TO A MARK
How Marks are Acquired. The rights in a mark shall
through registration made validly in accordance with the law.
International Conventions and Reciprocity. (a)
who is a national or who is domiciled or has a real and effective
establishment in a country which is a party to any convention, treaty
agreement relating to intellectual property rights or the
of unfair competition, to which the Philippines is also a party, or
reciprocal rights to nationals of the Philippines by law, shall be
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
country of origin and the duration, validity or transfer in the
of such registration shall be governed by the IP Code and these
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
for registration of the same mark in one of those countries, shall be
as filed as of the day the application was first filed in the foreign
(b) No registration
of a mark in the Philippines by a person described in this rule shall
granted until such mark has been registered in the country of origin of
(c) The country of
origin of the applicant is the country in which he is a national,
or has a bona fide and effective industrial or commercial
(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
in the Philippines. Provided, That, notwithstanding the
the owner of a well-known mark, as defined in the IP Code and
Regulations, that is not registered in the Philippines, may, against an
identical or confusingly similar mark, oppose its registration, or
the cancellation of its registration or sue for unfair competition,
prejudice to availing himself of other remedies provided for under the
(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application has been withdrawn, abandoned, or otherwise disposed of,
having been laid open to public inspection and without leaving any
outstanding, and has not served as a basis for claiming a right of
shall not thereafter serve as a basis for claiming a right of
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
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.
Declaration of actual use. The Office will not
proof of use in commerce in the processing of trademark
However, without need of any notice from the Office, all applicants or
registrants shall file a declaration of actual use of the mark with
to that effect within three years, without possibility of extension,
the filing date of the application. Otherwise, the application
be refused or the mark shall be removed from the register by the
Contents of the declaration and evidence of actual use. The
declaration shall be under oath, must refer to not more than one
or registration, must contain the name and address of the
or registrant declaring that the mark is in actual use in the
list the goods where the mark is attached; list the name or names and
exact location or locations of the outlet or outlets where the products
are being sold or where the services are being rendered, recite
facts to show that the mark described in the application or
is being actually used in the Philippines, specifying the nature of
use, attaching certified or original copies of purchase orders, sales
official receipts, stating the volume of sales during the fiscal year
preceding the filing of the declaration, furnishing copies of printed
and other proofs of advertising with a statement of the
cost in the immediately preceeding fiscal year as shown in the
audited financial statements where applicable, or income tax returns in
all cases. The declarant should also attach five labels as
used on the goods or the picture of the stamped or marked container
and legibly showing the mark as well as proof of payment of the
FOR A MARK
The Applicant. (a) Applicant may be a person
(b) Unless modified
by this Chapter, all applications for a mark should be in the name of
applicant(s) who may sign the application. If there are more than
one applicant, all of them should be named as applicant but anyone may
sign the application for and in behalf of all the applicants.
Assigned marks. In case the whole interest in the mark is
the application may be filed in the name of the assignee who may sign
application. In case the assignee is a juridical person, any officer
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.
Rule 302. Representation;
Address for Service. If the applicant is not
or has no real and effective commercial establishment in the
he shall designate by a written document filed in the Office, the name
and address of a Philippine resident who may be served notices or
in proceedings affecting the mark. Such notices or services may
served upon the person so designated by leaving a copy thereof at the
specified in the last designation filed. If the person so
cannot be found at the address given in the last designation, such
or process may be served upon the Director.
Rule 303. Applicant
may be represented by attorney. The owner of a
may file and prosecute his own application for registration, or he may
be represented by any attorney or other person authorized to practice
such matters by the Office. The Office shall not aid in the
of an attorney or agent other than the furnishing of the list of
or agents authorized to practise before the Office.
Power of attorney or authorization.
attorney-at-law or other recognized person will be allowed to file an
or take action in any case or proceeding, ex parte or inter partes, a
of attorney or authorization must be filed in that particular case or
A substitute or associate
attorney may be appointed by an attorney only upon the written
of his principal; but a third attorney appointed by the second will not
Death, insanity, incapacity of applicant. When the
dies, becomes insane or otherwise incapacitated, the legally appointed
executor, administrator, guardian, conservator or representative of the
dead or insane or incapacitated applicant may prosecute the application
in behalf of the heirs and successors-in-interest of the
Rule 306. Signature.
and other means of Self-identification. (a)
Where a signature is required, the Office shall accept:
of other forms of signature, such as a printed or stamped signature, or
the use of a seal, instead of a hand-written signature: Provided,
That where a seal is used, it should be accompanied by an indication in
letters of the name of the signatory.
(b) No attestation,
notarization, authentication, legalization or other certification of
signature or other means of self-identification referred to in the
paragraphs, will be required, except, where the signature concerns the
surrender of a registration.
Rule 400. Requirements
of application. All applications must be addressed to the
and shall be in Filipino or English and shall contain the
the name and address of the applicant;
name of a
State of which the applicant is a national or where he has domicile;
the name of a State in which the applicant has a real and effective
or commercial establishment, if any;
the applicant is a juridical entity, the law under which it is
of an agent or representative, if the applicant is not domiciled in the
applicant claims the priority of an earlier application, a declaration
claiming the priority of that earlier application, together with an
- the name
State with whose National Office the earlier application was filed or
filed with an Office other than a National Office, the name of that
date on which
the earlier application was filed; and
the application number of the earlier application;
wishes to claim color as a distinctive feature of the mark, a statement
to that effect as well as the name or names of the color or colors
and an indication, in respect of each color, of the principal parts of
the mark which are in that color;
the mark is a three-dimensional mark, a statement to that effect;
reproduction of the mark and facsimiles thereof as provided in these
or translation of the mark or of some parts of the mark, as prescribed
in these Regulations;
the goods or services for which the registration is sought, grouped
to the classes of the Nice Classification, together with the number of
the class of the said Classification to which each group of goods or
is for a collective mark, a designation to that effect;
or other self-identification of, the applicant or his
if the filing is through a representative; and
that the applicant is a small entity if such be the fact.
