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Series of 2017
PART 1
REGISTRATION OF TRADEMARKS AND SERVICE MARKS
(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;
(g) "IP Code" means Republic Act No. 8293 otherwise known as the
Intellectual Property Code of the Philippines;
(h) "IPO eGazette" means the Intellectual Property Office's own electronic
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;
(k) "Regulations" mean these 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;
(h) Consists exclusively of signs that are generic for the goods or
services that they seek to identify;
The nature of the goods or services to which the mark is applied will not
constitute an obstacle to registration.
(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 applies;
(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.
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 likely to mislead the public,
particularly as regards the nature, source, manufacturing process,
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characteristics, or suitability for their purpose, of the goods and/or services to
which the mark is applied.
PART 2
RIGHT TO A MARK
RULE 200. How Marks are Acquired. The rights in a mark shall be
acquired through registration made validly in accordance with the law.
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
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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 204. Declaration of Actual Use. The Office will not require any proof
of use in commerce upon the filing of an application. All applicants or
registrants shall file a Declaration of Actual Use (DAU) of the mark with
evidence to that effect and upon payment of the prescribed fee on the following
periods:
(a) Within three (3) years from filing date of the application;
(b) Within one (1) year from the fifth anniversary of the registration;
(c) Within one (1) year from date of renewal;
(d) Within one (1) year from the succeeding fifth anniversaries after
each renewal (i.e. 15th year, 25thyear, 35th year and so on).
For the third anniversary of the filing date, a six (6)-month extension
period may be granted upon request of the applicant or registrant, provided
such request is made prior to the expiration of the three-year period and the
required fee is paid. Actual use of the mark may commence within the
extension period. The fee must be paid on the day of the filing of the DAU or the
request for extension of time to file the document. The date of payment shall be
considered as the date of filing of the DAU.
The applicant or registrant may include other facts to show that the
mark described in the application or registration is being actually used in the
Philippines.
Actual use for some of the goods and services in the same class shall
constitute use for the entire class of goods and services. Actual use for one
class shall be considered use for related classes. In the event that some classes
are not covered in the declaration, a subsequent declaration of actual use may
be filed for the other classes of goods or services not included in the first
declaration, provided that the subsequent declaration is filed within the three-
year period or the extension period, in case the extension of time to file the
declaration was timely made. In the event that no subsequent declaration of
actual use for the other classes of goods and services is filed within the
prescribed period, the classes shall be automatically dropped from the
application or registration without need of notice to the applicant or registrant.
The Director may, from time to time, issue a list of acceptable evidence of
use and those that will not be accepted by the Office.
(a) where the applicant or registrant is prohibited from using the mark
in commerce because of a requirement imposed by another
government agency prior to putting the goods in the market or
rendering of services;
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(b) where a restraining order or injunction was issued by the Bureau of
Legal Affairs, the courts or quasi-judicial bodies prohibiting the use
of the mark; or
(c) where the mark is the subject of an opposition or cancellation case.
(a) Within three (3) years from filing date of the application. However a
six (6)-month extension period may be granted upon request of the
applicant or registrant made prior to the expiration of the three-year
period and the required fee is paid; and
(b) If the non-use continues, on or before the fifth anniversary of the
date of the registration of the mark.
In no case shall non-use of mark be allowed under this rule for a total of
more than six (6) years. For this purpose, actual use must commence and DAU
filed within one (1) year from the 5th anniversary of registration, otherwise, the
Office shall remove the mark from the Register.
The ANU shall be under oath and shall clearly state the facts prohibiting
the actual use of the mark in commerce. The corresponding fee must also be
paid upon filing of the declaration.
PART 3
WHO MAY APPLY FOR A MARK
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.
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RULE 304. Power of Attorney or Authorization. At the time of filing of an
application, no power of attorney or authorization is required. However, the
Office may require any attorney or other recognized person to submit within two
(2) months 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.
PART 4
TRADEMARK APPLICATION
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(e) the appointment of a resident agent or representative, with power of
attorney as may be required by the Examiner, 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,
indicating the following:
(i) 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;
(ii) the date on which the earlier application was filed; and
(iii) where available, the application number of the earlier
application;
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. Reproductions of the Mark. One (1) reproduction of the mark
shall be submitted upon filing of the application which shall be substantially
exact representation thereof as actually used or intended to be used on or in
connection with, the goods and/or services of the applicant. The reproduction
may be made on an ordinary bond paper. They must be printed in black ink or
in color, if colors are claimed, and must be capable of being satisfactorily
reproduced when published in the IPO e-gazette. Electronic copy of the
reproduction may likewise be submitted in lieu of the printed reproduction. The
electronic reproduction should be saved in .jpg format and must not exceed one
(1) megabyte.
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A typed reproduction of the mark 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.
RULE 405. Nice Classification. The applicant must indicate the names of
the goods and/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. The applicant shall refer to the current edition of the Nice
Classification as may be published by the World Intellectual Property
Organization (WIPO) from time to time.
The Office shall adopt the current edition of the Nice Classification and
observe the same for all pending applications.
RULE 406. 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 407. Single Registration for Goods and/or Services. One (1)
application may relate to several goods and/or services, whether they belong to
one (1) 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 (1) application, such an application shall result in one
registration.
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:
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
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(e) 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;
(f) 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;
(g) Domain names (as service mark); and
(h) Trademarks, service marks, and tradenames used or to be used in
Information and Communications Technology (ICT) infrastructure.
