| (as
amended by Office Order
No. 39
(2002), Order No. 40
(2002), Office Order No.
20
(2001), Office Order No.
08 (2000),
Office Order No. 17
(1998))
Whereas,
the State recognizes that an effective industrial property system is vital
to the development of domestic creativity, facilitates transfer of
technology, attracts foreign investments and ensures market access for our
products;
Whereas,
it is the policy of the State to streamline administrative procedures in
registering trademarks and enhance the enforcement of intellectual
property rights in the Philippines;
Now,
therefore,
pursuant to the provisions of Republic Act No. 8293, otherwise known as
the Intellectual Property Code of the Philippines, the following rules and
regulations on trademarks, service marks, trade names, and marked or
stamped containers are hereby promulgated:
PART
1
Registration
of Trademarks and Service Marks
RULE
10.-Title. — These regulations
shall be known as the "Trademark Regulations". [As
amended by Office Order No. 08 (2000)]
RULE
100.
Definitions. — Unless
otherwise specified, the following terms shall have the meaning provided
in this Rule:
(a)
"Bureau" means the Bureau of Trademarks of the
Intellectual Property Office;
(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)
"Competent authority" for purposes of determining whether
a mark is well-known, means the Court, the Director General, the Director
of the Bureau of Legal Affairs, or any administrative agency or office
vested with quasi-judicial or judicial jurisdiction to hear and adjudicate
any action to enforce the rights to a mark;
(d)
"Director" means the Director of the Bureau of
Trademarks;
(e)
"Director General" means the head of the Intellectual
Property Office;
(f)
"Examiner" means the trademark examiner or any official
or employee of the Bureau of Trademarks authorized to examine applications
for registration or renewals thereof;
(g)
"IP Code" means Republic Act No. 8293 otherwise known as
the Intellectual Property Code of the Philippines;
(h)
"IPO Gazette" means the Intellectual Property Office's
own publication where all matters required to be published under the IP
Code shall be published;
(i)
"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;
(j)
"Office" means the Intellectual Property Office;
(k)
"Regulations" means these set of rules and regulations
and such Rules of Practice in Trademarks and Service Marks as may be
formulated by the Director of Trademarks and approved by the Director
General; and
(l)
"Trade name" means the name or designation identifying or
distinguishing an enterprise, also known or referred to as business
identifier.
RULE
101.
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 his written consent, or the name, signature,
or portrait of a deceased President of the Philippines, during the life of
his widow, if any, except by written consent of the widow;
(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
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.
Geographical indications are indications which identify a good as
originating in the territory of a country which is a member of, or a
region or locality in that territory, where a given quality, reputation or
other characteristic of the good is essentially attributable to its
geographical origin.
(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 or 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 (j), (k), and (l),
nothing shall prevent the registration of any such sign or device which
has become distinctive in relation to the goods 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 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
102.
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 taken
into account:
(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 been 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 his mark is a well-known
mark.
RULE
103. Trade
Names or Business Names. — (a) A name or designation may not be used
as a trade name if by its nature or the use to which such name or
designation may be put, it 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.
(b)
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.
(c) 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
tradenames mutatis mutandis.
(d) 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 liable to mislead
the public, particularly as regards the nature, source, manufacturing
process, characteristics, or suitability for their purpose, of the goods
or services to which the mark is applied.
PART 2
Right to a Mark
RULE
200. How
Marks are Acquired. — The rights in a mark shall be acquired through
registration made validly in accordance with the law.
RULE
201.
International Conventions and
Reciprocity. — (a) Any person who is a national or who is domiciled
or has a real and effective industrial establishment in a country which is
a party to any convention, treaty or agreement relating to intellectual
property rights or the repression of unfair competition, to which the
Philippines is also a party, or extends reciprocal rights to nationals of
the Philippines by law, shall be entitled to benefits to the extent
necessary to give effect to any provision of such convention, treaty or
reciprocal law, in addition to the rights to which any owner of an
intellectual property right is otherwise entitled by the Intellectual
Property Code.
(b) The
registration of a mark of such person shall be independent of the
registration in the country of origin and the duration, validity or
transfer in the Philippines of such registration shall be governed by the
IP Code and these Regulations.
RULE
202.