Office Application Form. For the convenience of
the Office shall draw up and make available a standard application form
which may be reproduced at will by applicants and other persons at
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
The mark must be
bigger and more dominant than the generic term of goods except in
the case of medicine as required by law.
Drawing. (a) The drawing of the mark shall be
representation thereof as actually used or intended to be used on or in
connection with, the goods or services of the applicant.
(b) A typed drawing
may be accepted by the Examiner if no special characteristics
to be shown such as design, style of lettering, color, diacritical
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
(c) The provisions
of this Rule shall, however be construed liberally in determining
the applications shall be considered complete for the purpose of
a filing date.
Drawing for a service mark may be dispensed with in certain
The drawing of a service mark may be dispensed with but the application
must contain an adequate description of such mark.
Drawing to be on Bristol board. The Drawing
made upon pure white paper of a thickness of a Bristol board. The
surface of the paper must be calendered and smooth.
Size of board; “sight”. The size of a sheet
which a Drawing is made must be exactly two hundred ten millimeters
mm) by two hundred ninety-seven millimeters (297 mm) or the size of an
A4 paper. Nineteen millimeters (19 mm) from its edges, a single
line is to be drawn, leaving the “sight” precisely one hundred
millimeters (172 mm) by two hundred fifty-nine millimeters (259
Within this margin all work and signatures must be included. One
of the shorter sides of the sheet should be regarded as its top.
Drawing to be with the pen or by other processing giving
results. If colors are not claimed, all Drawings must
made with pen only or by a process which will give them satisfactory
characteristics. Every line and letter, signatures included, must
be absolutely black. This direction applies to all lines,
fine, and to shading. All lines must be clean, sharp, and solid,
and they must not be too fine or crowded. Surface shading, when
should be open.
The name of the owner to be within marginal lines. The
name of the
proprietor of the trademark or service mark trade name must be
the marginal lines and should not encroach upon the drawing.
should be signed by the owner or his Attorney of record. However,
a printed or stamped signature or the use of seal accompanied by an
in letters of the name of signatory is also accepted.
When board may be turned on its side. When the view
than the width of the sheet, the sheet should be turned on its
Rule 410. Manner
of mailing the Drawing to the Bureau. Drawing
to the Office should be sent flat, protected by a sheet of
heavy binder’s board, or should be rolled for transmission in a
mailing tube. They should never be folded.
Color. Where color is a material feature of the mark as
intended to be used, the color or colors employed may be actually
in the drawings and facsimiles. Otherwise, a statement must be
giving the name or names of the color or colors claimed indicating the
principal part or parts of the mark which are in such color or
Rule 412. Informal
Drawing. A Drawing not executed in conformity with the
foregoing rules may be accepted for the purpose of examination, but the
Drawing must be corrected or a new one furnished, as may be required,
the mark can be published for opposition or the application
Substitute Drawings will not be accepted unless they have been required
by the Examiner or unless correction of original Drawing would require
that the mark or trade name be substantially entirely redrawn.
Use of an old Drawing in a new application. In
filed in place of an abandoned or rejected application, a new complete
application is required, but the old Drawing, if suitable, may be
The application must be accompanied by a request for the transfer of
Drawing, and by a permanent photographic copy, or an order for such
of the Drawing to be placed in the original file. A drawing
so transferred or to be transferred cannot be amended.
The Small facsimiles of the Drawing, how prepared. The
small facsimiles of the Drawing must be printed in black ink or in
if colors are claimed, one facsimile on Bristol board and the
nine facsimiles on an ordinary coupon bond paper and must be capable of
being satisfactorily reproduced when published in the IPO Gazette. The
size of the sheet on which these facsimiles are to be printed
be seventy millimeters (70 mm) long and thirty-five millimeters (35 mm)
Rule 415. Translation/Transliteration.
A translation or transliteration of the mark or of some parts
mark must accompany the application if the mark or of some parts of the
mark is/are foreign word(s), letter(s) and character(s), or foreign
an act, process or instance of representing or spelling of words,
or characters of one language in the letters and characters of another
language or alphabet.
Translation is an
act, process or instance of translating as rendering from one language
or representational system into another.
Rule 416. Nice
Classification. The applicant must indicate the
of the goods 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
or services belongs.
1 Chemical products
used in industry, science, photography, agriculture, horticulture,
artificial and synthetic resins; plastics in the form of powders,
or plates, for industrial use; manures (natural and artificial); fire
compositions; tempering substances and chemical preparations for
chemical substances for preserving foodstuffs; tanning substances;
substances used in industry.
2 Paints, varnishes,
lacquers, preservatives against rust and against deterioration of wood;
colouring matters; dyestuffs; mordants; natural resins; metals in
foil and powder form for painters and decorators.
3 Bleaching preparations
and other substances for laundry use; cleaning, polishing, scouring and
abrasive preparations; soaps; perfumery; essential oils, cosmetics,
4 Industrial oils
and greases (other than edible oils and fats and essential oils);
dust laying and absorbing compositions; fuels (including motor spirit)
and illuminants; candles, tapers, nightlights and wicks.
veterinary and sanitary substances; infants’; and invalids’ foods;
material for bandaging; material for stopping teeth, dental wax;
preparations for killing weeds and destroying vermin.
6 Unwrought and partly
wrought common metals and their alloys; anchors, anvils, bells, rolled
and cast building materials; rails and other metallic materials for
tracks; chains (except driving chains for vehicles); cables and wires
lock-smith’ work ; metallic pipes and tubes; safes and cash boxes;
balls; horseshoes; nails and screws; other goods in non-precious metal
not included in other classes; ores.
7 Machines and machine
tools; motors (except for land vehicles); machine couplings and belting
(except for land vehicles); large size agricultural implements;
8 Hand tools and
instruments; cutlery, forks and spoons; side arms.
