Rules and Regulations On Marks IPOPHL

PHILIPPINES
RULES AND REGULATIONS ON TRADEMARKS, SERVICE MARKS, TRADENAMES AND

MARKED OR STAMPED CONTAINERS
Done this 7th day of July 2017
TABLE OF CONTENTS
PART 1 REGISTRATION OF TRADEMARKS AND SERVICE MARKS

Rule 100 Title.
Rule 101 Definitions
Rule 102 Registrability
Rule 103 Criteria for Determining whether a Mark is Well-known
Rule 104 Trade Names or Business Names
PART 2 RIGHT TO A MARK

Rule 200 How Marks are Acquired
Rule 201 International Conventions and Reciprocity
Rule 202 Priority Right; Basis for Claiming Priority Right
Rule 203 Requirements for Applications Claiming Priority Right
Rule 204 Period to File Declaration of Actual Use.
Rule 205 Extension of Period to File Third (3rd) Year DAU, When
Allowed.
Rule 206 Renewal DAU.
Rule 207 Absence of Notice to File DAU, Not an Excuse.
Rule 208 Contents of the DAU.
Rule 209 Effect of Actual Use for Related Classes.
Rule 210 Evidence of Actual Use.
Rule 211 Declaration of Non-Use.
Rule 212 Period to File DNU.
Rule 213 Form and Contents of DNU.
PART 3 WHO MAY APPLY FOR A MARK

Rule 300 The Applicant
Rule 301 Assigned Marks
Rule 302 Representation; Address for Service
Rule 303 Applicant may be Represented by Attorney
Rule 304 Power of Attorney or Authorization
Rule 305 Death, Insanity, Incapacity of Applicant
Rule 306 Signature and Other Means of Self-identification
PART 4 TRADEMARK APPLICATION
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Rule 400 Application Requirements.
Rule 401 Office Application Form
Rule 402 Reproduction of the Mark.
Rule 403 Submission of Label.
Rule 404 Translation or Transliteration.
Rule 405 Classification of Goods and Services.
Rule 406 Broad Terms.
Rule 407 Single Registration for Goods and/or Services.
Rule 408 Division or Merger of Application/s.
PART 5 THE FILING DATE

Rule 500 Filing Date
Rule 501 Application Number and Filing Date
PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR

REGISTRATION
Rule 600 Application Prosecuted Ex Parte; Protests
Rule 601 Order of Examination; Priority of Action.
Rule 602 Jurisdiction of the Examiner.
Rule 603 Examination of the Application; Action by the Examiner.
Rule 604 Disclaimers.
Rule 605 Interview with the Examiners: When No Interview is
Permitted.
Rule 606 Period for Response, Action by Applicant.
Rule 607 Communications Other than the Original.
Rule 608 Re-examination.
Rule 609 Final Action.
Rule 610 Abandonment; Incomplete Response.
Rule 611 Revival of Abandoned Application.
Rule 612 Time Less than Four (4) Months; When Request for Extension
Should be Made.
Rule 613 Suspension of Action by the Examiner.
Rule 614 Allowance of Applications with a Claim of Priority Right.
Rule 615 Express Abandonment.
Rule 616 Amendments to the Application.
Rule 617 Amendments to Reproduction of Mark or Goods and/or
Services.
Rule 618 Manner of Making the Amendment.
Rule 619 Prohibition Against Marking of Papers or Records of the
Office by Applicants.
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PART 7 PUBLICATION, ALLOWANCE AND ISSUANCE OF CERTIFICATE OF
REGISTRATION
Rule 700 Publication in the IPO eGazette; End of Jurisdiction of the
Examiner
Rule 701 Examiners may Request the Remand of Allowed Application to
their Jurisdiction.
Rule 702 Publication for Opposition; Applications Confidential Prior
to Publication.
Rule 703 Allowance of Application and Issuance of Certificate of
Registration
PART 8 EFFECT AND NOTICE OF REGISTRATION

Rule 800 Rights Conferred
Rule 801 Duration
Rule 802 Certificate of Registration.
Rule 803 Contents of Certificate of Registration.
PART 9 USE OF MARK

Rule 900 Use of a Mark in a Different Form.
Rule 901 Use of a Mark for Goods Belonging to the Class Registered.
Rule 902 Use of a Mark by Related Company.
Rule 903 Use of Indications by Third Parties for Purposes Other Than
Those for Which the Mark is Used.
PART 10 VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER

BY THE REGISTRANT OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES
Rule 1001 Cancellation upon Petition by Registrant.
Rule 1002 Amendment or Disclaimer of Registration.
Rule 1003 Correction of Mistakes Made by the Office.
Rule 1004 Corrections of Mistakes Made by Applicant.
Rule 1005 Surrender, Cancellation, or, Amendment, or Removal from
the Register, Disclaimer, and Correction to be Given Publicity.
PART 11 RECORDING OF ASSIGNMENTS OF REGISTRATION, OR ANY OTHER

INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED MARK, INCLUDING
LICENSES; DIVISION OF REGISTRATION
Rule 1100 Assignment and Transfer of Application and Registration.
Rule 1101 Form of Assignment or Transfer.
Rule 1102 Recordal of Assignment or Transfer.
Rule 1103 Assignment, Other Instruments Affecting the Registration,
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or License, and Translation, to be Submitted in Original Copy.
Rule 1104 Date of Recordal of Documents
Rule 1105 A New Certificate of Registration Must be Issued to
Assignee.
Rule 1106 Action may be Taken by Assignee of Record in Any
Proceeding in the Office.
Rule 1107 Clearance of Trademark License Agreement Prior to
Recordal.
Rule 1108 Division or Merger of Registration/s.
Rule 1109 Cancellation of Original Certificate and Issuance of
Transfer Certificates of Registration.
Rule 1110 Contents of Transfer Certificates of Registration.
PART 12 RENEWAL OF REGISTRATION

Rule 1200 Request for Renewal.
Rule 1201 When to File Request for Renewal.
Rule 1203 Renewal Filed by Person Who is Not the Resident Agent of
Record.
Rule 1204 Certificate of Registration Issued Under Republic Act No.
166 to be Surrendered.
Rule 1205 Refusal of Renewal Registration; Appeal to the Director.
Rule 1206 Certificate of Renewal of Registration.
PART 13 PETITIONS AND APPEAL

Rule 1300 Nature of the Function of Examiners.
Rule 1301 Petition to the Director to Question the Correctness of
the Action of an Examiner on a Matter not Subject to Appeal.
Rule 1302 Appeals to the Director.
Rule 1303 Effect of a Final Decision of an Examiner Which is Not
Appealed.
Rule 1304 Time and Manner of Petition or Appeal.
Rule 1305 Appellant's Brief Required.
Rule 1306 Examiner's Answer.
Rule 1307 Appellant's Reply.
Rule 1308 Appeal to the Director General.
PART 14 MISCELLANEOUS PROVISIONS

Rule 1400 Applications Pending on Effective Date of the IP Code.
Rule 1401 Duration of Registration.
Rule 1402 Duration of Renewal of Registration Granted Under Republic
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Act No. 166.
Rule 1403 Registrations Subsisting on January 1, 1998.
Rule 1404 Repealing clause.
Rule 1405 Separability.
Rule 1406 Effectivity.
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PART 1 REGISTRATION OF TRADEMARKS AND SERVICE MARKS
Rule 100 Title.

