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
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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
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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
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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
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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
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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;
(c) “Competent authority” for purposes of determining whether a mark is
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;
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(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;
(c) Consists of a name, portrait or signature identifying a particular
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
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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
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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;
(c) the degree of the inherent or acquired distinction of the mark;
(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.
(c) The remedies provided for cancellation and infringement of marks in
Sections 153 to 156 and Sections 166 and 167 of the IP Code shall apply
to trade names mutatis mutandis.
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(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.
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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.
(c) The country of origin of the applicant is the country in which he
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
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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
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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)]
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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
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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.
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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;
(c) The name of a State of which the applicant is a national or where
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
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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.
(c) The provisions of this Rule shall, however be construed liberally
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
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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
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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.
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(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
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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
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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
22
(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.
(c) The divisional applications must be submitted before examination of
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
23
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.
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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;
(c) Indications sufficient to contact the applicant or his representative,
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.
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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.
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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.
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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
28
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
29
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
30
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.
(c) There shall be no revival of an abandoned application that has been
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.
31
(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.
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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.
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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.
34
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.
35
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.
36
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
37
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.
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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
39
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.
(c) A copy of the certificate of correction shall be attached to each
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.
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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
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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
42
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.
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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”;
(c) The registration number of the registration concerned;
(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,
44
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.
45
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.
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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.
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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,
48
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
49
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.
50
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.
(c) Correspondence to be in the name of the Director of Trademarks. All
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
51
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
52
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
53
in accordance with these Regulation.
(c) Ten years, in the case of pending applications subject of opposition
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
54
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
Register was seasonably filed including full payment of the required fee
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;
(c) The renewal shall be for a term of twenty years counted from the date
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
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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.