9 Scientific, nautical,
surveying and electrical apparatus and instruments (including
photographic, cinematographic, optical, weighing, measuring,
checking (supervision), life saving and teaching apparatus and
coin or counter-freed apparatus; talking machines; cash registers;
machines; fire-extinguishing apparatus.
10 Surgical, medical,
dental and veterinary instruments and apparatus (including artificial
eyes and teeth).
for lighting, heating, steam generating, cooking, refrigerating,
ventilating, water supply and sanitary purposes.
12 Vehicles; apparatus
for locomotion by land, air or water.
13 Firearms; ammunition
and projectiles; explosive substances; fireworks.
14 Precious metals
and their alloys and goods in precious metals or coated therewith (
cutlery, forks and spoons); jewellery, precious stones; horological and
other choronometric instruments.
15 Musical instruments
(other than talking machines and wireless apparatus).
16 Paper and paper
articles, cardboard and cardboard articles; printed matter, newspaper
periodicals, books; bookbinding materials; photographs; stationery,
materials (stationery); artists’ materials; paint brushes;
and Office requisites (other than furniture); instructional and
material (other than apparatus);playing cards; (printers’) type and
17 Gutta percha,
indiarubber, balata and substitutes, articles made from these
and not included in other classes; plastics in the form of sheets,
and rods, being for use in manufacturers; materials for packing,
or insulating; asbestos, mica and their products; hose pipes
18 Leather and imitations
of leather, articles made from these materials, and not included in
classes; skins, hides, trunks and travelling bags; umbrellas, parasols
and walking sticks; whips, harness and saddlery.
19 Building materials,
natural and artificial stone, cement, lime, mortar, plaster and gravel;
pipes of earthenware or cement; road-making materials; asphalt, pitch
bitumen; portable buildings; stone monuments; chimney pots.
20 Furniture, mirrors,
picture frames; articles (not included in other classes) of wood, cork,
reeds, cane, wicker, horn, bone, ivory, whale-bone, shell, amber,
meerschaum, celluloid, substitutes for all these material, or of
21 Small domestic
utensils and containers (not of precious metal, nor coated
and sponges; brushes (other than paint brushes);brush-making materials;
instruments and materials for cleaning purposes; steel wool; unworked
semi-worked glass (excluding glass used in building); glassware,
and earthenware not included in other classes.
22 Rope, string,
nets, tents, awnings, tarpaulins, sails, sacks; padding and stuffing
(hair, capoc, feathers, seaweeds, etc.); raw textile materials.
23 Yarns, threads.
24 Tissues (piece
goods); bed and table covers; textile articles not included in other
25 Clothing, including
boots, shoes and slippers.
26 Lace and embroidery,
ribbons and braids; buttons, press buttons, hooks and eyes, pins and
27 Carpets, rugs,
mats and matting; linoleums and other materials for covering existing
wall hangings (non-textile).
28 Games and playthings;
gymnastic and sporting articles (except clothing); ornaments and
for Christmas trees.
29 Meat, fish, poultry
and game; meat extracts; preserved, dried and cooked fruits and
jellies, jams; eggs; milk and other dairy products; edible oils and
30 Coffee, tea, cocoa,
sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations
made from cereals; bread, biscuits, cakes pastry and confectionery,
honey, treachel; yeast, baking-powder; salt mustard; pepper, vinegar,
horticultural and forestry products and grains not included in
classes; living animals; fresh fruits and vegetables; seeds; live
and flowers; foodstuffs for animals, malt.
32 Beer, ale and
porter; mineral and aerated waters and other non-alcoholic drinks;
and other preparations for making beverages.
33 Wines, spirits
34 Tobacco, raw or
manufactured; smokers’ articles; matches.
OF BUSINESS OR SERVICES
35 Advertising and
Broad terms. In any application, the use of broad
identifying the goods, business or services shall be
Applicants whose application are based on foreign registration shall be
required to specify the goods covered by such foreign registration in
cases where the foreign registration used broad terms in identifying
goods, business or services.
Single registration for goods and/or services. One
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
in one registration.
Division of Applications. (a) Any
referring to several goods or services referred to as the “ initial
may be divided by the applicant into two (2) or more applications
referred to as the “divisional applications” by distributing among the
latter the goods or services referred to in the initial
(b) A single class
shall not be subdivided.
(c) The divisional
applications must be submitted before examination of the initial
or within two (2) months from mailing date of the first action of
(d) Upon receipt
of the divisional applications, the Office shall cancel the initial
together with its application number. New application numbers
be given to the divisional applications but the filing date shall be
same as the filing date of the initial application. The
applications shall likewise preserve the benefit of the right of
of the initial application.
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
the payment for the required fee and the following indications and
in English or Filipino:
implicit indication that the registration of a mark is sought;
of the applicant;
to contact the applicant or his representative, if any;
of the mark whose registration is sought; and
list of the
goods or services for which the registration is sought.
Rule 501. Application
Number and Filing Date. (a) Before starting to examine
the registrability of a mark, the Examiner or such other personnel as
Director may authorize, shall examine whether the application
the requirements for the grant of a filing date as provided in these
If the application does not satisfy the filing date requirements, the
shall notify the applicant who shall, within a period of one (1) month
from mailing date of the notice, complete or correct the application as
required; otherwise, the application shall be considered
(b) 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
filing date shall be the date on which the Office received the
or corrected application as specified in the notice to the
PROCEEDINGS IN THE EXAMINATION
AN APPLICATION FOR
1. NATURE OF THE PROCEEDINGS
600. Application prosecuted ex parte;
protests. An application for registration is
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
itself (the Examiner) acting as the adverse party.
attention shall be paid to ex parte statements
or protests of persons concerning pending applications to which they
not parties, unless information of the pendency of these applications
have been voluntarily communicated by the applicants.
Rule 601. Proceedings a contest
Examiner and the Applicant. An ex parte
proceeding in the Office for the registration of a mark is a law
between the Examiner, representing the interest of the public and the
(or his attorney), representing his own private interests.