These Regulations shall be known as the "Trademark Regulations of
2017".
Rule 101 Definitions

Unless otherwise specified, the following terms shall have the meaning
provided in this Rule:
(a) "Bureau or Office" means the Bureau of Trademarks of the
Intellectual Property Office of the Philippines;
(b) "Collective mark" means any visible sign designated as such in the
application for registration and capable of distinguishing the origin
or any other common characteristics, including the quality of goods
or services of different enterprises which use the sign under the
control of the registered owner of the collective mark;
(c) "Communication" shall mean any response filed with the Office
except compliance with filing date requirements;
(d) "Competent authority" for purposes of determining whether a mark
is well-known, means the courts, the Director General and the Director
of the Bureau of Legal Affairs;
(e) "Director' means the Director of the Bureau of Trademarks;
(f) "Director General" means the head of the Intellectual Property
Office of the Philippines;
(g) "Examiner' means the Trademark Examiner or any official or employee
of the Bureau of Trademarks authorized to examine applications for
registration or renewals thereof;
(h) "IP Code" means Republic Act No.8293, otherwise known as the
Intellectual Property Code of the Philippines, as amended;
(i) "IPO eGazette" means the electronic publication of the
Intellectual Property Office where all matters required to be
published under the IP Code shall be published;
(j) "Mark" means any visible sign capable of distinguishing the goods
(trademark) or services (service mark) of an enterprise and shall
include a stamped or marked container of goods;
(k) "IPOPHL" means the Intellectual Property Office of the
Philippines;
(l) "Regulations" mean these rules and regulations and other
subsequent issuances that may be formulated by the Director of
Trademarks and approved by the Director General;
(m) "Trade name" means the name or designation identifying or
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distinguishing an enterprise, also known or referred to as business
identifier;
(n) "Translation" means the process of translating as rendering text
from one language to another; and
(0) "Transliteration" means the process rendering or representing
words, letters or characters from one language to the corresponding
words, letters or characters of another language or alphabet.
Rule 102 Registrability

A mark cannot be registered if it:
(a) Consists of immoral, deceptive or scandalous matter, or matter
which may disparage or falsely suggest a connection with persons,
living or dead, institutions, beliefs, or national symbols, or bring
them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the
Philippines or any of its political subdivisions, or of any foreign
nation, or any simulation thereof;
(c) Consists of a name, portrait or signature identifying a particular
living individual except by the person's written consent; or the name,
signature, or portrait of a deceased President of the Philippines,
during the life of the surviving spouse, if any, except by the latter's
written consent;
(d) Is identical with a registered mark belonging to a different
proprietor or a mark with an earlier filing or priority date, in
respect of:
(i) The same goods or services, or
(ii) Closely related goods or services, or
(iii) If it nearly resembles such a mark as to be likely to deceive
or cause confusion;
(e) Is identical with, or confusingly similar to, or constitutes a
translation of a mark which is considered by the competent authority
of the Philippines to be well-known internationally and in the
Philippines, whether or not it is registered here, as being already
the mark of a person other than the applicant for registration, and
used for identical or similar goods or services: Provided, That in
determining whether a mark is well-known, account shall be taken of
the knowledge of the relevant sector of the public, rather than of the
public at large, including knowledge in the Philippines which has been
obtained as a result of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a
translation of a mark considered well-known in accordance with the
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preceding paragraph, which is registered in the Philippines with
respect to goods or services which are not similar to those with
respect to which registration is applied for: Provided, That use of
the mark in 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 likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature,
quality, characteristics or geographical origin of the goods or
services.
(h) Consists exclusively of signs that are generic for the goods or
services that they seek to identify;
(i) Consists exclusively of signs or of indications that have become
customary or usual to designate the goods or services in everyday
language or in bona fide and established trade practice;
(j) Consists exclusively of signs or of indications that may serve in
trade to designate the kind, quality, quantity, intended purpose,
value, geographical origin, time of production of the goods or
rendering of the services, or other characteristics of the goods or
services;
(k) Consists of shapes that may be necessitated by technical factors
or by the nature of the goods themselves or factors that affect their
intrinsic value;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.
As regards signs or devices mentioned in paragraphs U), (k), and (1),
nothing shall prevent the registration of any such sign or device
which has become distinctive in relation to the goods and/or services
for which registration is requested as a result of the use that has
been made of it in commerce in the Philippines. The Office may accept
as prima facie evidence that the mark has become distinctive, as used
in connection with the applicant's goods and/or services in commerce,
proof of substantially exclusive and continuous use thereof by the
applicant in commerce in the Philippines for five (5) years before the
date on which the claim of distinctiveness is made.
The nature of the goods or services to which the mark is applied will
not constitute an obstacle to registration.
Rule 103 Criteria for Determining whether a Mark is Well-known

In determining whether a mark is well-known, the following criteria
or any combination thereof may be considered:
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(a) the duration, extent and geographical area of any use of the mark,
in particular, the duration, extent and geographical area of any
promotion of the mark, including advertising or publicity and the
presentation, at fairs or exhibitions, of the goods and/or services
to which the mark applies;
(b) the market share, in the Philippines and in other countries, of
the goods and/or services to which the mark applies;
(c) the degree of the inherent or acquired distinction of the mark;
(d) the quality-image or reputation acquired by the mark;
(e) the extent to which the mark has been registered in the world;
(f) the exclusivity of registration attained by the mark in the world;
(g) the extent to which the mark has heen used in the world;
(h) the exclusivity of use attained by the mark in the world;
(i) the commercial value attributed to the mark in the world;
(j) the record of successful protection of the rights in the mark;
(k) the outcome of litigations dealing with the issue of whether the
mark is a well-known mark; and,
(l) the presence or absence of identical or similar marks validly
registered for or used on identical or similar goods or services and
owned by persons other than the person claiming that the mark is a
well-known mark.
Rule 104 Trade Names or Business Names

A name or designation may not be used as a trade name if its nature
or its use is contrary to public order or morals and if, in particular,
it is liable to deceive trade circles or the public as to the nature
of the enterprise identified by that name.
Notwithstanding any laws or regulations providing for any obligation
to register trade names, such names shall be protected, even prior to
or without registration, against any unlawful act committed by third
parties. In particular, any subsequent use of the trade name by a
third party, whether as a trade name or a mark or collective mark, or
any such use of a similar trade name or mark, likely to mislead the
public, shall be deemed unlawful.
The remedies provided for cancellation and infringement of marks in
Sections 153 to 156 and Sections 166 and 167 of the IP Code shall
apply to trade names mutatis mutandis.
Any change in the ownership of a trade name shall be made with the
transfer of the enterprise or part thereof identified by that name.
However, such transfer or assignment shall be null and void if it is
likely to mislead the public, particularly as regards the nature,
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source, manufacturing process, characteristics, or suitability of
purpose, of the goods and/or services to which the mark is applied.
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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

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 the 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 IP Code.
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

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.
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. However, the mark may be allowed
for publication for the purpose of opposition, but such publication
shall be withheld until it has been ascertained that the mark has been
registered in the country of origin of the applicant. The country of
origin of the applicant is the country in which the applicant is a
national, domiciled, or has a bona fide and effective industrial or
commercial establishment.
Nothing in this Rule shall entitle the owner of a registration granted
under these Regulations to sue for acts committed prior to the date
on which its 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
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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 itself of other remedies provided for under the law.
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 and shall not
thereafter serve as a basis for claiming a right of priority.
Rule 203 Requirements for Applications Claiming Priority Right

An application with a claim of priority right must be filed within six
(6) months from the date the earliest foreign application was filed.
If the fact of filing and/or registration is verifiable from the
official website of the foreign intellectual property office where the
earliest application was filed, the applicant is not required to submit
a certified copy of the foreign application or registration that serves
as basis of the claim of priority right. Otherwise, the applicant
shall be required to submit a photocopy of the foreign registration
and an English translation, if necessary, within six months from the
mailing date of the office action of the Examiner requiring the same,
subject to extension as provided under Rule 615.
Rule 204 Period to File Declaration of Actual Use.

The Office will not require any proof of use in commerce upon filing
of an application. All applicants or registrants shall file a
Declaration of Actual Use (DAU) of the mark with evidence to that
effect and upon payment of the prescribed fee on the following periods:
(a) Within three (3) years from the filing date of the application;
(b) Within one (1) year from the fifth anniversary of the registration;
(c) Within one (1) year from date of renewal;
(d) Within one (1) year from the fifth anniversary of each renewal;
otherwise, the application shall be refused registration or the
registered mark shall be removed from the Register by the Director.
Rule 205 Extension of Period to File Third (3rd) Year DAU, When Allowed.
For the DAU required to be filed within three (3) years from filing
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date of the application, a six (6)-month extension period may be
granted upon request of the applicant or registrant, provided such
request is made prior to the expiration of the three-year period and
the required fee is paid. Actual use of the mark may commence within
the extension period. The fee must be paid on the day of the filing
of the DAU or the request for extension of time to file the document.
The date of payment shall be considered as the date of filing of the
DAU.
Rule 206 Renewal DAU.

