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 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 claiming priority right must be filed within six (6) months
from the date the earliest foreign application was filed. A
certified
copy of the corresponding foreign application together with an English
translation must filed within three (3) months from the date of filing
in the Philippines.
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 not more than 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
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, specifying the nature of
such
use, attaching certified or original copies of purchase orders, sales
invoices,
official receipts, stating the volume of sales during the fiscal year
immediately
preceding the filing of the declaration, furnishing copies of printed
advertisement
and other proofs of advertising with a statement of the
advertising
cost in the immediately preceeding fiscal year as shown in the
corresponding
audited financial statements where applicable, or income tax returns in
all cases. The declarant should also 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.
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