Rule 602. Applicant supposed to look
his own interests. The Office, represented by the
Examiner, is not supposed to look after the interest of an applicant.
law imposes that duty upon the applicant himself. The Examiner is
with the protection of the interests of the public and hence must be
to see that no registration issues for a mark contrary to law and these
Rule 603. Preliminary adverse action
the Examiner valuable to Applicant. The positive
value of a preliminary adverse action of the Examiner should be fully
by the applicant or his attorney. A hard-fought application will
a registration much more likely to stand in court than a registration
has slid through the Office easily. The reason for this is that every
raised by the Examiner and finally decided by the Office in favor of
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
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
his application. The Examiner may in fact be quite prepared to admit
application, and is only trying to give the applicant a chance to
away some reference or some difficulty rather than have him wait until
the registration is granted and become involved in a litigation, when
may then be difficult for him to make the explanation.
CHAPTER 2. MANNER OF
OF AN APPLICATION FOR REGISTRATION; ACTION BY THE EXAMINER; RESPONSE BY
THE APPLICANT; ABANDONMENT; REVIVAL.
Rule 605. Order of examination;
of action. Applications shall be examined for
in the order in which the complete requirements for grant of filing
are received by the Office. Ordinarily, the order of the
number assigned to them by the Office will be followed and no
bearing a higher application number shall be examined in advance of the
applications with lower application numbers unless the filing date or
priority date of the application bearing the higher number is earlier
those bearing a lower number.
Rule 606. Jurisdiction of the
The Examiners shall have original jurisdiction over the examination of
all applications for registration and over their allowance for
in the IPO Gazette for purposes of opposition. Their decision, when
shall be subject to petition and appeal to the Director. Applicants,
attorneys or agents shall take up the problems arising from their
applications only with the respective Examiners in charge and with no
person in the Office.
Rule 607. Examination of the
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
such information and references as may be helpful to him in the further
prosecution of his application.
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
be required. The Examiners may require unregistrable
to be deleted from the Drawing or disclaimed in the application, but
disclaimer shall not prejudice or affect the applicant’s rights then
under some other law or thereafter arising in the disclaimed matter,
shall such disclaimer prejudice or affect the applicant’s rights to
on another application of later date, where the disclaimed matter has
distinctive of the applicant’s goods, business or services.
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
portions of a mark when comprising less than the entire mark, must be
to permit registration, namely (a) a generic term; (b) a descriptive
in the composite mark; (c) a matter which does not function as a
or service mark or a trade name.
Rule 609. Interview with the
when no interview is permitted. Interviews with Examiners
applications pending before the Office can be held only upon written
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
grant the interview or instead reply to the query in writing. The
shall take place within the premises of the Office and during regular
hours as specified by the Examiner. All interviews or conferences
with Examiners shall be reduced to writing and signed by the Examiner
the applicant immediately after the conference. Such
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,
applicant. The applicant has two (2) months from the mailing date
any action of the Examiner to respond thereto. Such response may be
with or without amendment and must include such proper action by the
as the nature of the action of the Examiner and the condition of the
may require. The period to respond may be extended upon written
and upon payment of the required fee but in no case shall the total
to respond exceed four (4) months from the mailing date of the
action requiring the response.
Rule 611. Communications other than
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
When communications are made by telefacsimile, the reproduction of the
signature, or the reproduction of the seal together with, where
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
confirm the date of receipt of the telefacsimile by means of a notice
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
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
shall be deemed withdrawn and expunged from the records. In all
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
may respond again.
Rule 613. Final action.
On the first or any subsequent re-examination or reconsideration, the
may state that the refusal of the registration or the insistence upon a
requirement is final. Thus, the applicant’s recourse is limited
an appeal to the Director or to a compliance with the requirement made
by the Examiner.
Rule 614. Abandonment; incomplete
If an applicant fails to respond, or to submit a complete response,
the period given counted from the mailing date of an action of the
the application shall be deemed abandoned as of the day immediately
the last day of the aforesaid period.
Rule 615. Revival of abandoned
(a) An abandoned application may be revived as a pending
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
request to revive an abandoned application
must be accompanied by a statement of the causes of the delay in
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
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
request for extension should be made. (a) The
may be required to prosecute his application in a time shorter than
months but not less than one (1) month from the mailing date of the
action whenever such shorter time is deemed necessary or
Unless the applicant is notified in writing that response is required
less than four months, a maximum period of four months is allowed.
The time for reply, when a time less
than four months has been set, will be extended only for good and
cause and for a reasonable time specified. Any request for such
must be filed on or before the day on which the response of the
is due. In all cases, the maximum time within which to submit a
to an action shall not exceed four months from the mailing date of the
Rule 617. Suspension of action
the Bureau. Action by the Bureau may be suspended upon
written request of the applicant for good and sufficient cause, for a
time specified and upon payment of the required fee. The Examiner
may grant only one suspension, and any further suspension shall be
to the approval of the Director. An Examiner’s action, which is
a response by the applicant, shall not be subject to suspension.
Rule 618. Provisional
If the only issue remaining in an application based on foreign
claiming priority right is the submission of a certified copy of the
or home registration, the Examiner may provisionally allow the
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
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
of the foreign or home registration within the maximum period of twenty
four (24) months counted from allowance, the applicant may waive his
to priority right in writing and request that the application be
based on intent to use. Said waiver and request shall be filed
two (2) months, without extension, counted from the expiration of the
twenty four (24) month period without need of any notice from the
Otherwise, the application shall be deemed forfeited. The
of actual use shall be filed within twelve (12) months, without
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
An application may be expressly abandoned by filing with the Bureau a
declaration of abandonment signed by the applicant himself or by the
CHAPTER 3. AMENDMENTS TO THE
RESPONSE TO OBJECTIONS OF THE EXAMINER.
Rule 620. Amendments to the
The application may be amended to correct formalities, to
objections made by the Examiner, or for other reasons arising in the
Rule 621. Amendments to description
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
is changed thereby.