For registered marks due for renewal on 01 January 2017 onwards,
regardless of the filing date of the Request for Renewal, submission
of DAU referred to in Rule 204 (c) is required for purposes of
registration maintenance.
Rule 207 Absence of Notice to File DAU, Not an Excuse.

The Office may issue notices or reminders to applicants/registrants
regarding the timely filing of the DAU and which may be published in
the IPO Website or disseminated by other alternative modes, as may be
appropriate. However, the absence of such notice or reminder shall in
no case excuse the applicant or registrant from filing the DAU within
the prescribed period. The Office shall remove the mark from the
Register or refuse the registration of a pending application if the
applicant or registrant fails to file the required DAU in a timely
manner.
Rule 208 Contents of the DAU.

The declaration shall be under oath, and filed by the applicant or
registrant (or the authorized officer in case of a juridical entity)
or the attorney or authorized representative. The declaration must
refer to only one application or registration and must contain the
following:
(a) name and address of the applicant or registrant;
(b) declaration that the mark is in actual use in the Philippines;
(c) the list of goods and/or services for which the mark is used; and
(d) the name/s of the establishment/s and address/es where the products
are being sold or where the services are being rendered. If the goods
or services are available only by online purchase, the website must
be indicated on the form in lieu of the name or address of the
establishment or outlet.
The applicant or registrant may include other facts to show that the
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mark described in the application or registration is being actually
used in the Philippines.
Rule 209 Effect of Actual Use for Related Classes.

Actual use for some of the goods and/or services in the same class
shall constitute use for the entire class of goods and services. Actual
use for one class shall be considered use for related classes. In the
event that some classes are not covered in the declaration, a
subsequent declaration of actual use may be filed for the other classes
of goods or services not included in the first declaration, provided
that the subsequent declaration is filed within the three-year period
or the extension period, in case an extension of time to file the
declaration was timely made. If no subsequent declaration of actual
use for the other classes of goods and services is filed within the
prescribed period, the classes shall be automatically dropped from the
application or registration without need of notice to the applicant
or registrant.
Rule 210 Evidence of Actual Use.

The following shall be accepted as proof of actual use of the mark:
(a) labels of the mark as these are used;
(b) downloaded pages from the website clearly showing that the goods
are being sold or the services are being rendered in the Philippines;
(c) photographs (including digital photographs printed on ordinary
paper) of goods bearing marks as these are actually used or of the
stamped or marked container of goods and of the establishment/s where
the services are being rendered;
(d) brochures or advertising materials showing the actual use of the
mark on the goods being sold or services being rendered in the
Philippines;
(e) receipts or invoices of sale of the goods or services rendered or
other similar evidence of use, showing that the goods are placed on
the market or the services are available in the Philippines;
(f) copies of contracts for services showing the use of the mark.
The Director may, from time to time, issue a list of acceptable
evidence of use and those that will not be accepted by the Office.
Rule 211 Declaration of Non-Use.

In lieu of a DAU, an applicant or registrant, when warranted, shall
file a Declaration of Non-Use (DNU) indicating the ground/s and
justification therefor. Non-use of a mark may be excused if caused by
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circumstances independently of the will of its owner but in no case
shall lack of funds be an excuse for non-use of a mark.
Non-use of a mark may be excused in the following cases:
(a) where the applicant or registrant is prohibited from using the
mark in commerce because of a requirement imposed by another government
agency prior to putting the goods in the market or rendering of
services;
(b) where a restraining order or injunction was issued by the Bureau
of Legal Affairs, the courts, or quasi-judicial bodies prohibiting the
use of the mark; or
(c) where the mark is the subject of an opposition or cancellation
case.
Rule 212 Period to File DNU.

The period to file DNU are as follows:
(a) Within three (3) years from filing date of the application. However,
a six (6)-month extension period may be granted upon request of the
applicant or registrant made prior to the expiration of the three-year
period and the required fee is paid; or
(b) Within the prescribed periods mentioned in Rule 204 when use of a
registered mark or mark subject of an active application has been
interrupted or discontinued by a pending litigation.
Except in cases falling under (b) of the immediately preceding
paragraph, non-use of the mark shall not be allowed for a total of
more than six (6) years. For this purpose, actual use must commence
and the DAU filed within one (J.) year from the 5th anniversary of
registration, otherwise, the Office shall remove the mark from the
Register pursuant to Rule 207.
Rule 213 Form and Contents of DNU.

The DNU shall be under oath and shall clearly state the facts
prohibiting the actual use of the mark in commerce. The corresponding
fee for all the classes must also be paid upon filing of the
declaration.
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PART 3 WHO MAY APPLY FOR A MARK
Rule 300 The Applicant

The applicant may be a natural or juridical person. All applications
for a mark should be in the name of the applicant(s) who may sign the
application. If there is more than one applicant, all of them should
be named as applicants, but any applicant may sign the application for
and on behalf of all the applicants.
Rule 301 Assigned Marks

In case the whole interest in the mark is assigned, the application
may be filed in the name of the assignee who may sign the application.
In case the assignee is a juridical person, any officer thereof 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 domiciled or has no real and effective
commercial establishment in the Philippines, such applicant shall
designate in writing a resident representative who shall be served
with notices or processes in proceedings affecting the mark. The
written document, clearly indicating the name and address of the
representative, shall be submitted within two (2) months from filing
date without need of any notice from the Office.
Notices and/or processes may be served upon the person so designated
by leaving a copy thereof at the address specified in the last
designation filed. If the person designated cannot be found at the
address given in the last designation, such notice or process may be
served upon the Director.
Any subsequent changes concerning the appointment of the authorized
representative or attorney shall be made in writing, the necessary
document submitted to the Office, and the prescribed fee paid.
Rule 303 Applicant may be Represented by Attorney

The owner of a mark may file and prosecute the application for
registration without an attorney or representative, but the applicant
may be represented by any attorney or other authorized representative.
Rule 304 Power of Attorney or Authorization

At the time of filing of an application, no power of attorney or
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authorization is required. However, the Office may require any
attorney or other recognized person or authorized representative to
submit within two (2) months from notice a power of attorney or
authorization before the attorney or representative is allowed to take
an initial or further action on any application or registration.
A substitute or associate attorney may be appointed by an attorney
only upon the written authorization of the principal; but a third
attorney appointed by the second will not be recognized.
Rule 305 Death, Insanity, Incapacity of Applicant

When the applicant dies, becomes insane or is otherwise incapacitated,
the legally appointed executor, administrator, guardian, conservator
or representative of the dead or insane or incapacitated applicant may
prosecute the application on behalf of the heirs and successors-in-
interest of the applicant.
Rule 306 Signature and Other Means of Self-identification

Where a signature is required, the Office shall accept:
(a) A hand-written signature;
(b) The use 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; or
(c) Digital signature, subject to such issuances as may be subsequently
promulgated.
No attestation, notarization, authentication, legalization or other
certification of any signature or other means of self-identification
referred to in the preceding paragraphs will be required, except,
where the signature concerns the surrender of a registration.
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PART 4 TRADEMARK APPLICATION
Rule 400 Application Requirements.

