. Copy of such

statement shall be served on the petitioner or appellant by the Examiner.

Rule 1107 Appellant’s reply

In case of an appeal, the appellant may file a reply brief directed only

to such new points as may be raised in the Examiner’s answer, within one

month from the date copy of such answer is received by him.

Rule 1108 Appeal to the Director General

The decision or order of the Director shall become final and executory

fifteen days after receipt of a copy thereof by the appellant unless within

the said period, a motion for reconsideration is filed with the Director

or an appeal to the Director General has been perfected by filing a notice

of appeal and payment of the required fee.

Only one motion for reconsideration of the decision or order of the

Director shall be allowed.

Rule 1109 Appellant’s Brief Required

The appellant shall, within one month from the date of filing of the notice

of appeal, file a brief of the authorities and arguments on which he relies

to maintain his appeal. On failure to file the brief within the time

allowed, the appeal shall stand dismissed.

Rule 1110 Director’s Comment

The Director shall submit within one month his comments on the appellant’s

brief if so required by the Director General.

Rule 1111 Appeal to the Court of Appeals

The decision of the Director General shall be final and executory unless

an appeal to the Court of Appeals is perfected in accordance with the

Rules of Court applicable to appeals from decisions of Regional Trial

Courts. No motion for reconsideration of the decision or order of the

Director General shall be allowed.

FINAL PROVISIONS

Section 1 Correspondence

The following regulations shall apply to correspondence between

registrants/applicants and the Office or the Bureau:

(a) Business to be transacted in writing. All business with the Office

or Bureau shall be transacted in writing. Actions will be based

exclusively on the written record. No attention will be paid to any alleged

oral promise, stipulation, or understanding.

(b) Personal attendance of applicants and other persons unnecessary.

Unless otherwise provided, the personal attendance of applicants and

other persons at the Office is unnecessary. Their business can be

transacted by correspondence.

Office letters with respect to matters within the jurisdiction of the

Bureau must be sent in the name of the Director of Trademarks. All letters

and other communications intended with respect to such matters must be

addressed to him and if addressed to any other officer, they will

ordinarily be returned.

(d) Separate letter for each case. In every case, a separate letter shall

be written in relation to each distinct subject of inquiry.

(e) Letter relating to applications. When a letter concerns an application

it shall state the name of the applicant, the mark or trade name or name

or other mark of ownership sought to be registered, the application number

and the filing date of the application.

(f) Letters relating to registrations. When the letter concerns a

registered mark, it shall state the name of the registrant, the mark

registered, the number and date of the certificate of registration, and

the classes of goods or services according to the Nice Classification.

(g) Subjects on which information cannot be given. The Office cannot

respond to inquiries as to whether or not a mark is acceptable for

registration in advance of the filing of an application.

On the propriety of making an application for the registration of a mark,

the applicant must judge for himself or consult an attorney-at-law. The

Office is open to him, and its records pertaining to all registrations

granted may be inspected either by himself or by any attorney or agent

he may call to his aid. Further than this the Office can render him no

assistance until his application comes regularly before it in the manner

prescribed by law and by these Regulations. A copy of the law, rules,

or circular of information, with a section marked, set to the individual

making an inquiry of the character referred to, is intended as a respectful

answer by the Office.

Examiners’ digests are not open to public inspection. The foregoing shall

not, in any way, be interpreted to prohibit the Office from undertaking

an information dissemination activity in whatever format, to increase

awareness on the trademark law.

Section 2 Fees and Charges to be Prepaid; Fees and Charges Payable in

Advance

Express charges, freight, postage, telephone, telefacsimile including

cost of paper and other related expenses, and all other charges on any

matter sent to the Office must be prepaid in full. Otherwise, the Office

shall not receive nor perform any action on such matters.

The filing fees and all other fees and charges payable to the Office shall

be collected by the Office in advance of any service to be rendered.

