PART
9 OTHER
PROCEEDINGS AFFECTING
THE
APPLICATION OR REGISTRATION
CHAPTER 1.
VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER BY THE
REGISTRANT
OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES.
Rule 900. Jurisdiction
of the Examiner. The Examiner shall have original jurisdiction
over
all matters relating to voluntary surrender, voluntary cancellation,
voluntary
amendment, and voluntary disclaimer of registration, and his decisions,
when final, shall be subject to appeal to the Director in the
same
manner that final decisions of the Examiners in respect of applications
for registration may be appealed to the Director. In all such
matters,
registrants or assignees, their attorneys or agents will deal with him
exclusively, or with such other officials and employees whom the
Director
may designate to assist him.
Rule 901. Cancellation
upon application by registrant. Upon application of the
registrant,
the Office may permit any registration to be surrendered for
cancellation,
and upon cancellation the appropriate entry shall be made in the
records
of the Office. The application for cancellation of registration
shall
be under oath and shall be duly authenticated or legalized if the
registrant
is a non-resident.
Rule
902.
Amendment or disclaimer of registration. (a)
Upon application
of the registrant and payment of the prescribed fee, the Office, for
good
cause, may permit any registration to be amended or to be disclaimed in
part: Provided, That the amendment or disclaimer does not alter
materially
the character of the mark. Appropriate entry shall be made in the
records of the Office upon the certificate of registration or, if said
certificate is lost or destroyed, upon a certified copy thereof.
(b) Upon application
of the registrant and payment of the prescribed fee, a replacement
certificate
may be issued by the Office stating on its face the fact that it is a
replacement
and bearing the same entry regarding the amendment or disclaimer
that was made on the certified copy of a lost or destroyed
certificate.
A duplicate original of such replacement certificate shall be kept in
the
records of the Office.
Rule
903.
Correction of mistakes made by the Office.
Whenever
a material mistake in a registration incurred through the fault of the
Office is clearly disclosed by the records of the Office, a certificate
stating the fact and nature of such mistake shall be issued without
charge,
recorded and a printed copy thereof shall be attached to each printed
copy
of the registration. Such corrected registration shall thereafter
have the same effect as the original certificate; or in the discretion
of the Director of the Administrative, Financial and Human Resource
Development
Service Bureau a new certificate of registration may be issued in
accordance
with these Regulations and without charge. All certificates of
correction
heretofore issued and the registration to which they are attached shall
have the same force and effect as if such certificates and their
issuance
had been authorized by the IP Code.
Rule 904.
Corrections of mistakes made by applicant. (a) Whenever
a mistake is made in a registration and such mistake occurred in good
faith
through the fault of the applicant, the Office may issue a certificate
upon the payment of the prescribed fee: Provided, That the correction
does
not involve any change in the registration that requires republication
of the mark.
(b) The application
for correction must be under oath and must specify the mistake for
which
correction is sought, the manner in which it arose and must state that
it occurred in good faith.
(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.
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 transf*er 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. (a) The
assignment of
the application for registration of a mark, or of its registration,
shall
be notarized and require the signature of the applicant, registrant or
the assignee of record in case of subsequent assignment.
Transfers
by mergers or other forms of succession may be evidenced by the deed of
merger or by any document supporting such transfer.
Rule
908.
Recordal of assignment or transfer. Assignments and
transfers
shall have no effect against third parties until they are recorded at
the
Office. Assignments and transfers of registration of marks shall
be recorded at the Office on payment of the prescribed fee; assignment
and transfers of applications for registration shall, on payment of the
same fee, be provisionally recorded, and the mark, when registered,
shall
be in the name of the assignee or transferee.
Rule 909. Assignment,
other instruments affecting the registration, or license, and
translation,
to be submitted in duplicate. The original document of
assignment,
other instrument or license and its translation, together with a signed
duplicate thereof, shall be submitted. After recordal, the Office
shall retain the signed duplicate, and return the original to the party
filing the instrument with a notation of the fact of recording.
Rule
910.
Date of receipt of instrument to be recorded considered its
date of
recording. The date of recording of an assignment, other
document
or license is the date of its receipt at the Office in proper form and
accompanied by the full recording fee.
Rule 911. A
new
certificate of registration must be issued to assignee.
Upon written request of an assignee of record, and upon payment of the
required fee, a new certificate of registration for the unexpired
period
of the registration must be issued to the assignee.
Rule 912. Action
may be taken by assignee of record in any proceeding in
Office.
Any action in any proceeding in the Office which may or must be
taken
by a registrant or applicant may be taken by the assignee to the
exclusion
of the original owner, registrant, applicant or earlier assignee,
provided
the assignment has been recorded. Unless such assignment has been
recorded, no assignee will be recognized to take action.
Rule
913.
Clearance of Trademark License Agreement prior to
recordal.