Rule 622. Manner of making the
In every amendment the exact word or words to be stricken out or
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
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.
ALLOWANCE AND ISSUANCE OF CERTIFICATE OF REGISTRATION
Rule 700. Publication
in the IPO Gazette; end of jurisdiction of the Examiner. An
for registration is subject to opposition proceeding before issuance of
the certificate of registration. Thus, after examination or
of an application for registration, if it should appear to the Examiner
in charge of the examination thereof that the applicant is entitled to
have his mark registered, the mark will, upon the recommendation of
Examiner, be ordered by the Director to be published in the IPO Gazette
for opposition, and the applicant notified of such action.
of an Examiner over an application ceases after the Director has
the mark to be published for opposition.
Rule 701. Examiner
may petition for the remand to his jurisdiction, of an allowed
After allowance and within one (1) month from publication of
application, the Examiner may again exercise jurisdiction over an
upon petition by him to the Director on the ground of newly discovered
ex parte objections to the registration of the mark.
After an application
has been remanded to the Examiner, any amendment recommended by the
may be approved by the Director and may be made without withdrawing the
allowance, provided the payment for the issuance of the certificate has
not been received by the Office.
Rule 702. Examiner
to be in charge of publication for opposition; applications
prior to publication. The Examiner shall be in charge of all
matters relating to the publication for opposition of all marks and
names ordered by the Director to be published as provided in these
Access to files of
pending applications will not be given to anyone prior to publication
opposition of the mark or trade name or name and other mark of
stamped on containers, without the written authority of the
However, an index of pending applications stating the name and address
of the applicant, a description of the mark or trade name or name and
mark of ownership, the goods, business or service or container with
the mark or trade name or name or other mark of ownership is used, the
class number, the application number and filing date of the application
will be available for public inspection as soon as practicable after
Rule 703. Allowance
of application and issuance of certificate of registration.
(a) Upon certification by the Director of the Bureau of Legal Affairs
no notice of opposition, whether or not verified and whether or not by
means of the original copy, has been filed within one (1) month from
date of release for circulation of the IPO Gazette publishing the
for opposition, and upon payment of the required fee, the office
shall issue the certificate of registration. The Director of the
Bureau of Legal Affairs shall issue such certification within two (2)
from the date of release for ciriculation of any IPO Gazette publishing
applications for opposition. The issuance of the certificate of
shall be published in the IPO Gazette and shall be entered on the
records of the Office.
(b) If the
application is deficient in any formal matter relating to form,
or other papers necessary for the preparation and issuance of the
of registration or for the publication of such registration, the
shall send a notice thereof to the applicant. The applicant shall
complete such deficiency within two (2) months from mailing date of the
notice; otherwise the application shall be declared abandoned.
abandoned application, however, may be revived subject to the
of these Regulations.
Rights conferred. (a) The owner of a
shall have the exclusive right to prevent all third parties not having
the owner’s consent from using in the course of trade identical or
signs or containers for goods or services which are identical or
to those in respect of which the mark is registered where such use
result in a likelihood of confusion. In case of the use of
an identical sign for identical goods or services, a likelihood of
shall be presumed.
(b) The exclusive
right of the owner of a well-known mark which is registered in the
shall extend to goods and services which are not similar to those in
of which the mark is registered: Provided, That use of the mark
relation to those goods or services would indicate a connection between
those goods or services and the owner of the registered mark: Provided
further, That the interests of the owner of the registered mark are
to be damaged by such use.
Duration. A certificate of registration shall remain in force
for ten (10) years; Provided, That, without need of any notice from the
Office, the registrant shall file a declaration of actual use and
to that effect, or shall show valid reasons based on the existence of
to such use, as prescribed by these Regulations, within one (1) year
the fifth anniversary of the date of the registration of the
Otherwise, the Office shall remove the mark from the Register.
one (1) month from receipt of the declaration of actual use or reason
non-use, the Examiner shall notify the registrant of the action taken
such as acceptance or refusal.
Non-use of a mark when excused. (a) Non-use of a
mark may be excused if caused by circumstances arising independently of
the will of the trademark owner. Lack of funds shall not excuse
of a mark.
(b) The special
circumstances to excuse non-use in affidavits of non-use shall not be
unless they are clearly beyond the control of the registrant such as
prohibition of sale imposed by government regulation.
Use of a mark in a different form. The use of the
a form different from the form in which it is registered, which does
alter its distinctive character, shall not be ground for cancellation
removal of the mark and shall not diminish the protection granted to
Use of a mark for goods belonging to the class
The use of a mark in connection with one or more of the goods or
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
of the same class.
Use of a mark by related company. The use of a mark
by a company
related with the registrant or applicant shall inure to the latter’s
and such use shall not affect the validity of such mark or of its
Provided, That such mark is not used in such manner as to deceive the
If use of a mark by a person is controlled by the registrant or
with respect to the nature and quality of the goods or services, such
shall inure to the benefit of the registrant or applicant.
Rule 806. Certificate
of registration; records and copies in registered cases.
A certificate of registration of a mark shall be prima facie evidence
the validity of the registration, the registrant’s ownership of the
and of the registrant’s exclusive right to use the same in connection
the goods or services and those that are related thereto specified in
After a mark or trade
name or name or other mark of ownership has been registered, the
the drawings, and all documents relating to the case are subject to
inspection, and copies will be furnished upon payment of the required
Rule 807. Contents
of certificate of registration. The certificate of registration of
a mark shall include a reproduction of the mark and shall mention its
the name and address of the registered owner and, if the registered
address is outside the country, his address for service within the
the dates of application and registration; if priority is claimed, an
of this fact, and the number, date and country of the application,
of the priority claims; the list of goods or services in respect
of which registration has been granted, with the indication of the
class or classes; and such other data as the Regulations may prescribe
from time to time.