Priority Right; Basis for
Claiming Priority Right. — (a) An application for registration of a
mark filed in the Philippines by a person referred to in Rule 201, and who
previously duly filed an application for registration of the same mark in
one of those countries, shall be considered as filed as of the day the
application was first filed in the foreign country.
(b)
No registration of a mark in the Philippines by a person described
in this rule shall be granted until such mark has been registered in the
country of origin of the applicant.
(c) The
country of origin of the applicant is the country in which he is a
national, domiciled, or has a bona fide and effective industrial or
commercial establishment.
(d) Nothing
in this rule shall entitle the owner of a registration granted under this
rule to sue for acts committed prior to the date on which his mark was
registered in the Philippines; Provided, That, notwithstanding the
foregoing, the owner of a well-known mark, as defined in the IP Code and
these Regulations, that is not registered in the Philippines, may, against
an identical or confusingly similar mark, oppose its registration, or
petition the cancellation of its registration or sue for unfair
competition, without prejudice to availing himself of other remedies
provided for under the law.
(e) In
like manner and subject to the same conditions and requirements, the
priority right may be based upon a subsequent regularly filed application
in the same foreign country: Provided, That any foreign application
that was made the basis of the priority right and filed prior to such
subsequent application has been withdrawn, abandoned, or otherwise
disposed of, without having been laid open to public inspection and
without leaving any rights outstanding, and has not served as a basis for
claiming a right of priority shall not thereafter serve as a basis for
claiming a right of priority.
RULE
203. Requirements for Applications Claiming Priority Right.- An
application with claim of priority right must be filed within six (6)
months from the date the earliest foreign application was filed. Without
need of any notice from the Office, Bureau or examiner, the applicant
shall file an English translation of a certified copy of any of the
following within three (3) months from the date of filing in the
Philippines:
a)
Foreign application showing the date of filing
b)
Foreign registration indicating the date of
filing
[as
amended by Office Order No. 39 (2002)]
RULE
204.
Declaration of Actual Use.
— The Office will not require any proof of use in commerce in the
processing of trademark applications. However, without need of any notice
from the Office, all applicants or registrants shall file a declaration of
actual use of the mark with evidence to that effect within three years,
without possibility of extension, from the filing date of the application.
Otherwise, the application shall be refused or the mark shall be removed
from the register by the Director motu proprio.
RULE
205.
Contents of the Declaration and Evidence of Actual Use. — The
declaration shall be under oath, must refer to only one application or
registration, must contain the name and address of the applicant or
registrant declaring that the mark is in actual use in the Philippines,
list of goods where the mark is attached; list the name or names and the
exact location or locations of the outlet or outlets where the products
are being sold or where the services are being rendered, recite sufficient
facts to show that the mark described in the application or registration
is being actually used in the Philippines and, specifying the nature of
such use. The declarant shall attach five labels as actually used on the
goods or the picture of the stamped or marked container visibly and
legibly showing the mark as well as proof of payment of the prescribed
fee.
[As
amended by Office Order No. 08 (2000)]
PART 3
Who May Apply for a Mark
RULE
300. The
Applicant. — (a) Applicant may be a person or juridical person.
(b) Unless
modified by this Chapter, all applications for a mark should be in the
name of the applicant(s) who may sign the application. If there are more
than one applicant, all of them should be named as applicant but anyone
may sign the application for and in behalf of all the applicants.
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, he shall designate
by a written document filed in the Office, the name and address of a
Philippine resident who may be served notices or process in proceedings
affecting the mark. The written document shall be submitted to the Office
within sixty (60) days from filing date without need of any notice from
the Office. Such notices or services 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 so designated cannot be found at the
address given in the last designation, such notice or process may be
served upon the Director. [As
amended by Office Order No. 08 (2000)]
RULE
303.
Applicant may be represented
by attorney. — The owner of a mark may file and prosecute his own
application for registration, or he may be represented by any attorney or
other person authorized to practice in such matters by the Office. The
Office shall not aid in the selection of an attorney or agent other than
the furnishing of the list of Attorneys or agents authorized to practice
before the Office.
RULE
304. Power
of attorney or Authorization. — At the time of filing of an
application, no power of attorney or authorization is required. However,
the Office may require any attorney or other recognized person to submit
within sixty (60) days from notice a power of attorney or authorization
before he will be allowed to take an initial or further action in any
application or registration.