All applications must be addressed to the Director and shall be in
Filipino or English and shall contain the following:
(a) a request for registration;
(b) the name, address and other contact details of the applicant;
(c) the name of a State of which the applicant is a national or has
domicile; and the name of a State in which the applicant has a real
and effective industrial or commercial establishment, if any;
(d) where the applicant is a juridical entity, the law under which it
is organized and existing;
(e) if the applicant is not domiciled in the Philippines, the
appointment of a resident agent or representative whose power of
attorney may be required by the examiner if necessary;
(f) where the applicant claims the priority of an earlier application,
a declaration claiming the priority of that earlier application,
indicating the following:
(i) the name of the state of the national office where the earlier
application was filed or if filed with an office other than a national
office. the name of that office;
(ii) the date on which the earlier application was filed; and
(iii) where available, the application number of the earlier
application;
(g) where the applicant 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 claimed and an indication, in respect of each
color, of the principal parts of the mark which are in that color;
(h) where the mark is a three-dimensional mark, a statement to that
effect;
(i) reproduction of the mark as provided in these Regulations or
subsequent issuances;
(j) transliteration or translation of the mark or of some parts of the
mark, as prescribed in these Regulations;
(k) the names 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 said classification to
which each group of goods or services belongs;
(l) where the application is for a collective mark, a designation to
that effect; and
(m) a signature by, or other self-identification of, the applicant or
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authorized representative.
Rule 401 Office Application Form

The Office shall make available a standard application form which
shall be made available in electronic format or in printed form. The
printed form may be reproduced by applicants and other persons at
their own cost.
Rule 402 Reproduction of the Mark.

One (1) reproduction of the mark shall be submitted upon filing of the
application which shall substantially represent the mark as actually
used or intended to be used on or in connection with the goods and/or
services of the applicant. The reproduction may be added or pasted on
the space provided for in the application form or printed on an
ordinary bond paper. The reproduction must be clear and legible,
printed in black ink or in color, if colors are claimed, and must be
capable of being clearly reproduced when published in the IPO eGazette.
An electronic copy of the reproduction may likewise be submitted in
lieu of the printed reproduction. The electronic reproduction should
be in .jpg format and must not exceed one (1) megabyte.
In the case of word marks or if no special characteristics have to be
shown, such as design, style of lettering, color, diacritical marks,
or unusual forms of punctuation, the mark must be represented in
standard characters. The specification of the mark to be reproduced
will be indicated in the application form and/or published on the
website.
The provisions of this Rule shall, however, be construed liberally in
determining whether the application shall be considered complete for
purposes of granting a filing date.
Rule 403 Submission of Label.

The applicant may submit the label as actually used or intended to be
used on the goods or a computer printout of the label.
The mark intended to be protected must be bigger and more dominant
than the generic term of goods, except in the case of medicine as
required by law.
Rule 404 Translation or Transliteration.

A translation or transliteration of the mark or of some parts of the
mark must accompany the application if the mark or of some parts of
the mark is/are in foreign word(s), letter(s) and character(s), or
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foreign sounding.
Rule 405 Classification of Goods and Services.

The applicant must indicate the goods and/or services for which the
registration is sought, grouped according to the classes of the Nice
Classification, together with the number of the class to which each
group of goods or services belongs. The Nice Classification shall
pertain to the latest edition published by the World Intellectual
Property Organization (WIPO).
The goods and/or services of registered marks which were classified
under previous editions of the Nice Classification shall, upon renewal
of registration, be reclassified by the Examiner consistent with the
latest edition thereof, subject to payment of the required fees if the
reclassification resulted in the addition of classes. Such
reclassification may also be requested by the registrant prior to the
renewal of the registration and allowed by the Office after examination
of the request and payment of the appropriate fees.
The Office may declare the acceptance of other terms for as long as
these may be classified under any of the classes of the Nice
Classification.
Rule 406 Broad Terms.

In any application, the use of broad terms in identifying the goods,
business or services shall be unacceptable. However, an applicant
whose application is based on foreign registration Zs shall be required
to specify the goods covered by such foreign registration/s in all
cases where the foreign registration/s used broad terms in identifying
the goods and/or services. Class headings may be accepted, but they
shall only cover the goods and/or services as stated and not all the
goods and/or services under such class and provided they do not mislead
as to the nature of the goods and/or services.
Rule 407 Single Registration for Goods and/or Services.

One (I) application 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 application shall result in one registration.
Rule 408 Division or Merger of Application/s.

Any application referring to several classes of goods and/or services
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referred to as the "initial application" may be divided by the
applicant into two (2) or more applications referred to as "divisional
applications" by distributing among the latter the classes referred
to in the initial application. However, a single class shall not be
subdivided, except where the Examiner determined that the goods and
or services fall under a different class.
The request to divide an application must be submitted at any time
prior to publication of the mark for opposition. Upon receipt of such
a request together with the corresponding payment, the Office shall
accordingly assign application numbers to the divisional applications,
but the filing date shall be the same as the filing date of the initial
application.
Upon request by the applicant and payment of the corresponding fee, a
locally filed multi-class application partly based on a foreign
application/registration and covering class/classes of goods and/or
services not included in the foreign application or registration shall
be divided into the following:
(a) application with class/classes of goods/services covered by
convention priority; and
(b) application with class/classes of goods/services not covered by
convention priority.
Only the divisional application/s covering class/classes of
goods/services included in the foreign application/registration shall
preserve the benefit of the right of convention priority. The
divisional application/s covering class/classes of goods/ services not
included in the foreign application/registration shall bear the filing
date of the initial application.
A request to merge separate applications belonging to the same
applicant may be filed at any time before publication of the mark for
opposition. A written request for merger shall be submitted by the
applicant and the required fees paid.
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PART 5 THE FILING DATE
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 received the payment
for the required fee and the following indications and elements in
English or Filipino:
(a) An application for the registration of a mark using the prescribed
form or using the online filing system;
(b) The identity of the applicant;
(c) Indications sufficient to contact the applicant or the applicant's
representative, if any;
(d) A reproduction of the mark for which registration is sought; and
(e) The list of the goods and/or services for which the registration
is sought.
Rule 501 Application Number and Filing Date

Before starting to examine the registrability of a mark, the Examiner
or such other personnel as the Director may authorize, shall examine
whether the application satisfies the requirements for the grant of a
filing date as provided in these Regulations. If the application does
not satisfy the filing date requirements, the Office shall notify the
applicant who shall, within a period of two (2) months from mailing
date of the notice, complete or correct the application as required;
otherwise, the application shall be deemed as not filed.
If the application did not satisfy the requirements for the 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 new filing date shall be the date on which the Office
received the completed or corrected application as specified in the
notice to the applicant.
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PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR
REGISTRATION
Rule 600 Application Prosecuted Ex Parte; Protests

An application for registration of a mark is prosecuted ex parte by
the applicant, that IS, there is no adverse party.
In an ex parte proceeding in the Office for the registration of a mark,
the Examiner represents the interest of the public and the applicant
or the attorney or authorized representative represents the
applicant's own interests.
During the examination process, no attention shall be given to
statements or protests of persons concerning pending applications to
which they are not parties, unless information shall have been
voluntarily communicated by the applicant.
Rule 601 Order of Examination; Priority of Action.

Applications shall be examined for registrability in the order in
which the complete requirements for grant of a 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 assigned for examination ahead of
the applications with lower application numbers, unless the filing
date of the application bearing the higher number is earlier than
those bearing a lower number.
Priority of action and/or examination may be granted upon petition
under oath with payment of fees and upon approval by the Examiner to
trademark applications falling under any of the following:
(a) Re-filing by the same registrant or assignee of a mark previously
registered but:
(i) removed from the Register for failure to file the 3rd year DAU or
DNU or meet the maintenance requirement; or
(ii) has expired due to non-filing or late filing of the renewal;
(b) Re-filing by the same applicant of a mark previously filed but:
(i) abandoned and can no longer be revived; or
(ii) refused for failure to file the 3rd year DAU or DNU;
(c) An application for registration of a mark, names or abbreviation
of names, logos of any nation, intergovernmental or international
organizations;
(d) An application for registration of a mark, names, abbreviation of
names, logos of any sports competition conducted within a short period
of time or when periodically conducted, the registration of the mark
23
is necessary to promote goodwill or image before the commencement of
the sports activity;
(e) An application for registration of a mark, names, abbreviation of
names, logos of product and services of applicants introduced and/or
participating in a trade mission and/or exposition local or abroad and
will be conducted within a short period of time;
(f) An application for registration of a mark, names, abbreviations
of names, logos of a religious, social or charitable, educational
activity the early registration of which is necessary to achieve its
purpose or objective;
(g) Domain names (as service mark); and
(h) Trademarks, service marks, and trade names used or to be used in
Information and Communications Technology (ICT) infrastructure.