Use of indications by third parties for purposes other than
which the mark is used. Registration of the mark shall not
on the registered owner the right to preclude third parties from using
bona fide their names, addresses, pseudonyms, a geographical name, or
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.
APPLICATION OR REGISTRATION
VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER BY THE
OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES.
Rule 900. Jurisdiction
of the Examiner. The Examiner shall have original jurisdiction
all matters relating to voluntary surrender, voluntary cancellation,
amendment, and voluntary disclaimer of registration, and his decisions,
when final, shall be subject to appeal to the Director in the
manner that final decisions of the Examiners in respect of applications
for registration may be appealed to the Director. In all such
registrants or assignees, their attorneys or agents will deal with him
exclusively, or with such other officials and employees whom the
may designate to assist him.
Rule 901. Cancellation
upon application by registrant. Upon application of the
the Office may permit any registration to be surrendered for
and upon cancellation the appropriate entry shall be made in the
of the Office. The application for cancellation of registration
be under oath and shall be duly authenticated or legalized if the
is a non-resident.
Amendment or disclaimer of registration. (a)
of the registrant and payment of the prescribed fee, the Office, for
cause, may permit any registration to be amended or to be disclaimed in
part: Provided, That the amendment or disclaimer does not alter
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
may be issued by the Office stating on its face the fact that it is a
and bearing the same entry regarding the amendment or disclaimer
that was made on the certified copy of a lost or destroyed
A duplicate original of such replacement certificate shall be kept in
records of the Office.
Correction of mistakes made by the Office.
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
recorded and a printed copy thereof shall be attached to each printed
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
Service Bureau a new certificate of registration may be issued in
with these Regulations and without charge. All certificates of
heretofore issued and the registration to which they are attached shall
have the same force and effect as if such certificates and their
had been authorized by the IP Code.
Corrections of mistakes made by applicant. (a) Whenever
a mistake is made in a registration and such mistake occurred in good
through the fault of the applicant, the Office may issue a certificate
upon the payment of the prescribed fee: Provided, That the correction
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
correction is sought, the manner in which it arose and must state that
it occurred in good faith.
of the certificate of correction shall be attached to each copy of the
Rule 905. Surrender,
cancellation, amendment, disclaimer, and correction to be given
Notice of the cancellation, surrender, amendment, disclaimer, and
shall be published in the IPO Gazette. The cost of publication
be for the account of the registrant or assignee of record, except when
the notice of correction refers to a mistake of the Office.
2. RECORDING OF ASSIGNMENTS OF REGISTRATION OR ANY OTHER
AFFECTING THE TITLE TO ANY REGISTERED MARK, INCLUDING LICENSES;
Assignment and transfer of application and registration.
for registration of a mark, or its registration, may be assigned or
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
public particularly as regards the nature, source, manufacturing
characteristics, or suitability for their purpose, of the goods or
to which the mark is applied.
Form of assignment or transfer. (a) The
the application for registration of a mark, or of its registration,
be notarized and require the signature of the applicant, registrant or
the assignee of record in case of subsequent assignment.
by mergers or other forms of succession may be evidenced by the deed of
merger or by any document supporting such transfer.
Recordal of assignment or transfer. Assignments and
shall have no effect against third parties until they are recorded at
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,
be in the name of the assignee or transferee.
Rule 909. Assignment,
other instruments affecting the registration, or license, and
to be submitted in duplicate. The original document of
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.
Date of receipt of instrument to be recorded considered its
recording. The date of recording of an assignment, other
or license is the date of its receipt at the Office in proper form and
accompanied by the full recording fee.
Rule 911. A
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
of the registration must be issued to the assignee.
Rule 912. Action
may be taken by assignee of record in any proceeding in
Any action in any proceeding in the Office which may or must be
by a registrant or applicant may be taken by the assignee to the
of the original owner, registrant, applicant or earlier assignee,
the assignment has been recorded. Unless such assignment has been
recorded, no assignee will be recognized to take action.
Clearance of Trademark License Agreement prior to
agreement shall be applied for clearance with the Documentation
and Technology Transfer Bureau (DITTB) of the Office and shall be
only upon certification by the Director of the DITTB that the agreement
does not violate Sections 87 and 88 of the IP Code.
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
the number and date of issuance of the certificate to be divided, the
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
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
Cancellation of original certificate and issuance of transfer
of registration. Upon approval of the request to divide a
and payment of the required fee, the Director shall order that the
certificate be cancelled and new certificates of registration be issued
for the remainder of the term covered by the original certificate.
Contents of transfer certificates of registration.
certificates of registration shall include a reproduction of the mark
shall mention their numbers, the name and address of the registered
and if the registered owner’s address is outside the country, his
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
the date of the issuance of the transfer certificate of registration;
date of filing and registration of the original registration; if
is claimed, an indication of this fact, and the number, date and
of the application which is the basis of the priority claims; the list
of goods or services covered by the transfer certificate of
with the indication of the corresponding class or classes; and such
data as the Regulations may prescribe from time to time.
RENEWAL OF REGISTRATION
Request for renewal. A certificate of
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
contain the following indications:
that renewal is sought;
address of the registrant or his successor-in-interest, hereafter
to as the “right holder”;
number of the registration concerned;
of the application which resulted in the registration concerned to be
holder has a representative, the name and address of that
the recorded goods or services for which the renewal is requested or
names of the recorded goods or services for which the renewal is not
grouped according to the classes of the Nice Classification to which
group of goods or services belongs and presented in the order of the
of the said Classifications; and
the right holder or his representative.
has been material variation in the manner of display, five (5) sets of
the new labels must be submitted with the application.
When to file request for renewal. Such request shall
Filipino or English and may be made at any time within six (6) months
the expiration of the period for which the registration was issued or
or it may be made within six (6) months after such expiration on
of the additional fee herein prescribed.