A
substitute or associate attorney may be appointed by an attorney only upon
the written authorization of his principal; but a third attorney appointed
by the second will not be recognized.
[As
amended by Office Order No. 08 (2000)]
RULE
305. Death,
insanity, incapacity of applicant. — When the applicant dies,
becomes insane or otherwise incapacitated, the legally appointed executor,
administrator, guardian, conservator or representative of the dead or
insane or incapacitated applicant may prosecute the application in behalf
of the heirs and successors-in-interest of the applicant.
RULE
306.
Signature and other means of
Self-identification. — (a) Where a signature is required, the Office
shall accept:
(1)
A hand-written signature; or
(2)
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.
(b) 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.
PART
4 Trademark
Application
RULE
400.
Requirements of application.
— 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 and address of the applicant;
(c)
the name of a State of which the applicant is a national or where
he 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)
the appointment of an agent or representative, if the applicant is
not domiciled in the Philippines;
(f)
where the applicant claims the priority of an earlier application,
a declaration claiming the priority of that earlier application, together
with an indication of:
—
the name of the state with whose national Office the earlier
application was filed or if filed with an Office other than a national
Office, the name of that Office;
—
the date on which the earlier application was filed; and
—
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)
a reproduction of the mark and facsimiles thereof as provided in
these Regulations;
(j)
a 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;
(m)
a signature by, or other self-identification of, the applicant or
his representative;
(n)
Power of Attorney if the filing is through a representative; and
(o)
sworn statement that the applicant is a small entity if such be the
fact.
RULE
401. Office
Application Form. — For the convenience of applicants, the Office
shall draw up and make available a standard application form which may be
reproduced at will by applicants and other persons at their own cost.
RULE
402. Label.
— The applicant may include the label as actually used or intended to be
used on the goods or a copy or duplicate made by photo engraving or some
similar process.
The
mark must be bigger and more dominant than the generic term of goods
except in the case of medicine as required by law.
RULE
403.
Drawing. — (a) The
drawing of the mark shall be substantially exact representation thereof as
actually used or intended to be used on or in connection with, the goods
or services of the applicant.
(b) A
typed drawing may be accepted by the Examiner if no special
characteristics have to be shown such as design, style of lettering,
color, diacritical marks, or unusual forms of punctuation.
A
computer print-out may also be accepted by the Examiner if it
substantially complies with the requirement that it must be the exact
representation of the mark.
(c) The
provisions of this Rule shall, however be construed liberally in
determining whether the applications shall be considered complete for the
purpose of granting a filing date.
RULE
404.
Drawing for a service mark
may be dispensed with in certain cases. — The drawing of a service
mark may be dispensed with but the application must contain an adequate
description of such mark.
RULE
405.
Drawing to be on Bristol
board. — The Drawing must be made upon pure white paper of a
thickness of a Bristol board. The surface of the paper must be calendered
and smooth.
RULE
406. Size
of board; "sight". — The size of a sheet on which a
Drawing is made must be exactly two hundred ten millimeters (210 mm) by
two hundred ninety-seven millimeters (297 mm) or the size of an A4 paper.
Nineteen millimeters (19 mm) from its edges, a single marginal line is to
be drawn, leaving the "sight" precisely one hundred seventy-two
millimeters (172 mm) by two hundred fifty-nine millimeters (259 mm).
Within this margin all work and signatures must be included. One of the
shorter sides of the sheet should be regarded as its top.
RULE
407.
Drawing to be with the Pen or by other processing giving
satisfactory results. — If colors are not claimed, all Drawings must
be made with pen only or by a process which will give them satisfactory
reproduction characteristics. Every line and letter, signatures included,
must be absolutely black. This direction applies to all lines, however
fine, and to shading. All lines must be clean, sharp, and solid, and they
must not be too fine or crowded. Surface shading, when used, should be
open.
RULE
408. The
Name of the Owner to be within Marginal Lines. — The name of the
proprietor of the trademark or service mark trade name must be within the
marginal lines and should not encroach upon the drawing. It should be
signed by the owner or his Attorney of record. However, a printed or
stamped signature or the use of seal accompanied by an indication in
letters of the name of signatory is also accepted.
RULE
409. When
board may be turned on its side. — When the view is longer than the
width of the sheet, the sheet should be turned on its side.
RULE
410.
