PART 6 PROCEEDINGS IN THE EXAMINATION
OF AN APPLICATION FOR
REGISTRATION
CHAPTER
1. NATURE OF THE PROCEEDINGS
Rule
600. Application prosecuted ex parte;
protests. An application for registration is
prosecuted
ex parte by the applicant; that is, the proceedings are like a lawsuit
in which there is a plaintiff (the applicant) but no defendant, the
court
itself (the Examiner) acting as the adverse party.
No
attention shall be paid to ex parte statements
or protests of persons concerning pending applications to which they
are
not parties, unless information of the pendency of these applications
shall
have been voluntarily communicated by the applicants.
Rule 601. Proceedings a contest
between
Examiner and the Applicant. An ex parte
proceeding in the Office for the registration of a mark is a law
contest
between the Examiner, representing the interest of the public and the
applicant
(or his attorney), representing his own private interests.
Rule 602. Applicant supposed to look
after
his own interests. The Office, represented by the
Examiner, is not supposed to look after the interest of an applicant.
The
law imposes that duty upon the applicant himself. The Examiner is
charged
with the protection of the interests of the public and hence must be
vigilant
to see that no registration issues for a mark contrary to law and these
Regulations.
Rule 603. Preliminary adverse action
of
the Examiner valuable to Applicant. The positive
value of a preliminary adverse action of the Examiner should be fully
appreciated
by the applicant or his attorney. A hard-fought application will
produce
a registration much more likely to stand in court than a registration
which
has slid through the Office easily. The reason for this is that every
point
raised by the Examiner and finally decided by the Office in favor of
the
applicant will give the applicant a prima facie standing on that point
in court. The Office is empowered by law to pass upon applications for
registration and, because of the authority vested in it, its decisions
with respect to the grant of a registration, or on any point connected
with it, are presumed to be correct by the courts.
Rule 604. A preliminary rejection
should
not be taken literally; Examiner is only trying to be helpful.
A preliminary rejection by the Examiner is never to be taken literally.
An applicant should remember that the Examiner may not be actually
rejecting
his application. The Examiner may in fact be quite prepared to admit
the
application, and is only trying to give the applicant a chance to
explain
away some reference or some difficulty rather than have him wait until
the registration is granted and become involved in a litigation, when
it
may then be difficult for him to make the explanation.
CHAPTER 2. MANNER OF
EXAMINATION
OF AN APPLICATION FOR REGISTRATION; ACTION BY THE EXAMINER; RESPONSE BY
THE APPLICANT; ABANDONMENT; REVIVAL.
Rule 605. Order of examination;
priority
of action. 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 or
the
priority date of the application bearing the higher number is earlier
than
those bearing a lower number.
Rule 606. Jurisdiction of the
Examiner.
The Examiners shall have original jurisdiction over the examination of
all applications for registration and over their allowance for
publication
in the IPO Gazette for purposes of opposition. Their decision, when
final,
shall be subject to petition and appeal to the Director. Applicants,
their
attorneys or agents shall take up the problems arising from their
pending
applications only with the respective Examiners in charge and with no
other
person in the Office.
Rule 607. Examination of the
application;
action by the Examiner. (a) If, after the examination,
the applicant is found not entitled to registration for any reason, he
will be so notified by the Examiner. He will be advised of the reasons
therefor and of any formal requirements or objections, and he will be
given
such information and references as may be helpful to him in the further
prosecution of his application.
(b) All
Examiners are required to include all
grounds of objection existing at the time of the issuance of an action
in that action. Piece meal action shall be prohibited.
Rule 608. Deletion and/or disclaimer
may
be required. The Examiners may require unregistrable
matter
to be deleted from the Drawing or disclaimed in the application, but
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.
The
basic purpose of disclaimers is to make
of record, that a significant element of a composite mark is not being
exclusively appropriated by itself apart from the composite. The
following
portions of a mark when comprising less than the entire 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.
Rule 609. Interview with the
Examiners:
when no interview is permitted. Interviews with Examiners
concerning
applications pending before the Office can be held only upon written
request
specifying the query he would want to propound and after payment of the
required fee, but in respect of which the Examiner has the discretion
to
grant the interview or instead reply to the query in writing. The
interview
shall take place within the premises of the Office and during regular
office
hours as specified by the Examiner. All interviews or conferences
with Examiners shall be reduced to writing and signed by the Examiner
and
the applicant immediately after the conference. Such
writing
shall form part of the records of the Office. Interviews for the
discussion of pending applications shall not be held prior to the first
official action thereon.