Rule 919. Jurisdiction
of the Examiner. The Examiner shall have original
over applications for renewal registration, and his decisions, when
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
refuses to renew the registration, it shall notify the registrant of
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
registration is not domiciled in the Philippines, and if the
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
the petition as the representative of the registrant must be filed and,
upon payment of the required fee, must be recorded before the Office
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
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
duration as of January 1, 1998 of more than six and one-half (6
years shall be required to submit the declaration and evidence of
use prescribed in these Regulations within one (1) year following the
and fifteenth anniversaries of the registration or renewal registration
under Republic Act No. 166; provided, further, that marks whose
have a remaining duration of six and one-half (6 ½) years or
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,
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.
whose registration, including any renewal thereof, was subsisting as of
January 1, 1998 shall remain in force but shall no longer be subject to
Prior Act certificate of registration to be surrendered.
the application for the renewal of a registration made under Republic
No. 166 the certificate of registration to be renewed must be
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
upon payment of the usual fees.
Refusal of renewal registration; appeal to the Director.
application for renewal may be refused by the Examiner for any valid
The application for renewal may then be completed or amended in
to the refusal, or the case may be appealed to the Director if the
has become final.
Certificate of renewal of registration. The Office
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
of renewal of registration shall contain the number of the certificate
of registration and the mark being renewed, the date of original
thereof, the duration of the renewal registration, all the data
to be contained in a certificate of registration provided in these
including any limitation contained in the order of the Director
the renewal of the registration.
OF STAMPED OR MARKED CONTAINER
Rules on registration of trademarks and service marks to apply.
Unless otherwise provided by these Regulations, the registration of
marks shall be the same as that of trademarks and service marks.
“Stamped or marked container” defined. “Stamped or
container” means any container of goods upon which a mark is impressed
or molded which will give a distinctive effect, provided that the mark
cannot be deleted or removed from the container. The stamp or
on the container must be legible and visible for registration.
No drawing required. No drawing is required for
In lieu of the drawing, two (2) photographs of the container, duly
by the applicant or his representative, showing clearly and legibly the
mark sought to be registered, shall be submitted. The photographs
shall be of the same size as required for trademarks and service
No “sight” is required.
No labels required; sample may be required. If the
so requires, the applicant or his representative shall bring a sample
the container to the Bureau on a date and time specified by the
The sample shall not be left in the Office and shall be brought by the
applicant or his representative with him immediately after the viewing
thereof by the Examiner.
Nature of the function of Examiners. The function of
whether or not an application for registration or renewal thereof
be allowed or denied under the facts disclosed in the application and
the references consulted by the Examiner and under the applicable law
and decisional), is a quasi-judicial function and involves the exercise
of judicial discretion.
Thus, with respect
to such function, the Director cannot lawfully exercise direct control,
direction and supervision over the Examiners but only general
exercised through a review of the recommendation they may make for the
grant of registration and of other actions, and through a review of
adverse decisions by petition or appeal.
Petition to the Director to question the correctness of the
an Examiner on a matter not subject to appeal. Petition
may be filed with the Director from any repeated action or requirement
of the Examiner which is not subject to appeal and in other appropriate
circumstances. Such petition, and any other petition which may be
filed, must contain a statement of the facts involved and the point or
points to be reviewed. Briefs or memoranda, if any, in support
should accompany or be embodied in the petition. The Examiner, as
the case may be, may be directed by the Director to furnish a written
setting forth the reasons for his decision upon the matter averred in
petition, supplying a copy thereof to the petitioner. The mere
of a petition will not stay the maximum period of four months counted
the mailing date of the Examiner’s action subject of the appeal for
to an Examiner’s action nor act as a stay of other proceedings.
Appeals to the Director. Every applicant for the
of a mark or other mark of ownership may, upon the final refusal of the
Examiner to allow registration, appeal the matter to the
Appeal may also be taken to the Director from any adverse action of the
Examiner in any matter over which these Regulations give original
to the Examiner. A second adverse decision by the Examiner on the
same grounds may be considered as final by the applicant, petitioner,
registrant for purposes of appeal.
Effect of a final decision of an Examiner which is not
A final decision of an Examiner which is not appealed to the Director
the time permitted, or, if appealed, the appeal is not prosecuted,
be considered as final to all intents and purposes, and shall have the
effect of res judicata in respect of any subsequent action on
same subject matter.
If an application
is considered abandoned for failure of the applicant to respond to an
of the examiner on the merits e.g. citation of confusingly similar
the order declaring the application as abandoned which has become final
shall likewise have the effect of res judicata.
Time and manner of appeal. Any petition or appeal
taken by filing the petition in duplicate or a notice of appeal, as the
case may be, and payment of the required fee within two (2)
from the mailing date of the action appealed from, must specify the
grounds upon which the appeal is taken, and must be signed by the
or appellant or by his attorney of record. The period herein provided
in no case, exceed the maximum period of four (4) months from the
date of the action appealed from.
Appellant’s brief required. In case of an appeal, the
shall, within two (2) months, without extension, from the date of
of the notice of appeal, file a brief of the authorities and arguments
on which he relies to maintain his appeal. On failure to file the
brief within the time allowed, the appeal shall stand dismissed.
The Examiner’s answer. The Examiner shall furnish a
statement in answer to the petition or appellant’s brief, as the case
be, within two (2) months from the order of the Director
him to submit such statement. Copy of such statement shall be
on the petitioner or appellant by the Examiner.
Appellant’s reply. In case of an appeal, the
file a reply brief directed only to such new points as may be raised in
the Examiner’s answer, within one (1) month from the date copy of such
answer is received by him.
Rule 1108. Appeal
to the Director General. The decision or order of the
shall become final and executory fifteen (15) days after receipt of a
thereof by the appellant unless within the said period, a motion
for reconsideration is filed with the Director or an appeal to the
General has been perfected by filing a notice of appeal and payment of
the required fee.