Manner of mailing the Drawing
to the Bureau. — Drawing transmitted to the Office should be sent
flat, protected by a sheet of heavy binder’s board, or should be rolled
for transmission in a suitable mailing tube. They should never be folded.
RULE
411. Color.
— Where color is a material feature of the mark as used or intended to
be used, the color or colors employed may be actually reproduced in the
drawings and facsimiles. Otherwise, a statement must be made giving the
name or names of the color or colors claimed indicating the principal part
or parts of the mark which are in such color or colors.
RULE
412.
Informal Drawing. — A
Drawing not executed in conformity with the foregoing rules may be
accepted for the purpose of examination, but the Drawing must be corrected
or a new one furnished, as may be required, before the mark can be
published for opposition or the application allowed. Substitute Drawings
will not be accepted unless they have been required by the Examiner or
unless correction of original Drawing would require that the mark or trade
name be substantially entirely redrawn.
RULE
413. Use
of an old Drawing in a new application. — In an application filed in
place of an abandoned or rejected application, a new complete application
is required, but the old Drawing, if suitable, may be used. The
application must be accompanied by a request for the transfer of the
Drawing, and by a permanent photographic copy, or an order for such copy,
of the Drawing to be placed in the original file. A drawing so transferred
or to be transferred cannot be amended.
RULE
414. The
small facsimiles of the Drawing, how prepared. — The ten small
facsimiles of the Drawing must be printed in black ink or in color, if
colors are claimed, one facsimile on Bristol board and the other nine
facsimiles on an ordinary coupon bond paper and must be capable of being
satisfactorily reproduced when published in the IPO Gazette. The size of
the sheet on which these facsimiles are to be printed must be seventy
millimeters (70 mm) long and thirty-five millimeters (35 mm) wide.
RULE
415.
Translation/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 foreign word(s), letter(s) and character(s), or foreign
sounding.
Transliteration
is an act, process or instance of representing or spelling of words,
letters or characters of one language in the letters and characters of
another language or alphabet.
Translation
is an act, process or instance of translating as rendering from one
language or representational system into another.
RULE
416. Nice
Classification. — The applicant must indicate the 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 Nice Classification to which each group of goods or services
belongs.
CLASSIFICATION OF GOODS
TITLE Class
1 Chemical
products used in industry, science, photography, agriculture,
horticulture, forestry; artificial and synthetic resins; plastics in the
form of powders, liquids or plates, for industrial use; manures (natural
and artificial); fire extinguishing compositions; tempering substances and
chemical preparations for soldering; chemical substances for preserving
foodstuffs; tanning substances; adhesive substances used in industry.
2 Paints,
varnishes, lacquers, preservatives against rust and against deterioration
of wood; coloring matters; dyestuffs; mordants; natural resins; metals in
foil and powder form for painters and decorators
3 Bleaching
preparations and other substances for laundry use; cleaning, polishing,
scouring and abrasive preparations; soaps; perfumery; essential oils,
cosmetics, hair lotions, dentrifices
4 Industrial
oils and greases (other than edible oils and fats and essential oils
);lubricants; dust laying and absorbing compositions; fuels (including
motor spirit) and illuminants; candles, tapers, nightlights and wicks
5 Pharmaceutical,
veterinary and sanitary substances; infants’; and invalids’ foods;
plasters, material for bandaging; material for stopping teeth, dental wax;
disinfectants; preparations for killing weeds and destroying vermin
6 Unwrought
and partly wrought common metals and their alloys; anchors, anvils, bells,
rolled and cast building materials; rails and other metallic materials for
railway tracks; chains (except driving chains for vehicles); cables and
wires (non-electric); lock-smiths’ work ; metallic pipes and tubes;
safes and cash boxes; steel balls; horseshoes; nails and screws; other
goods in non-precious metal not included in other classes; ores
7 Machines
and machine tools; motors (except for land vehicles); machine couplings
and belting (except for land vehicles); large size agricultural
implements; incubators
8 Hand
tools and instruments; cutlery, forks and spoons; side arms
9 Scientific,
nautical, surveying and electrical apparatus and instruments (including
wireless), photographic, cinematographic, optical, weighing, measuring,