Such disclaimer shall not prejudice or affect the applicants rights then
existing under some other law or thereafter arising in the disclaimed matter,
nor shall such disclaimer prejudice or affect the applicants rights to
registration on another application of later date, where the disclaimed matter
has become distinctive of the applicants goods, business or services.
RULE 607. Period for Response, Action by Applicant. The applicant has
two (2) 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 (4) months from the
mailing date of the Examiners action requiring the response.
RULE 613. Time Less than Four Months; When Request for Extension
Should be Made. The applicant may be required to prosecute his application
in a time shorter than four (4) months but not less than one (1) month from the
mailing date of the Examiners 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 (4) months, a maximum period of four months is
allowed.
The time for reply, when a time less than four (4) 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 (4) months
from the mailing date of the action.
The Examiner shall verify whether or not the mark has been registered
from the online trademarks database of the foreign IP Office where the
application was filed. If the foreign application has been registered, the allowed
mark shall be published for opposition upon payment of the required fees.
If the foreign application has not been registered at the time of allowance
or if the foreign IP Office does not have an online trademarks database, the
Examiner shall, in the Notice of Allowance and Deferment, require the applicant
to submit a photocopy of the foreign registration within six (6) months from
mailing date of such notice. Upon request of the applicant and subject to the
payment of the required fee, the period to submit a copy of the foreign
registration may be extended for a period of one (1) year, counted from the
expiry of the initial period of six (6) months. If the applicant does not request
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an extension or is unable to submit a copy of the foreign registration within the
extension period, the claim to the right of priority shall be deemed waived. The
application will thereafter be published for opposition upon payment of the
required fees.
PART 7
PUBLICATION, ALLOWANCE AND ISSUANCE OF
CERTIFICATE OF REGISTRATION
The applicant shall, within two (2) months from mailing date of such
notice, pay the corresponding fee for the publication of the application in the
IPO eGazette; otherwise, the application shall be declared abandoned. The
abandoned application, however, may be revived subject to the requirements
specified in of these Regulations.
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The jurisdiction of an Examiner over an application ceases after the
Director has ordered the mark to be published for opposition.
If the payment for the issuance of Certificate of Registration has not been
paid, the Examiner shall send a notice thereof to the applicant. The applicant
shall pay the corresponding fee for the issuance of the Certificate of Registration
within two (2) months from mailing date of the notice; otherwise the application
shall be declared abandoned. The abandoned application, however, may be
revived subject to the requirements of these Regulations.
PART 8
EFFECT AND NOTICE OF REGISTRATION
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RULE 800. Rights Conferred. The owner of a registered mark shall have the
exclusive right to prevent all third parties not having the owners 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.
RULE 900. 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 901. 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 903. Use of Indications by Third Parties for Purposes other than
those for which the Mark is Used. Registration of the mark shall not
confer on the registered owner the right to preclude third parties from using
bona fide their names, addresses, pseudonyms, a geographical name, or exact
indications concerning the kind, quality, quantity, destination, value, place of
origin, or time of production or of supply, of their goods or services: Provided,
That such use is confined to the purposes of mere identification or information
and cannot mislead the public as to the source of the goods or services.
PART 10
VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT,
DISCLAIMER BY THE REGISTRANT OR BY ASSIGNEE OF RECORD,
CORRECTION OF MISTAKES
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RULE 1002. Amendment or Disclaimer of Registration. Upon request of
the registrant or its representative, 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 and the Certificate of Registration or, if said certificate is
lost or destroyed, on a certified copy thereof.
The petition 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. A copy of the certificate of correction shall
be attached to each copy of the registration.
PART 11
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RULE 1100. 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.
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owner of the registered mark may request in writing and under oath that the
registration be divided. The request must state the following:
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.
PART 12
RENEWAL OF REGISTRATION
RULE 1201. When to File Request for Renewal. Request for renewal may
be made at any time within six (6) months before the expiration of the period for
which the registration was issued or renewed, or it may be made within six (6)
months after such expiration upon payment of the additional fee as prescribed.
After the surrender of the Certificate of Registration granted under Republic Act
No. 166, the applicant for renewal may, if he/she so desires, obtain a certified
copy thereof, upon payment of the appropriate fees.
PART 13
PETITIONS AND APPEAL
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 1302. 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
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considered as final by the applicant, petitioner, or registrant for purposes of
appeal.
RULE 1306. The Examiner's Answer. The Examiner shall submit his/her
written statement in answer to the appellants brief within two (2) months from
the order of the Director directing him/her to submit such answer. The
appellant shall be furnished a copy of such answer.
RULE 1308. Appeal to the Director General. The decision or order of the
Director shall become final and executory thirty (30) 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 memorandum on appeal and payment of the
required fee.
Only one (1) motion for reconsideration of the decision or order of the Director
shall be allowed.
PART 14
MISCELLANEOUS PROVISIONS
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RULE 1400. 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 herein after referred to in this Rule as "pending
applications":
(b) Filing Date of Pending Applications. - Pending applications shall retain their
priority date or original date of filing with the Bureau of Patents
Trademarks and Technology Transfer.
(d) 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.
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RULE 1403. 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:
RULE 1405. Repeals. All rules and regulations, orders, circulars and
memoranda or parts thereof inconsistent with these Regulations are hereby
repealed or modified accordingly.
RULE 1407. Effectivity. These Regulations shall take effect fifteen (15)
days after publication in a newspaper of general circulation.
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