Any trademark
license
agreement shall be applied for clearance with the Documentation
Information
and Technology Transfer Bureau (DITTB) of the Office and shall be
recorded
only upon certification by the Director of the DITTB that the agreement
does not violate Sections 87 and 88 of the IP Code.
Rule
914.
Division of registration. At any time during the
life of a
certificate of registration, and upon payment of the required fee, the
owner of the registered mark may request in writing and under oath that
the registration be divided. The request must state the name and
address of the owner of record or his representative of record, the
mark,
the number and date of issuance of the certificate to be divided, the
goods
and/or services into which the registration is to be divided specifying
the number of the class of said goods and/or services according to the
Nice Classification.
The Bureau may grant
the request to divide the registration provided that the division shall
not involve any change in the registration that requires republication
of the mark and provided that a single class shall not be
subdivided.
Rule
915.
Cancellation of original certificate and issuance of transfer
certificates
of registration. Upon approval of the request to divide a
registration
and payment of the required fee, the Director shall order that the
original
certificate be cancelled and new certificates of registration be issued
for the remainder of the term covered by the original certificate.
Rule
916.
Contents of transfer certificates of registration.
The transfer
certificates of registration shall include a reproduction of the mark
and
shall mention their numbers, the name and address of the registered
owner,
and if the registered owner’s address is outside the country, his
address
for service within the country; the name of the registered owner of the
original certificate in case the owner of the transfer certificate be a
different person; the date of request for division of the original
registration;
the date of the issuance of the transfer certificate of registration;
the
date of filing and registration of the original registration; if
priority
is claimed, an indication of this fact, and the number, date and
country
of the application which is the basis of the priority claims; the list
of goods or services covered by the transfer certificate of
registration
with the indication of the corresponding class or classes; and such
other
data as the Regulations may prescribe from time to time.
CHAPTER
3.
RENEWAL OF REGISTRATION
Rule
917.
Request for renewal. A certificate of
registration may
be renewed for periods of ten (10) 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; and
(g) A
signature by
the right holder or his representative.
(h) In
case there
has been material variation in the manner of display, five (5) 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 (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 on
payment
of the additional fee herein prescribed.
Rule 919. Jurisdiction
of the Examiner. The Examiner shall have original
jurisdiction
over applications for renewal registration, and his decisions, when
final,
are subject to appeal to the Director under the conditions specified in
these Regulations for appeals to the Director from the final decisions
of the Examiners in respect of applications for registration. If the
Office
refuses to renew the registration, it shall notify the registrant of
his
refusal and the reasons therefor.
Rule 920. Need
for appointing a resident agent. If the registrant, assignee
or other owner of the mark which is the subject of a petition for
renewal
registration is not domiciled in the Philippines, and if the
petition
for renewal is being filed by a person who is not his representative or
resident-agent of record, the power of attorney appointing the person
filing
the petition as the representative of the registrant must be filed and,
upon payment of the required fee, must be recorded before the Office
can
act upon the petition for renewal.
Rule 921. Renewal
of prior Act registration; use and proof thereof, required.
Marks registered under Republic Act No. 166 shall remain in force and
effect
but shall be deemed to have been granted under the IP Code and shall be
renewed within the time and manner provided for renewal of registration
by these Regulations; provided, that marks whose registration have a
remaining
duration as of January 1, 1998 of more than six and one-half (6
½)
years shall be required to submit the declaration and evidence of
actual
use prescribed in these Regulations within one (1) 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 (6 ½) 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 (10) years. Trade names and marks
registered in the Supplemental Register under Republic Act No.
166
whose registration, including any renewal thereof, was subsisting as of
January 1, 1998 shall remain in force but shall no longer be subject to
renewal.
Rule
922.
Prior Act certificate of registration to be surrendered.
With
the application for the renewal of a registration made under Republic
Act
No. 166 the certificate of registration to be renewed must be
surrendered
to the Office, if the official copy of such certificate of registration
is not in the files of the Office.
After he has surrendered
the certificate of registration granted under Republic Act No. 166, the
applicant for renewal may, if he so desires, obtain a certified copy
thereof,
upon payment of the usual fees.
Rule
923.
Refusal of renewal registration; appeal to the Director.
The
application for renewal may be refused by the Examiner for any valid
reason.
The application for renewal may then be completed or amended in
response
to the refusal, or the case may be appealed to the Director if the
refusal
has become final.
Rule
924.
Certificate of renewal of registration. The Office
may issue
a certificate of renewal of registration in all cases where the request
for renewal is approved and the registrant requests in writing and pays
the required fee for the issuance of said certificate. The
certificate
of renewal of registration shall contain the number of the certificate
of registration and the mark being renewed, the date of original
issuance
thereof, the duration of the renewal registration, all the data
required
to be contained in a certificate of registration provided in these
Regulations
including any limitation contained in the order of the Director
approving
the renewal of the registration.
|