signalling, checking (supervision), life saving and teaching apparatus and
instruments; coin or counter-freed apparatus; talking machines; cash
registers; calculating machines; fire-extinguishing apparatus
10 Surgical,
medical, dental and veterinary instruments and apparatus (including
artificial limbs, eyes and teeth)
11 Installations
for lighting, heating, steam generating, cooking, refrigerating, drying,
ventilating, water supply and sanitary purposes
12 Vehicles;
apparatus for locomotion by land, air or water
13 Firearms;
ammunition and projectiles; explosive substances; fireworks
14 Precious
metals and their alloys and goods in precious metals or coated therewith (
except cutlery, forks and spoons); jewelry, precious stones; horological
and other chronometric instruments
15 Musical
instruments (other than talking machines and wireless apparatus)
16 Paper
and paper articles, cardboard and cardboard articles; printed matter,
newspaper and periodicals, books; bookbinding materials; photographs;
stationery, adhesive materials (stationery); artists’ materials; paint
brushes; typewriters and Office requisites (other than furniture);
instructional and teaching material (other than apparatus);playing cards;
(printers’) type and cliches (stereotype)
17 Gutta
percha, india rubber, balata and substitutes, articles made from these
substances, and not included in other classes; plastics in the form of
sheets, blocks and rods, being for use in manufacturers; materials for
packing, stopping or insulating; asbestos, mica and their products; hose
pipes (non-metallic)
18 Leather
and imitations of leather, articles made from these materials, and not
included in other classes; skins, hides, trunks and travelling bags;
umbrellas, parasols and walking sticks; whips, harness and saddlery
19 Building
materials, natural and artificial stone, cement, lime, mortar, plaster and
gravel; pipes of earthenware or cement; road-making materials; asphalt,
pitch and bitumen; portable buildings; stone monuments; chimney pots
20 Furniture,
mirrors, picture frames; articles (not included in other classes) of wood,
cork, reeds, cane, wicker, horn, bone, ivory, whale-bone, shell, amber,
mother-of-pearl, meerschaum, celluloid, substitutes for all these
material, or of plastic
21 Small
domestic utensils and containers (not of precious metal, nor coated
therewith);combs and sponges; brushes (other than paint brushes);brush-making
materials; instruments and materials for cleaning purposes; steel wool;
unworked or semi-worked glass (excluding glass used in building);
glassware, porcelain and earthenware not included in other classes
22 Rope,
string, nets, tents, awnings, tarpaulins, sails, sacks; padding and
stuffing materials (hair, capoc, feathers, seaweeds, etc.); raw textile
materials
23 Yarns,
threads
24 Tissues
(piece goods); bed and table covers; textile articles not included in
other classes
25 Clothing,
including boots, shoes and slippers
26 Lace
and embroidery, ribbons and braids; buttons, press buttons, hooks and
eyes, pins and needles; artificial flowers
27 Carpets,
rugs, mats and matting; linoleums and other materials for covering
existing floors; wall hangings (non-textile)
28 Games
and playthings; gymnastic and sporting articles (except clothing);
ornaments and decorations for Christmas trees
29 Meat,
fish, poultry and game; meat extracts; preserved, dried and cooked fruits
and vegetables; jellies, jams; eggs; milk and other dairy products; edible
oils and fats; preserves, pickles
30 Coffee,
tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and
preparations made from cereals; bread, biscuits, cakes pastry and
confectionery, ices; honey, treachel; yeast, baking-powder; salt mustard;
pepper, vinegar, sauces; spices; ice
31 Agricultural,
horticultural and forestry products and grains not included in other
classes; living animals; fresh fruits and vegetables; seeds; live plants
and flowers; foodstuffs for animals, malt
32 Beer,
ale and porter; mineral and aerated waters and other non-alcoholic drinks;
syrups and other preparations for making beverages.
33 Wines,
spirits and liqueurs
34 Tobacco,
raw or manufactured; smokers’ articles; matches
(b)
CLASSIFICATION OF BUSINESS OR SERVICES
35 Advertising
and business
36 Insurance
and financial
37 Construction
and repair
38 Communication
39 Transportation
and storage
40 Material
treatment
41 Education
and entertainment
42 Miscellaneous
RULE
417. Broad
terms. — In any application, the use of broad terms in identifying
the goods, business or services shall be unacceptable. Applicants whose
application are based on foreign registration shall be required to specify
the goods covered by such foreign registration in all cases where the
foreign registration used broad terms in identifying the goods, business
or services.