Only one motion for
reconsideration of the decision or order of the Director shall be
Rule 1109. Appellant’s
brief required. The appellant shall, within one (1) month
the date of filing of the notice of appeal, file a brief of the
and arguments on which he relies to maintain his appeal. On
to file the brief within the time allowed, the appeal shall stand
1110. Director’s comment. The Director shall
within one (1) month his comments on the appellant’s brief if so
by the Director General.
Appeal to the Court of Appeals. The decision of the
General shall be final and executory unless an appeal to the Court of
is perfected in accordance with the Rules of Court applicable to
from decisions of Regional Trial Courts. No motion for
of the decision or order of the Director General shall be allowed.
Correspondence. The following regulations shall
apply to correspondence
between registrants/applicants and the Office or the Bureau:
to be transacted in writing. All business with the Office or
Bureau shall be transacted in writing. Actions will be based
on the written record. No attention will be paid to any alleged
promise, stipulation, or understanding.
of applicants and other persons unnecessary. Unless otherwise
provided, the personal attendance of applicants and other persons at
Office is unnecessary. Their business can be transacted by
to be in the name of the Director of Trademarks. All Office
with respect to matters within the jurisdiction of the Bureau must be
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
for each case. In every case, a separate letter shall be
in relation to each distinct subject of inquiry.
to applications. When a letter concerns an application it
state the name of the applicant, the mark or trade name or name or
mark of ownership sought to be registered, the application number and
filing date of the application.
to registrations. When the letter concerns a registered mark,
it shall state the name of the registrant, the mark registered, the
and date of the certificate of registration, and the classes of goods
services according to the Nice Classification.
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
judge for himself or consult an attorney-at-law. The Office is
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
until his application comes regularly before it in the manner
by law and by these Regulations. A copy of the law, rules, or
of information, with a section marked, set to the individual making an
inquiry of the character referred to, is intended as a respectful
by the Office.
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
on the trademark law.
Fees and charges to be prepaid; fees and charges payable in
Express charges, freight, postage, telephone, telefacsimile
cost of paper and other related expenses, and all other charges on any
matter sent to the Office must be prepaid in full.
the Office shall not receive nor perform any action on such
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
shall apply to applications pending on the effective date of the IP
on January 1, 1998 (referred to in this Section as “pending
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
who wish to pursue the grant of registration may amend their
to comply with requirements for registration under the IP Code.
Filing date of pending applications; declaration of actual use. Pending
applications shall retain their priority date or original date of
with the Bureau of Patents Trademarks and Technology Transfer.
which elected to prosecute their applications under Republic Act No.
and its implementing rules and regulations under which they were
to submit proof of use of the mark, particularly with reference to
for registration based on use in the Philippines, shall file the
declaration of actual use with evidence to that effect as prescribed by
these Regulations, without need of any notice from the Office, within
(3) years from the effectivity of these Regulations, without
of extension. Otherwise, the application shall be refused or the mark
be removed from the register by the Director motu proprio.
of pending applications. Pending applications amended in
with this Section shall be proceeded with and registration thereof
in accordance with these Regulations. Where there are no
provisions in the IP Code and these Regulations, pending applications
are not amended in accordance with this Section shall be proceeded with
and registration thereof granted in accordance with the laws and
under which they were filed.
Interference. In all cases where interference
could have been
declared under Republic Act No. 166, as amended, and its implementing
and regulations, as amended, but the same can not be declared such as
one of the applications has been amended and prosecuted under the IP
while the other application or applications were not, the application
first meets all the requirements for registration shall be allowed and
published for opposition in the IPO Gazette in accordance with these
The other applicant or applicants shall have the right to file a notice
of opposition, without need of paying the filing fee, to determine
or not any of the applicant/s and/or oppositor/s has the right to the
of the mark, and, all other issues including the registrability of the
Duration of registration. A certificate of registration granted to
an application filed on or before December 31, 1997 and therefore
on the effective date of the IP Code on January 1, 1998 shall be
to the same conditions for maintenance as provided in these Regulations
and shall have a term of twenty (20) years.
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
for renewal as a registration granted under the IP Code.
in the Supplemental Register. In compliance with the State policy
in the IP Code, the IPO shall endeavor to issue certificates of
that can stand up to scrutiny in infringement and other cases.
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
register are not registrable under the IP Code; and, (iii)
the Supplemental Register was abolished by the IP Code, all
for registration in the Supplemental Register which do not meet
for registration under the IP Code shall be rejected.
Renewal of a registration in the Supplemental Register. The
regulations shall apply to the renewal of a registration in the
Register under Republic Act No. 166:
Registrations subsisting on January 1, 1998. The
or extension thereof, in the Supplemental Register under Republic Act
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
for which it was granted. However, such registration shall no longer be
subject to renewal.
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:
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;
with all the requirements for renewal shall have been made by the
on or before December 31, 1998;
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,
The renewal herein
granted shall no longer be subject to renewal.
3.7.3. Notice to comply. For the effective implementation of
3.7.2 (b), all concerned Examiners together with the Chief of the
Examining Division of the former Bureau of Patents Trademarks and
Transfer have been directed to mail to the applicants the
notice to comply with requirements for renewal of registration,
extension thereof, on or before October 31, 1998. Further,
who have not received said notice may request for a copy thereof from
examiner concerned who shall issue said copy within two (2) working
from receipt of the request.
Repeals. All rules and regulations, memoranda,
and memorandum circulars and parts thereof inconsistent with these
particularly the Rules of Practice in Trademark Cases, as
are hereby repealed: Provided, That such earlier rules or parts
shall be continued only for the purpose of prosecuting applications for
registration in the principal register filed as of December 31, 1997
the applicants expressly elected to prosecute said applications under
Act No. 166: and, Provided, further, That there are no applicable
in these Regulations.
Separability. If any provision in these Regulations or
of such provision to any circumstance is held invalid, the
of these Regulations shall not be affected thereby.
Effectivity. These rules and regulations shall take
fifteen (15) days after publication in a newspaper of general
of _____________ 1998.
Amended by Office Order No. 17 dated 01 December 1998.