The Examiners shall have original jurisdiction over the examination
of all applications for registration and over their allowance for
publication in the IPO eGazette 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
issue arising from their pending applications only with the respective
Examiners in charge or their supervisors and with no other person in
the Office.
Rule 603 Examination of the Application; Action by the Examiner.

If, after the examination, the application is found not to be
registrable for any reason, the applicant will be advised of the
reason/s therefor, and will be given such information and references
as may be helpful in the further prosecution of the application.
All Examiners are required to include all grounds of objection existing
at the time of the issuance of the first office action. Piecemeal
actions shall be prohibited.
Rule 604 Disclaimers.

The basic purpose of disclaimers is to make of record, that a
significant element of a composite mark is not being exclusively
appropriated apart from the composite. The following portions of a
mark, when forming part of the composite mark, must be disclaimed to
permit registration, namely:
(a) a generic term;
(b) a descriptive matter in the composite mark;
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(c) a customary term, sign or indication; or
(d) a matter which does not function as a trademark, or service mark
or a trade name.
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.
Where the Examiner has determined that any portion of a mark contains
unregistrable matter which must be disclaimed, the Examiner shall
communicate the findings to the applicant in the office action. If the
applicant fails to comply with the Examiner's requirement for a
disclaimer, the Examiner must make the requirement final if the
application is in condition for a final action.
Partial disclaimer may be allowed with respect to some classes or some
goods and/or services.
Rule 605 Interview with the Examiners: When No Interview is Permitted.

Interviews with Examiners concerning pending applications may be
granted upon written request specifying the query the applicant
intends to propound: Provided, That no interviews will be permitted
prior to the issuance of the first office action. The Examiner may
alternatively grant the interview or respond to the query in writing.
Should an interview be allowed, it shall be conducted within the
premises of the Office during regular office hours, as specified by
the Examiner.
Rule 606 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 must be complete,
and shall address all the issues raised by the Examiner, and may be
made with or without amendment. The period to respond may be extended
upon written request by the applicant and payment of the required fee
for an additional period of two (2) months. 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 607 Communications Other than the Original.

The Office shall accept communication sent to it by facsimile or by
electronic means subject to these Regulations and subsequent issuances
25
that may be promulgated. When the communication is made by facsimile,
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 facsimile by a machine of the
Office, the Examiner shall confirm the date of receipt of the facsimile.
The original copy of such communication may be required by the Office
to be submitted within one (1) month from date of receipt of the
facsimile. If the Office requires the original copy, the applicant
must provide such original within one (1) month from receipt of the
notice. If the original communication is not submitted when so required,
it shall be deemed withdrawn and expunged from the records. In all
cases, the burden of proof that such documents have been received by
the Office lies on the applicant.
Rule 608 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 609 Final Action.

On any subsequent re-examination or reconsideration, the Examiner may
state that the refusal of the registration or the submission of or
compliance with any requirement/s is final. Thus, the applicant's
recourse is limited to an appeal to the Director or to compliance with
the requirement/s made by the Examiner.
Rule 610 Abandonment; Incomplete Response.

If an applicant fails to respond or 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 on the day
immediately following the last day of the aforesaid period. The
applicant shall be notified accordingly.
Rule 611 Revival of Abandoned Application.

An abandoned application may be revived as pending within three (3)
months from the date of abandonment if it is shown to the satisfaction
of the Examiner that the delay was due to fraud, accident, mistake or
excusable negligence, and upon payment of the required fee; Provided,
That there shall be no revival of an abandoned application that had
26
been revived once before on the same issue.
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 had been
previously filed. Any application not revived within the specified
time will be deemed abandoned with finality upon the expiration of the
three-month period to revive. The applicant or the authorized
representative shall be notified accordingly.
Rule 612 Time Less than Four (4) Months; When Request for Extension
Should be Made.
The applicant may be required to prosecute
the application in a time shorter than four (4) 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 the response is required in
less than four (4) months, a maximum period of four (4) months,
including any extension, is allowed.
The time to reply, when a time less than four (4) 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 (4) months from the mailing date
of the action.
Rule 613 Suspension of Action by the Examiner.

Action by the Office 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 614 Allowance of Applications with a Claim of Priority Right.

If the only issue remaining in an application with a priority right
claim based on a foreign application is the registration of such
foreign application, the Examiner shall allow the application.
The Examiner shall verify whether or not the mark has been registered
from the online trademarks database of the foreign intellectual
27
property office where the application was filed. If the foreign
application has been registered, the allowed mark shall be published
for opposition upon payment of the required fees.
If the foreign application has not been registered at the time of
allowance or if the foreign intellectual property office does not have
an online trademarks database, the Examiner shall, in the Notice of
Allowance and Deferment, require the applicant to submit a photocopy
of the foreign registration within six (6) months from mailing date
of such notice. Upon request of the applicant and subject to the
payment of the required fee, the period to submit a copy of the foreign
registration may be extended for a period of one (1) year, counted
from the expiry of the initial period of six (6) months. If the
applicant does not request an extension or is unable to submit a copy
of the foreign registration within the extension period, the claim to
the right of priority shall be deemed waived. The application will
thereafter be published for opposition upon payment of the required
fees.
Rule 615 Express Abandonment.

An application may be expressly abandoned by filing with the Office a
written declaration of abandonment signed by the applicant or by the
authorized representative or agent and payment of the prescribed fee.
Rule 616 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 617 Amendments to Reproduction of Mark or Goods and/or Services.

Amendment/s requested during examination pertaining to the
reproduction of the mark may be permitted only if warranted, but may
not be made if the mark or the nature of the mark is substantially
altered.
Amendment by addition of goods and/or services related to those
originally filed and which fall under the same class may be allowed.
Amendment by deletion is likewise allowed.
Rule 618 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.
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Rule 619 Prohibition Against Marking of Papers or Records of the Office
by Applicants.
The applicant or the representative or agent shall not make any erasure,
addition, insertion, or mutilations of any papers or records of the
Office.
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PART 7 PUBLICATION, ALLOWANCE AND ISSUANCE OF CERTIFICATE OF
REGISTRATION
Rule 700 Publication in the IPO eGazette; End of Jurisdiction of the

Examiner
An application for registration is subject to opposition proceeding
before issuance of the Certificate of Registration. Thus, if after
examination or re-examination of an application for registration, it
should appear to the Examiner-in-charge that the mark is registrable,
it shall be published for opposition in the IPO eGazette. The applicant
shall be notified of such action accordingly.
The applicant shall, within two (2) months from mailing date of such
notice, pay the corresponding fee for the publication of the
application in the IPO eGazette; otherwise, the application shall be
declared abandoned. The abandoned application, however, may be revived
subject to the requirements specified in these Regulations.
The jurisdiction of an Examiner over an application ceases after the
Director has ordered the mark to be published for opposition.
Rule 701 Examiners may Request the Remand of Allowed Application to

their Jurisdiction.
After allowance or within one (1) month from publication of the allowed
application but before registration, the Examiner may again exercise
jurisdiction over the application upon written request by such
Examiner, and approval by the Director on the ground of newly
discovered objections to the registration of the mark.
After remand of an application, the amendment(s) recommended by the
Examiner, if any, may be approved by the Director and may be made
without withdrawing the allowance. The Examiner may likewise issue a
subsequent action on the basis of the newly discovered objection/s.
Rule 702 Publication for Opposition; Applications Confidential Prior

to Publication.
The Bureau shall take charge of all matters relating to the publication
for opposition of all marks and trade names as provided in these
Regulations.
Access to files of pending applications will not be given to anyone
without the written authority of the applicant prior to publication
for opposition of the mark, trade name, or other mark of ownership.
However, information on the name and address of the applicant, name
and address of the agent or authorized representative, if any, the
30
mark, the description of the mark, trade name or other mark of
ownership, the goods and/or services listed in the application and the
corresponding class number/ s, the application number and filing date
of the application shall be made available on the website of the Office.
Rule 703 Allowance of Application and Issuance of Certificate of