RULE
418. Single
registration for goods and/or services. — One (1) 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 an application shall result in one
registration.
RULE
419.
Division of Applications.
— (a) Any application referring to several goods or services referred to
as the "initial application" may be divided by the applicant
into two (2) or more applications hereafter referred to as the
"divisional applications" by distributing among the latter the
goods or services referred to in the initial application.
(b)
A single class shall not be subdivided.
(c)
The divisional applications must be submitted before examination of
the initial application or within two (2) months from mailing date of the
first action of the Bureau.
(d)
Upon receipt of the divisional applications, the Office shall
cancel the initial application together with its application number. New
application numbers shall be given to the divisional applications but the
filing date shall be the same as the filing date of the initial
application. The divisional applications shall likewise preserve the
benefit of the right of priority of the initial application.
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 express or implicit indication that the registration of a mark
is sought;
(b)
The identity of the applicant;
(c)
Indications sufficient to contact the applicant or his
representative, if any;
(d)
A reproduction of the mark whose registration is sought; and
(e)
The
list of the goods or services for which the registration
is sought.
RULE
501.
Application Number and Filing
Date. — (a) Before starting to examine the registrability of a mark,
the Examiner or such other personnel as 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 Bureau shall notify the
applicant who shall, within a period of one (1) month from mailing date of
the notice, complete or correct the application as required; otherwise,
the application shall be considered withdrawn.
(b) If
the application did not satisfy the requirements for grant of a filing
date at the time that the filing fee and other indications were received
by the Office, the filing date that was given shall be cancelled and a new
filing date shall be entered in the records of the Office. The 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.
PART 6
Proceedings in the Examination
of an Application for Registration
CHAPTER
1
Nature
of the Proceedings
RULE
600.
Application prosecuted ex
parte; Protests. — An application for registration is prosecuted ex
parte by the applicant; that is, the proceedings are like a lawsuit in
which there is a plaintiff (the applicant) but no defendant, the court
itself (the Examiner) acting as the adverse party.
No
attention shall be paid to ex parte statements or protests of
persons concerning pending applications to which they are not parties,
unless information of the pendency of these applications shall have been
voluntarily communicated by the applicants.
RULE
601.
Proceedings a contest between
Examiner and the Applicant. — An ex parte proceeding in the
Office for the registration of a mark is a law contest between the
Examiner, representing the interest of the public and the applicant (or
his attorney), representing his own private interests.
RULE
602.
Applicant supposed to look
after his own interests. — The Office, represented by the Examiner,
is not supposed to look after the interest of an applicant. The law
imposes that duty upon the applicant himself. The Examiner is charged with
the protection of the interests of the public and hence must be vigilant
to see that no registration issues for a mark contrary to law and these
Regulations.
RULE
603.
Preliminary adverse action of
the Examiner valuable to Applicant. — The positive value of a
preliminary adverse action of the Examiner should be fully appreciated by
the applicant or his attorney. A hard-fought application will produce a
registration much more likely to stand in court than a registration which
has slid through the Office easily. The reason for this is that every
point raised by the Examiner and finally decided by the Office in favor of
the applicant will give the applicant a prima facie standing on that point
in court.
The
Office is empowered by law to pass upon applications for registration and,
because of the authority vested in it, its decisions with respect to the
grant of a registration, or on any point connected with it, are presumed
to be correct by the courts.
RULE
604. A
preliminary rejection should not be taken literally; Examiner is only
trying to be helpful. — A preliminary rejection by the Examiner is
never to be taken literally. An applicant should remember that the
Examiner may not be actually rejecting his application. The Examiner may
in fact be quite prepared to admit the application, and is only trying to
give the applicant a chance to explain away some reference or some
difficulty rather than have him wait until the registration is granted and
become involved in a litigation, when it may then be difficult for him to
make the explanation.
CHAPTER 2 Manner
of Examination of an Application for Registration; Action by the Examiner;
Response by the Applicant; Abandonment; Revival
RULE
605. Order
of examination; priority of action. — (a) Applications shall be
examined for registrability in the order in which the complete
requirements for grant of filing date are received by the Office.
Ordinarily, the order of the application number assigned to them by the
Office will be followed and no application bearing a higher application
number shall be examined in advance of the applications with lower
application numbers unless the filing date of the application bearing the
higher number is earlier than those bearing a lower number.