Rule 610. Period for response,
action by
applicant. The applicant has two (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
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 (24) 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 such communication and the payment of
the cost herein provided must be received by the Office within one (1)
month from date of receipt of the telefacsimile. Otherwise, the
communication
shall be deemed withdrawn and expunged from the records. In all
cases,
the burden of proof lies on the applicant that such documents have been
received by the Office.
Rule 612. Re-examination.
After response by the applicant, the application will be re-examined or
reconsidered by the Examiner, and if the registration is again refused
or formal requirements insisted upon, but not stated to be final, the
applicant
may respond again.
Rule 613. Final action.
On the first or any subsequent re-examination or reconsideration, the
Examiner
may state that the refusal of the registration or the insistence upon a
requirement is final. Thus, the applicant’s recourse is limited
to
an appeal to the Director or to a compliance with the requirement made
by the Examiner.
Rule 614. Abandonment; incomplete
response.
If an applicant fails to respond, or to submit a complete response,
within
the period given counted from the mailing date of an action of the
Examiner,
the application shall be deemed abandoned as of the day immediately
following
the last day of the aforesaid period.
Rule 615. Revival of abandoned
application.
(a) An abandoned application may be revived as a pending
application
within three (3) 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 (1) month from the mailing date of the
examiner’s
action whenever such shorter time is deemed necessary or
expedient.
Unless the applicant is notified in writing that response is required
in
less than four months, a maximum period of four months is allowed.
(b)
The time for reply, when a time less
than four months has been set, will be extended only for good and
sufficient
cause and for a reasonable time specified. Any request for such
extension
must be filed on or before the day on which the response of the
applicant
is due. In all cases, the maximum time within which to submit a
response
to an action shall not exceed four months from the mailing date of the
action.
Rule 617. Suspension of action
by
the Bureau. Action by the Bureau may be suspended upon
written request of the applicant for good and sufficient cause, for a
reasonable
time specified and upon payment of the required fee. The Examiner
may grant only one suspension, and any further suspension shall be
subject
to the approval of the Director. An Examiner’s action, which is
awaiting
a response by the applicant, shall not be subject to suspension.
Rule 618. Provisional
Allowance.
If the only issue remaining in an application based on foreign
application
claiming priority right is the submission of a certified copy of the
foreign
or home registration, the Examiner may provisionally allow the
application
and suspend the submission of the certified copy of the foreign or home
registration for a period not exceeding twelve (12) months counted from
allowance. On request of the applicant and subject to the approval of
the
Director and payment of the required fee, said twelve month period may
be extended for good cause by an additional period not exceeding twelve
(12) months. Should the applicant fail to submit the certified
copy
of the foreign or home registration within the maximum period of twenty
four (24) months counted from allowance, the applicant may waive his
claim
to priority right in writing and request that the application be
considered
based on intent to use. Said waiver and request shall be filed
within
two (2) months, without extension, counted from the expiration of the
maximum
twenty four (24) month period without need of any notice from the
Office.
Otherwise, the application shall be deemed forfeited. The
declaration
of actual use shall be filed within twelve (12) months, without
extension
and without need of notice, counted from expiration of the twenty four
(24) month period. Otherwise, the application shall be refused by
the Director motu proprio.
Rule 619. Express
abandonment.
An application may be expressly abandoned by filing with the Bureau a
written
declaration of abandonment signed by the applicant himself or by the
assignee
of record.
CHAPTER 3. AMENDMENTS TO THE
APPLICATION;
RESPONSE TO OBJECTIONS OF THE EXAMINER.
Rule 620. Amendments to the
application.
The application may be amended to correct formalities, to
overcome
objections made by the Examiner, or for other reasons arising in the
course
of examination.
Rule 621. Amendments to description
or
drawing. Amendments to the description or drawing
of the mark may be permitted only if warranted by the mark as shown on
the labels originally filed, but may not be made if the nature of the
mark
is changed thereby.
Rule 622. Manner of making the
amendment.
In every amendment the exact word or words to be stricken out or
inserted
must be specified and the precise point indicated where the erasure or
insertion is to be made. All such amendments must be on sheets of paper
separate from the papers previously filed, and written on only one side
of the paper.
Rule 623. Prohibition against
marking of
papers or records of the Office by applicants. The applicant
or his representative shall not make any erasure, addition, insertion,
or mutilations of any papers or records of the Office.
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