Registration
When no opposition is filed within thirty (30) days after the
publication for opposition, the mark is deemed registered on the next
calendar day following the expiration of the opposition period. In
cases where a motion for extension for the period to file an opposition
is granted by the Bureau of Legal Affairs, the mark is deemed
registered the day following the expiration of the extension period.
When an opposition is filed, a mark shall be considered registered on
the date the decision or final order giving due course to the
application becomes final and executory.
If the payment for the issuance of the Certificate of Registration has
not been paid, the Examiner shall send a notice thereof to the
applicant. The applicant shall pay the corresponding fee for the
issuance of the Certificate of Registration within two (2) months from
mailing date of the notice; otherwise the application shall be declared
abandoned. The abandoned application, however, may be revived subject
to the requirements of these Regulations.
The issuance of the Certificate of Registration shall be published in
the IPO eGazette and shall be entered in the records of this Office.
31
PART 8 EFFECT AND NOTICE OF REGISTRATION
Rule 800 Rights Conferred

The owner of a registered mark 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 similar signs or containers for
goods or services which are identical or similar to those in respect
of which the mark is registered, where such use would result in a
likelihood of confusion. In case of the use of an identical sign for
identical goods or services, a likelihood of confusion shall be
presumed.
The exclusive right of the owner of a well-known mark which is
registered in the Philippines, shall extend to goods and services
which are not similar to those in respect of which the mark is
registered: Provided, That use of the mark in 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 likely to be damaged
by such use.
Rule 801 Duration

The registration shall remain in force for ten (10) years, renewable
for periods of ten (10) years: Provided, That the requisite DAU as
provided for under these Regulations has been filed.
Rule 802 Certificate of Registration.

A certificate of registration of a mark shall be prima facie evidence
of the validity of the registration, the registrant's ownership of the
mark, and of the registrant's exclusive right to use the same in
connection with the goods or services and those that are related
thereto as specified in the certificate. For this purpose, a digitally
signed certificate of registration shall have the same legal effect
as a traditionally signed certificate.
After a mark, trade name or other mark of ownership has been registered,
all documents relating to the case are subject to general inspection,
and copies will be furnished upon written request and payment of the
required fees.
Rule 803 Contents of Certificate of Registration.

The certificate of registration of a mark shall include the following:
(a) reproduction of the mark;
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(b) registration number;
(c) the name of the registered owner;
(d) address of the registered owner, and if the registered owner's
address is outside the country, its address for service within the
country;
(e) the date of application;
(f) the date of registration;
(g) if priority is claimed, an indication of this fact, and the number,
date and country/office of the application, basis of the priority
claim;
(h) the list of goods and/or services in respect of which registration
has been granted, with the indication of the corresponding class or
classes; and
(i) disclaimer, color/ s claimed, description of the mark, if any,
translation/transliteration of the mark, if any, and such other data
as the Regulations may prescribe from time to time.
The certificate of registration or renewal registration, as far as
practicable, shall contain information on the periods for filing the
DAU as prescribed in these Regulations.
33
PART 9 USE OF MARK
Rule 900 Use of a Mark in a Different Form.

The use of the mark in a form different from the form in which it is
registered, but which does not alter its distinctive character, shall
not be a ground for cancellation or removal of the mark and shall not
diminish the protection granted to the mark.
Rule 901 Use of a Mark for Goods Belonging to the Class Registered.
The use of a mark in connection with one or more of the goods or
services 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 services belonging to the same class.
Rule 902 Use of a Mark by Related Company.

The use of a mark by a company related to the registrant or applicant
shall inure to the latter's benefit, and such use shall not affect the
validity of the mark or of its registration: Provided, That such mark
is not used in such manner as to deceive the public. If use of a mark
by a person is controlled by the registrant or applicant with respect
to the nature and quality of the goods and/or services, such use shall
inure to the benefit of the registrant or applicant.
Rule 903 Use of Indications by Third Parties for Purposes Other Than
Those for Which the Mark is Used.
Registration of the mark shall not confer on the registered owner the
right to preclude third parties from using bona fide their names,
addresses, pseudonyms, a geographical name, or exact 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.
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PART 10 VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER BY
THE REGISTRANT OR BY ASSIGNEE OF RECORD, CORRECTION OF MISTAKES

The Examiners shall have original jurisdiction over all matters
relating to voluntary surrender, voluntary cancellation, voluntary
amendment, and voluntary disclaimer of registration, and their
decisions, when final, shall be subject to appeal to the Director in
the same manner that final decisions of the Examiners in respect of
applications for registration may be appealed to the Director. In all
such matters, registrants or assignees, their attorneys or agents will
deal with the Examiners exclusively, or with such other officials and
employees who may be designated by the Director.
Rule 1001 Cancellation upon Petition by Registrant.

Upon petition by the registrant or the registrant's authorized
representative or agent, the Office may permit any registration to be
surrendered for cancellation, and forthwith the appropriate entries
shall be made in the records of the Office. The petition for
cancellation of registration shall be under oath.
Rule 1002 Amendment or Disclaimer of Registration.

Upon request of the registrant or the registrant's authorized
representative or agent, and payment of the prescribed fee, the Office,
for good cause, may permit any registration to be amended or to be
disclaimed in part: Provided, That the amendment or disclaimer does
not alter materially the character of the mark. The appropriate entry
shall be made in the records of the Office and a replacement
certificate may be issued upon request of the registrant and payment
of the prescribed fee. The replacement certificate shall expressly
state the fact that it is a replacement and shall reflect the amendment
or disclaimer made.
Rule 1003 Correction of Mistakes Made by the Office.

Whenever a material mistake in a registration through the fault of the
Office is clearly disclosed by the records of the Office, a new
certificate of registration may be issued in accordance with these
Regulations and without charge. The registration will be published
without charge.
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Rule 1004 Corrections of Mistakes Made by Applicant.
Whenever a mistake is made in a registration and such mistake occurred
in good faith through the fault of the applicant, the Office may issue
a certificate upon the payment of the prescribed fee: Provided, That
the correction does not involve any change in the registration that
requires republication of the mark. In case of mistake in the
application, the correction shall be entered accordingly upon payment
of the prescribed fee.
The petition for correction must be under oath and must specify the
mistake for which correction is sought, the manner in which it arose
and must state that it occurred in good faith.
Rule 1005 Surrender, Cancellation, or, Amendment, or Removal from the

Register, Disclaimer, and Correction to be Given Publicity.
Notice of the surrender, cancellation, or removal from the register,
amendment, disclaimer, and correction shall be published in the IPO
eGazette. The cost of publication shall be for the account of the
registrant or assignee of record in cases of amendment, disclaimer and
correction, except when the notice of correction refers to a mistake
of the Office.
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PART 11 RECORDING OF ASSIGNMENTS OF REGISTRATION, OR ANY OTHER
INSTRUMENT AFFECTING THE TITLE TO ANY REGISTERED MARK, INCLUDING
LICENSES; DIVISION OF REGISTRATION
Rule 1100 Assignment and Transfer of Application and Registration.

An application for registration of a mark, or its registration, may
be assigned or transferred with or without the transfer of the business
using the mark.
Such assignment or transfer shall, however, be null and void if it is
liable to mislead the public, particularly as to the nature, source,
manufacturing process, characteristics, or suitability of purpose, of
the goods or services to which the mark is applied.
Rule 1101 Form of Assignment or Transfer.

The assignment of the application for registration of a mark, or of
its registration, shall be notarized and require the signature of the
applicant, registrant, or the assignee of record in case of subsequent
assignment. Transfers by mergers or other forms of succession may be
evidenced by the deed of merger or by any document supporting such
transfer.
Rule 1102 Recordal of Assignment or Transfer.