(b) Priority
of action and/or examination may be granted upon petition under oath with
payment of fees and upon order of the Director, to trademark applications
falling under any of the following:
1.
Re-filing by the same registrant or assignee of a mark previously
registered but cancelled for failure to meet the maintenance requirement.
2.
Re-filing by the same applicant of a mark previously filed but
abandoned and can no longer be revived.
3.
An application for registration of a mark, names or abbreviation of
names, logos of any nation, intergovernmental or international
organizations.
4.
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 TM registration is necessary to
promote goodwill or image before the commencement of the sports activity.
5.
An application for registration of 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.
6.
An application for registration of 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.
7.
Domain names (as service mark); and,
8.
Trademarks, servicemarks, and tradenames used or to be used in
Information and Communications Technology (ICT) infrastracture.
[As
amended by Office Order No. 20 (2001)]
RULE
606.
Jurisdiction of the Examiner.
— The Examiners shall have original jurisdiction over the examination of
all applications for registration and over their allowance for publication
in the IPO Gazette for purposes of opposition. Their decision, when
final, shall be subject to petition and appeal to the Director.
Applicants, their attorneys or agents shall take up the problems arising
from their pending applications only with the respective Examiners in
charge and with no other person in the Office.
RULE
607.
Examination of the
application; Action by the Examiner. —
(a)
If, after the examination, the applicant is found not entitled to
registration for any reason, he will be so notified by the Examiner. He
will be advised of the reasons therefor and of any formal requirements or
objections, and he will be given such information and references as may be
helpful to him in the further prosecution of his application.
(b) All
Examiners are required to include all grounds of objection existing at the
time of the issuance of an action in that action. Piece meal action shall
be prohibited.
Rule
608. 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; (c) 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 determines that any portion of a mark contains unregistrable
matter which must be disclaimed, he shall communicate his finding to the
Applicant by means of an Action document.
If the applicant fails to respond within the time allowed under
these Rules, the finding of the examiner shall become final and the
unregistrable matter shall be disclaimed.
[as
amended by Office Order No. 39 (2002)]
RULE
609.
Interview with the Examiners:
when no interview is permitted. — Interviews with Examiners
concerning applications pending before the Office can be held only upon
written request specifying the query he would want to propound and after
payment of the required fee, but in respect of which the Examiner has the
discretion to grant the interview or instead reply to the query in
writing. The interview shall take place within the premises of the Office
and during regular office hours as specified by the Examiner. All
interviews or conferences with Examiners shall be reduced to writing and
signed by the Examiner and the applicant immediately after the conference.
Such writing shall form part of the records of the Office. Interviews for
the discussion of pending applications shall not be held prior to the
first official action thereon.
RULE
610. Period
for response, action by applicant. — The applicant has two (2)
months from the mailing date of any action of the Examiner to respond
thereto. Such response may be made with or without amendment and must
include such proper action by the applicant as the nature of the action of
the Examiner and the condition of the case may require. The period to
respond may be extended upon written request and upon payment of the
required fee but in no case shall the total period to respond exceed four
(4) months from the mailing date of the Examiner’s action requiring the
response.
RULE
611.
Communications other than the
original. — "Communication" shall mean any response filed
with the Office except compliance with filing date requirements. The
Office shall accept communications to it by telecopier, or by electronic
means. When communications are made by telefacsimile, the reproduction of
the signature, or the reproduction of the seal together with, where
required, the indication in letters of the name of the natural person
whose seal is used, must appear. Within twenty-four (24) hours from
receipt of the telefacsimile by a machine of the Office, the Examiner
shall confirm the date of receipt of the telefacsimile by means of a
notice requiring the applicant to pay the cost, as may be established by
the Office from time to time, incurred by the Office to enable the Office
to receive such telefacsimile. The original copy such communication and
the payment of the cost herein provided must be received by the Office
within one (1) month from date of receipt of the telefacsimile. Otherwise,
the communication shall be deemed withdrawn and expunged from the records.
In all cases, the burden of proof lies on the applicant that such
documents have been received by the Office.
RULE
612. Re-examination.
— After response by the applicant, the application will be re-examined
or reconsidered by the Examiner, and if the registration is again refused
or formal requirements insisted upon, but not stated to be final, the
applicant may respond again.