Section 3 Applications pending on Effective Date of the IP Code

The following regulations shall apply to applications pending on the

effective date of the IP Code on January 1, 1998 (referred to in this

Section as “pending applications”):

Section 3.1 Amendment of Pending Applications

On or before December 15, 1998, all pending applications may be amended,

if practicable, to bring them under the provisions of the IP Code.

Accordingly, applicants with pending applications for registration in

the former Supplemental Register who wish to pursue the grant of

registration may amend their applications to comply with requirements

for registration under the IP Code.

Section 3.2 Filing Date of Pending Applications; Declaration of Actual

Use

Pending applications shall retain their priority date or original date

of filing with the Bureau of Patents Trademarks and Technology Transfer.

Applicants which elected to prosecute their applications under Republic

Act No. 166 and its Implementing Rules and Regulations under which they

were required to submit proof of use of the Mark, particularly with

reference to applications for registrations based on use in the

Philippines, shall file the corresponding declaration of actual use with

evidence to that effect as prescribed by these Regulations, without need

of any notice from the Office, within three years from the effectivity

of these Regulations, without possibility of extension. Otherwise, the

application shall be refused or the mark shall be removed from the register

by the Director motu prorio. [As amended by Office Order No. 17 (1998)]

Section 3.3 Processing of Pending Applications

Pending applications amended in accordance with this Section shall be

proceeded with and registration thereof granted in accordance with these

Regulations. Where there are no applicable provisions in the IP Code and

these Regulations, pending applications that are not amended in

accordance with this Section shall be proceeded with and registration

thereof granted in accordance with the laws and regulations under which

they were filed.

Section 3.3.1 Interference

In all cases where interference could have been declared under Republic

Act No. 166, as amended, and its implementing rules and regulations, as

amended, but the same can not be declared such as when one of the

applications has been amended and prosecuted under the IP Code while the

other application or applications were not, the application which first

meets all the requirements for registration shall be allowed and published

for opposition in the IPO Gazette in accordance with these Regulations.

The other applicant or applicants shall have the right to file a notice

of opposition, without need of paying the filing fee, to determine whether

or not any of the applicant/s and or oppositor/s has the right to the

registration of the mark, and, all other issues including the

registrability of the mark.

Section 3.4 Duration of Registration

A certificate of registration granted to an application filed on or before

December 31, 1997 and therefore pending on the effective date of the IP

Code on January 1, 1998 shall be subject to the same conditions for

maintenance as provided in these Regulations and shall have a term of

twenty years or ten years as follows:

(a) Twenty years, in the case of pending applications published for

opposition prior to the effectivity of these Regulations with respect

to which no notice of opposition was filed within the prescribed period

under Republic Act No. 166 of thirty days from release for circulation

of the corresponding Official Gazette (BPTTT or IPO) as certified by the

Caretaker/Officer-in-Charge or Director of the Bureau of Legal Affairs.

(b) Ten years, in the case of pending applications published for

opposition after the effectivity of these Regulations with respect to

which no notice of opposition is filed as certified by the

Caretaker/Officer-in-Charge or Director of the Bureau of Legal Affairs

in accordance with these Regulation.

or any other proceeding before the Office.

Section 3.5 Duration of Renewal of Registration Granted under Republic

Act No. 166

The renewal of a registration granted under Republic Act No. 166 shall

have the same term of ten years and shall be subject to the same

requirements for renewal as a registration granted under the IP Code.