Assignments and transfers shall have no effect against third parties
until they are recorded at the Office. Assignments and transfers of
registrations and applications for registration shall be recorded upon
payment of the required fee.
Rule 1103. Assignment, Other Instruments Affecting the Registration,

or License, and Translation, to be Submitted in Original Copy.
The original document of assignment, other instrument or license and
its translation, if necessary, is required to be submitted to and
shall be retained by the Office. A notice of recordal shall accordingly
be issued to the party filing the instrument.
Rule 1104 Date of Recordal of Documents

The date of recordal of an assignment, license or other document is
the date of receipt of the instrument in proper form and payment of
the prescribed fees.
Rule 1105 A New Certificate of Registration Must be Issued to Assignee.

Upon written request of an assignee of record, and upon payment of the
37
required fee, a new certificate of registration for the unexpired
period of the registration shall be issued to the assignee.
Rule 1106 Action may be Taken by Assignee of Record in Any Proceeding

in the Office.
Any action in any proceeding in the Office which mayor must be taken
by a registrant or applicant may be taken by the assignee to the
exclusion of the original owner, registrant, applicant or earlier
assignee, provided the assignment has been recorded. Unless such
assignment has been recorded, no assignee will be recognized to act
on the application or registration.
Rule 1107 Clearance of Trademark License Agreement Prior to Recordal.

Any trademark license agreement shall be applied for clearance with
the Documentation Information and Technology Transfer Bureau (DITTB)
of the Office and shall be recorded only upon certification by the
Director of the DITTB that the agreement does not violate the
prohibited clauses and that it includes the mandatory provisions under
Sections 87 and 88, respectively, of the IP Code.
Rule 1108 Division or Merger of Registration/s.

At any time during the life of a 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 following:
(a) name and address of the owner of record and the authorized
representative or agent of record;
(b) the mark;
(c) the number and the date of issuance of the certificate to be
divided; and
(d) the goods and/or services into which the registration is to be
divided, specifying the number of the class of said goods and/or
services according to the Nice Classification.
The Office may grant the request to divide the registration, provided
that the division shall not involve any change in the registration
that requires republication of the mark and provided that a single
class shall not be subdivided.
Separated registrations resulting from the division of registration
under this Rule may be merged upon written request under oath and
payment of the required fee.
38
Rule 1109 Cancellation of Original Certificate and Issuance of
Transfer Certificates of Registration.
Upon approval of the request to divide a registration and payment of
the required fee , the Director shall order that the original
certificate be cancelled and new certificates of registration be
issued for the remainder of the term covered by the original
certificate.
Rule 1110 Contents of Transfer Certificates of Registration.

The transfer certificates of registration shall include the following:
(a) a reproduction of the mark;
(b) transfer certificate registration numbers;
(c) the name of the registered owner;
(d) the address of the registered owner, and if such address is outside
the country, the address for service within the country;
(e) the name of the registered owner of the original certificate in
case the owner of the transfer certificates is a different person;
(f) the date of request for division of the original registration;
(g) the date of the issuance of the transfer certificate of
registration;
(h) the date of filing of the application and registration of the
original registration;
(i) if priority is claimed, an indication of this fact, and the number,
date and country/office of the application which is the basis of the
priority claim;
(j) the list of goods or services covered by the transfer certificate
of registration with the indication of the corresponding class or
classes; and
(k) such other data included in the original certificate of
registration and such other information as the Regulations may
prescribe from time to time.
39
PART 12 RENEWAL OF REGISTRATION
Rule 1200 Request for Renewal.

A registration may be renewed for periods of ten (10) years at its
expiration upon filing of a request and payment of the prescribed fee.
The request shall contain the following indications and/or supporting
documents:
(a) An indication that renewal is sought;
(b) The name, address and other contact details of the registrant or
successor-in-interest, hereafter referred to as the "right holder";
(c) The registration number;
(b) The filing date of the application which resulted in the
registration to be renewed;
(c) Where the right holder has an authorized representative or agent,
the name and address of that representative or agent;
(d) The recorded goods or services for which the renewal is requested,
grouped according to the classes of the Nice Classification; and
(e) A signature by the right holder or the right holder's authorized
representative or agent.
In case of material variations of the mark, a new application must be
filed.
Rule 1201 When to File Request for Renewal.

The request for renewal may be made at any time within six (6) months
before the expiration of the period for which the registration was
issued or renewed, or within six (6) months after such expiration,
subject to the payment of the prescribed additional fee or surcharge.

The Examiner shall have original jurisdiction over an application for
renewal registration, and the decision, when final, is subject to
appeal to the Director under the conditions specified in these
Regulations. The Examiner shall notify the registrant of the final
decision of refusal of the renewal and the reasons therefor.
Rule 1203 Renewal Filed by Person Who is Not the Resident Agent of
Record.
If the registrant, assignee or other owner of the mark which is the
subject of a petition for renewal registration is not domiciled in the
Philippines, and if the petition for renewal is filed by a person who
is not the authorized representative or agent of record, the power of
40
attorney appointing the person filing the petition as the
representative of the registrant must be filed and, upon payment of
the required fee, must be recorded before the Office can act upon the
petition for renewal.
Rule 1204 Certificate of Registration Issued Under Republic Act No.

166 to be Surrendered.
The certificate of registration granted under Republic Act No. 166
must be surrendered to the Office upon renewal, if the official copy
of such certificate of registration is not in the files of the Office.
After the surrender of the Certificate of Registration granted under
Republic Act No. 166, the applicant for renewal may, upon request,
obtain a certified copy thereof, upon payment of the appropriate fees.
Rule 1205 Refusal of Renewal Registration; Appeal to the Director.

The application for renewal may be refused by the Examiner for any
valid reason. The application for renewal may then be completed or
amended in response to the refusal, or the case may be appealed to the
Director if the refusal has become final.
Rule 1206 Certificate of Renewal of Registration.

The Office shall issue a certificate of renewal upon payment of the
required fee for the issuance thereof. The issuance of the certificate
of renewal shall be published in the IPO eGazette and shall be entered
in the records of this Office.
The certificate of renewal of registration shall contain the
following:
(a) registration number;
(b) the mark subject of the renewal;
(c) the date of original registration and renewal registration;
(d) the duration of the renewal registration;
(e) all the data required to be contained in a certificate of
registration provided in these Regulations including any limitation
contained in the order of the Director approving the renewal of the
registration.
41
PART 13 PETITIONS AND APPEAL
Rule 1300 Nature of the Function of Examiners.

The function of determining whether an application for registration
or renewal thereof should be allowed or denied under the facts
disclosed in the application and in the references consulted by the
Examiner and under the applicable law (statutory and decisional) is a
quasi-judicial function and involves the exercise of judicial
discretion.
Thus, with respect to such function, the Director cannot exercise
direct control and supervision over the Examiners but only general
supervision, exercised through a review of the recommendation they may
make for the grant of registration and of other actions, and through
a review of their adverse decisions by petition or appeal.
Rule 1301 Petition to the Director to Question the Correctness of the

Action of an Examiner on a Matter not Subject to Appeal.
A petition may be filed with the Director from any 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 thereof should accompany or be embodied in the petition. The
Examiner may be directed by the Director to furnish a written statement
setting forth the reasons for the decision upon the matter averred in
the petition. If the Examiner is required to submit a written statement,
a copy thereof shall be provided to the petitioner. The mere filing
of a petition will not stay the maximum period of four (4) months
counted from the mailing date of the Examiner's action subject of the
appeal to reply to an Examiner's action nor will it act as a stay of
other proceedings.
Rule 1302 Appeals to the Director.

Every applicant for the registration of a mark or other mark of
ownership may, upon the final refusal of the Examiner to allow
registration, appeal the matter to the Director. An appeal may also
be made to the Director from any adverse action of the Examiner in any
matter over which these Regulations give original jurisdiction to the
Examiner. A second adverse decision by the Examiner on the same grounds
may be considered as final by the applicant, petitioner, or registrant
for purposes of appeal.
42
Rule 1303 Effect of a Final Decision of an Examiner Which is Not
Appealed.
A final decision of an Examiner which is not appealed to the Director
within the prescribed period, or, if appealed, the appeal is not
granted, shall be considered as final for all intents and purposes,
and shall have the effect of res judicata in respect of any subsequent
action on the same subject matter.
If an application is considered abandoned for failure of the applicant
to respond to an action of the Examiner on the merits, such as citation
of confusingly similar marks, the order declaring the application as
abandoned, which has become final shall likewise have the effect of
res judicata.
Rule 1304 Time and Manner of Petition or Appeal.

