Rules and Regulations On Marks IPOPHL
Rules and Regulations On Marks IPOPHL
TABLE OF CONTENTS
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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.
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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
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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.
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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
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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.
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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.
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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.
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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
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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 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.
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mark described in the application or registration is being actually
used in the Philippines.
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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.
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PART 3 WHO MAY APPLY FOR A MARK
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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.
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PART 4 TRADEMARK APPLICATION
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authorized representative.
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foreign sounding.
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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
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PART 6 PROCEEDINGS IN THE EXAMINATION OF AN APPLICATION FOR
REGISTRATION
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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.
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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.
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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.
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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.
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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.
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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
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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.
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PART 8 EFFECT AND NOTICE OF REGISTRATION
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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.
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PART 9 USE OF 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 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
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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.
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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
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required fee, a new certificate of registration for the unexpired
period of the registration shall be issued to the assignee.
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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.
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PART 12 RENEWAL OF REGISTRATION
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
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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.
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PART 13 PETITIONS AND APPEAL
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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.
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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.
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PART 14 MISCELLANEOUS PROVISIONS
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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.
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