Section 3.6 Abolition of the Supplemental Register

(a) In compliance with the state policy declared in the IP Code, the IPO

shall endeavor to issue certificates of registration that can stand up

to scrutiny in infringement and other cases. Considering that

(i) marks or trade names that are not registrable on the principal register

under Republic Act No. 166 are registrable in the Supplemental Register;

(ii) marks or trade names not registrable on the said principal register

are not registrable under the IP Code; and

(iii) the Supplemental Register was abolished by the IP Code,

all applications for registration in the Supplemental Register pending

upon effectivity of the IP Code shall be examined in accordance with the

IP Code and such applications which do not meet requirements for

registration under the IP Code shall be rejected. [as amended by Office

Order No. 40 (2002)]

(b) Release of Certificates of Registration of Applications in the

Supplemental Register Allowed Prior to Effectivity of the IP Code. A

Certificate of registration may be released covering an application for

registration in the Supplemental Register provided that all the following

requirements occurred prior to the effectivity of the IP Code, i.e. on

or before 31 December 1997:

(1) such application had been allowed and the allowance was approved by

Atty. Rosario N.E. Macatangay, Chief of the Trademark Examining Division

of the then Bureau of Patents Trademarks and Technology Transfer as

evidenced by the original copy of the Allowance in the file wrapper of

the application;

(2) Notice of Issuance of Certificate of Registration had been issued

as evidenced by the original copy of the Notice in the file wrapper of

the application or the applicant’s original copy thereof, and

(3) all the required fees were fully paid for by the applicant as evidenced

by the original copy of the Official Receipt, a photocopy of which shall

be submitted by the applicant to the Bureau for inclusion in the

corresponding file wrapper. The Registration shall remain in force for

twenty years from the date of allowance, without possibility of renewal,

and subject to compliance with all the requirements for maintenance of

the registration. The mark shall be published in the IPO Gazette and may

be subject to cancellation on grounds provided under the law. [as amended

by Office Order No. 40 (2002)]

Section 3.7 Renewal of a Registration in the Supplemental Register

The following regulations shall apply to the renewal of a registration

in the Supplemental Register under Republic Act No. 166:

Section 3.7.1 Registrations Subsisting on January 1, 1998

The registration, or extension thereof, in the Supplemental Register

under Republic Act No. 166 of a trade name or mark which was subsisting

on the effectivity of the IP Code on January 1, 1998 shall remain in force

for the entire term for which it was granted. However, such registration

shall no longer be subject to renewal.

Section 3.7.2 Registrations, or Extension Thereof, with Term Ending on

or Before December 31, 1997

The renewal of a registration, or any extension thereof, in the

Supplemental Register whose term ended on or before December 31, 1997

may be granted as follows:

(a) The application for renewal of registration in the Supplemental

pursuant to Section 15 of Republic Act No. 166 and the applicable

regulations;

(b) Full compliance with all the requirements for renewal shall have been

made by the applicant on or before December 31, 1998;

of expiration of the registration or renewal subject of the application;

and,

(d) The renewal herein granted shall no longer be subject to renewal.

Section 3.7.3 Notice to Comply

For the effective implementation of Section 3.7.2(b), all concerned

examiners together with the Chief of the Trademark Examining Division

of the former Bureau of Patents Trademarks and Technology Transfer have

been directed to mail to the applicants the corresponding notice to comply

with requirements for renewal of registration, or extension thereof, on

or before October 31, 1998. Further, applicants who have not received

said notice may request for a copy thereof from the examiner concerned

who shall issue said copy within two working days from receipt of the

request.

Section 4 Repeals

All rules and regulations, memoranda, circulars, and memorandum

circulars and parts thereof inconsistent with these Regulations

particularly the Rules of Practice in Trademark Cases, as amended, are

hereby repealed; Provided that such earlier rules or parts thereof shall

be continued only for the purpose of prosecuting applications for

registration in the principal register filed as of December 31, 1997

wherein the applicants expressly elected to prosecute said applications

under Republic Act No. 166; and, Provided, further, that there are no

applicable provisions in these Regulations.

Section 5 Separability

If any provision in these Regulations or application of such provision

to any circumstance is held invalid, the remainder of these Regulations

shall not be affected thereby.

Section 6 Effectivity

These rules and regulations shall take effect fifteen days after

publication in a newspaper of general circulation.

Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of December 1, 1998 (as amended up to Office Order No. 49 of 2006), Philippines

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