Any petition or appeal must be taken by filing a petition or a notice
of appeal, as the case may be, and payment of the required fee within
two (2) months from the mailing date of the action appealed from. It
must specify the grounds upon which the petition or appeal is taken,
and must be signed by the petitioner or appellant or by the attorney
of record. The period for filing the petition or the notice of appeal
may be extended, upon written request and payment of the prescribed
fee, for a period of two (2) months. However, in no case shall the
period exceed four (4) months from the mailing date of the action
appealed from.
Rule 1305 Appellant's Brief Required.

In case of an appeal, the appellant shall, within two (2) months,
without extension, from the date of filing of the Notice of Appeal,
file a brief of the authorities and arguments on which the appellant
relies upon to maintain the appeal. In case of appellant's failure to
file the brief within the time allowed, the appeal shall be dismissed.
Rule 1306 Examiner's Answer.

If required by the Director, the Examiner shall submit a written
statement in answer to the appellant's brief within two (2) months
from the order of the Director to submit such answer. The appellant
shall be furnished a copy of such answer.
Rule 1307 Appellant's Reply.

In case of an appeal, the appellant may file a reply brief addressing
43
only such new points as may have been raised in the Examiner's answer,
within one (1) month from the date of receipt of the copy of such
answer.
Rule 1308 Appeal to the Director General.

The decision or order of the Director shall become final and executory
thirty (30) days after receipt of a copy thereof by the appellant,
unless within the said period, a motion for reconsideration is filed
with the Director, or an appeal to the Director General has been
perfected pursuant to the IPOPHL Rules on Appeal. Only one (1) motion
for reconsideration of the decision or order of the Director shall be
allowed. A motion for reconsideration, however, is not required for
purposes of filing an appeal to the Director General.
44
PART 14 MISCELLANEOUS PROVISIONS
Rule 1400 Applications Pending on Effective Date of the IP Code.

The following regulations shall apply to applications pending on the
effective date of the IP Code on January 1, 1998 hereinafter referred
to in this Rule as "pending applications":
(a) Filing Date of Pending Applications. -Pending applications shall
retain their priority date or original date of filing with the Bureau
of Patents, Trademarks and Technology Transfer.
(b) Interference. -In all cases where interference could have been
declared under Republic Act No. 166, as amended, and its implementing
rules and regulations, as amended, but the same could not be declared,
such as when one of the applications has been amended and prosecuted
under the IP Code while the other application or applications were
not, the application which first meets all the requirements for
registration shall be allowed and published for opposition in the IPO
eGazette in accordance with these Regulations. The other applicant or
applicants shall have the right to file a notice of opposition, without
need of paying the filing fee, to determine whether or not any of the
applicant/s and or oppositor/s has the right to the registration of
the mark, and, all other issues, including the registrability of the
mark.
Rule 1401 Duration of Registration.

A registration granted on or before December 31, 1997 and that remained
pending on the effective date of the IP Code on January 1,1998 shall
be subject to the same conditions for maintenance as provided in these
Regulations and shall have a term of twenty (20) years. The DAU
requirement for registrations that have a term of twenty (20) years
shall be filed within one (1) year from the 5th, 10th, and 15th
anniversaries of the date of registration of the mark.
Rule 1402 Duration of Renewal of Registration Granted Under Republic

Act No.166.
Marks registered under Republic Act No. 166 shall remain in force and
effect and shall be renewed within the time and manner provided for
renewal of registration by these Regulations. The renewal shall be for
a duration of ten (10) years. Trade names and marks registered in the
Supplemental Register under Republic Act No. 166 that were subsisting
as of January 1, 1998 shall remain in force but shall no longer be
subject to renewal.
45
Rule 1403 Registrations Subsisting on January 1, 1998.
The registration, or extension thereof, in the Supplemental Register
under Republic Act No. 166 of a trade name or mark which was subsisting
on the effectivity of the IP Code on January 1, 1998 shall remain in
force for the entire term for which it was granted. However, such
registration shall no longer be subject to renewal.
Rule 1404 Repealing clause.

All rules and regulations, orders, circulars and memoranda or parts
thereof that are inconsistent with these Regulations are hereby
repealed or modified accordingly.
Rule 1405 Separability.

If any provision In these Regulations or application of such provision
to any circumstance is held invalid, the remainder of these Regulations
shall not be affected thereby.
Rule 1406 Effectivity.

These Regulations shall take effect on 01 August 2017, after
publication in a newspaper of general circulation. The Office of the
National Administrative Register at the UP Law Center, University of
the Philippines, shall be furnished with three (3) copies hereof within
one (1) week after its publication.
46

Rules and Regulations On Marks IPOPHL

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Rules and Regulations On Marks IPOPHL

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PHILIPPINES

RULES AND REGULATIONS ON TRADEMARKS, SERVICE MARKS, TRADENAMES AND

PART 1 REGISTRATION OF TRADEMARKS AND SERVICE MARKS

PART 2 RIGHT TO A MARK

PART 3 WHO MAY APPLY FOR A MARK

PART 4 TRADEMARK APPLICATION

PART 5 THE FILING DATE

PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR

PART 8 EFFECT AND NOTICE OF REGISTRATION

PART 9 USE OF MARK

PART 10 VOLUNTARY SURRENDER OR CANCELLATION, AMENDMENT, DISCLAIMER

PART 11 RECORDING OF ASSIGNMENTS OF REGISTRATION, OR ANY OTHER

PART 12 RENEWAL OF REGISTRATION

PART 13 PETITIONS AND APPEAL

PART 14 MISCELLANEOUS PROVISIONS

Rule 100 Title.

Rule 101 Definitions

Rule 102 Registrability

Rule 103 Criteria for Determining whether a Mark is Well-known

Rule 104 Trade Names or Business Names

Rule 200 How Marks are Acquired

Rule 201 International Conventions and Reciprocity

Rule 202 Priority Right; Basis for Claiming Priority Right

Rule 203 Requirements for Applications Claiming Priority Right

Rule 204 Period to File Declaration of Actual Use.

Rule 206 Renewal DAU.

Rule 207 Absence of Notice to File DAU, Not an Excuse.

Rule 208 Contents of the DAU.

Rule 209 Effect of Actual Use for Related Classes.

Rule 210 Evidence of Actual Use.

Rule 211 Declaration of Non-Use.

Rule 212 Period to File DNU.

Rule 213 Form and Contents of DNU.

Rule 300 The Applicant

Rule 301 Assigned Marks

Rule 302 Representation; Address for Service

Rule 303 Applicant may be Represented by Attorney

Rule 304 Power of Attorney or Authorization

Rule 305 Death, Insanity, Incapacity of Applicant

Rule 306 Signature and Other Means of Self-identification

Rule 400 Application Requirements.

Rule 401 Office Application Form

Rule 402 Reproduction of the Mark.

Rule 403 Submission of Label.

Rule 404 Translation or Transliteration.

Rule 405 Classification of Goods and Services.

Rule 406 Broad Terms.

Rule 407 Single Registration for Goods and/or Services.

Rule 408 Division or Merger of Application/s.

Rule 500 Filing Date

Rule 501 Application Number and Filing Date

Rule 600 Application Prosecuted Ex Parte; Protests

Rule 601 Order of Examination; Priority of Action.

Rule 602 Jurisdiction of the Examiner.

Rule 603 Examination of the Application; Action by the Examiner.

Rule 604 Disclaimers.

Rule 605 Interview with the Examiners: When No Interview is Permitted.

Rule 606 Period for Response, Action by Applicant.

Rule 607 Communications Other than the Original.

Rule 608 Re-examination.

Rule 609 Final Action.

Rule 610 Abandonment; Incomplete Response.