RULE
613. Final
Action. — On the first or any subsequent re-examination or
reconsideration, the Examiner may state that the refusal of the
registration or the insistence upon a requirement is final. Thus, the
applicant’s recourse is limited to an appeal to the Director or to a
compliance with the requirement made by the Examiner.
RULE
614.
Abandonment; Incomplete
Response. — If an applicant fails to respond, or to submit a
complete response, within the period given counted from the mailing date
of an action of the Examiner, the application shall be deemed abandoned as
of the day immediately following the last day of the aforesaid period.
RULE
615.
Revival of Abandoned
Application. — (a) An abandoned application may be revived as a
pending application within three (3) months from the date of abandonment,
if it is shown to the satisfaction of the Director, and upon payment of
the required fee, that the delay was due to fraud, accident, mistake, or
excusable negligence.
(b) A
request to revive an abandoned application must be accompanied by a
statement of the causes of the delay in submitting the complete response
and by the proposed response, unless the same has been previously filed.
Any application not revived within the specified time will be deemed
forfeited upon the expiration of the three-month period to revive.
(c) There
shall be no revival of an abandoned application that has been revived once
before on the same issue.
RULE
616. Time
less than four months; when request for extension should be made. —
(a) The applicant may be required to prosecute his application in a time
shorter than four months but not less than one (1) month from the mailing
date of the examiner’s action whenever such shorter time is deemed
necessary or expedient. Unless the applicant is notified in writing that
response is required in less than four months, a maximum period of four
months is allowed.
(b) The
time for reply, when a time less than four months has been set, will be
extended only for good and sufficient cause and for a reasonable time
specified. Any request for such extension must be filed on or before the
day on which the response of the applicant is due. In all cases, the
maximum time within which to submit a response to an action shall not
exceed four months from the mailing date of the action.
RULE
617.
Suspension of action by the
Bureau. — Action by the Bureau may be suspended upon written request
of the applicant for good and sufficient cause, for a reasonable time
specified and upon payment of the required fee. The Examiner may grant
only one suspension, and any further suspension shall be subject to the
approval of the Director. An Examiner’s action, which is awaiting a
response by the applicant, shall not be subject to suspension.
RULE
618.
Provisional Allowance.
— If the only issue remaining in an application based on foreign
application claiming priority right is the submission of a certified copy
of the foreign or home registration, the Examiner may provisionally allow
the application and suspend the submission of the certified copy of the
foreign or home registration for a period not exceeding twelve (12) months
counted from allowance. On request of the applicant and subject to the
approval of the Director and payment of the required fee, said twelve
month period may be extended for good cause by an additional period not
exceeding twelve (12) months. Should the applicant fail to submit the
certified copy of the foreign or home registration within the maximum
period of twenty four (24) months counted from allowance, the applicant
may waive his claim to priority right in writing and request that the
application be considered based on intent to use. Said waiver and request
shall be filed within two (2) months, without extension, counted from the
expiration of the maximum twenty four (24) month period without need of
any notice from the Office. Otherwise, the application shall be deemed
forfeited. After submission of the request for conversion to intent to use
and upon payment of the required fees, the application shall be published
by the Office for opposition. Furthermore, the declaration of actual use
shall be filed within three (3) years without extension and without need
of notice counted from the date of the filing of request for conversion.
Otherwise, the application shall be refused or the mark shall be removed
from the register by the Director motu proprio. [As
amended by Office Order No. 08 (2000)]
RULE
619.
Express Abandonment. —
An application may be expressly abandoned by filing with the Bureau a
written declaration of abandonment signed by the applicant himself or by
the assignee of record.
CHAPTER 3
Amendments
to the Application; Response to Objections of the Examiner
RULE
620.
Amendments to the Application.
— The application may be amended to correct formalities, to overcome
objections made by the Examiner, or for other reasons arising in the
course of examination.
RULE
621.
Amendments to Description or
Drawing. — Amendments to the description or drawing of the mark may
be permitted only if warranted by the mark as shown on the labels
originally filed, but may not be made if the nature of the mark is changed
thereby.
RULE
622.
Manner of Making the
Amendment. — In every amendment the exact word or words to be
stricken out or inserted must be specified and the precise point indicated
where the erasure or insertion is to be made. All such amendments must be
on sheets of paper separate from the papers previously filed, and written
on only one side of the paper.
RULE
623. &nb |