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)
Letter relating
to registrations. When the letter concerns a registered mark,
it shall state the name of the registrant, the mark registered, the
number
and date of the certificate of registration, and the classes of goods
or
services according to the Nice Classification.
(g)
Subjects on
which information cannot be given. The Office cannot respond
to inquiries as to whether or not a mark is acceptable for registration
in advance of the filing of an application.
On the propriety of
making an application for the registration of a mark, the applicant
must
judge for himself or consult an attorney-at-law. The Office is
open
to him, and its records pertaining to all registrations granted may be
inspected either by himself or by any attorney or agent he may call to
his aid. Further than this the Office can render him no
assistance
until his application comes regularly before it in the manner
prescribed
by law and by these Regulations. A copy of the law, rules, or
circular
of information, with a section marked, set to the individual making an
inquiry of the character referred to, is intended as a respectful
answer
by the Office.
Examiners' digests
are not open to public inspection.
The foregoing shall
not, in any way, be interpreted to prohibit the Office from undertaking
an information dissemination activity in whatever format, to increase
awareness
on the trademark law.
Section
2.
Fees and charges to be prepaid; fees and charges payable in
advance.
Express charges, freight, postage, telephone, telefacsimile
including
cost of paper and other related expenses, and all other charges on any
matter sent to the Office must be prepaid in full.
Otherwise,
the Office shall not receive nor perform any action on such
matters.
The filing fees and
all other fees and charges payable to the Office shall be collected by
the Office in advance of any service to be rendered.
Section 3. Applications
pending on effective date of the IP Code. The following
regulations
shall apply to applications pending on the effective date of the IP
Code
on January 1, 1998 (referred to in this Section as “pending
applications”):
Section 3.1.
Amendment of pending applications. On or before December 15,
1998, all pending applications may be amended, if practicable, to bring
them under the provisions of the IP Code. Accordingly, applicants with
pending applications for registration in the former Supplemental
Register
who wish to pursue the grant of registration may amend their
applications
to comply with requirements for registration under the IP Code.
Section
3.2.
Filing date of pending applications; declaration of actual use. Pending
applications shall retain their priority date or original date of
filing
with the Bureau of Patents Trademarks and Technology Transfer.
Applicants
which elected to prosecute their applications under Republic Act No.
166
and its implementing rules and regulations under which they were
required
to submit proof of use of the mark, particularly with reference to
applications
for registration 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
(3) years from the effectivity of these Regulations, without
possibility
of extension. Otherwise, the application shall be refused or the mark
shall
be removed from the register by the Director motu proprio.
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 (20) years.
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 (10) years and shall be subject to the same
requirements
for renewal as a registration granted under the IP Code.
Section 3.6.
Registration
in the Supplemental Register. 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 which do not meet
requirements
for registration under the IP Code shall be rejected.
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 (20) 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 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 (2) 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 (15) days after publication in a newspaper of general
circulation.
Done this
____ day
of _____________ 1998.
APPROVED:
EMMA C.
FRANCISCO
Director General
As
Amended by Office Order No. 17 dated 01 December 1998.
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