- PART 1 Registration of Trademarks and Service Marks
- 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. Declaration of Actual Use.
- RULE 205. Contents of the Declaration and Evidence of Actual Use.
- 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
- RULE 400. Requirements of application.
- RULE 401. Office Application Form.
- RULE 402. Label.
- RULE 403. Drawing.
- RULE 404. Drawing for a service mark may be dispensed with in certain cases.
- RULE 405. Drawing.
- RULE 406. Size of board; "sight".
- RULE 407. Drawing to be with the Pen or by other processing giving satisfactory results.
- RULE 408. The Name of the Owner to be within Marginal Lines.
- RULE 409. When sheet may be turned on its side.
- RULE 410. Manner of mailing the Drawing to the Bureau.
- RULE 411. Color.
- RULE 412. Informal Drawing.
- RULE 413. Use of an old Drawing in a new application.
- RULE 414. The small facsimiles of the Drawing, how prepared.
- RULE 415.Translation/Transliteration.
- RULE 416. Nice Classification.
- RULE 417. Broad terms.
- RULE 418. Single registration for goods and/or services.
- RULE 419. Division of Applications.
- 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
- CHAPTER 1 Nature of the Proceedings
- RULE 600. Application prosecuted ex parte; Protests.
- RULE 601. Proceedings a contest between Examiner and the Applicant.
- RULE 602. Applicant supposed to look after his own interests.
- RULE 603. Preliminary adverse action of the Examiner valuable to Applicant.
- RULE 604. A preliminary rejection should not be taken literally; Examiner is only trying to be helpful.
- 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.
- RULE 606. Jurisdiction of the Examiner.
- RULE 607. Examination of the application; Action by the Examiner.
- Rule 608. Disclaimers.
- RULE 609. Interview with the Examiners: when no interview is permitted.
- RULE 610. Period for response, action by applicant.
- RULE 611. Communications other than the original.
- RULE 612. Re-examination.
- RULE 613. Final Action.
- RULE 614. Abandonment; Incomplete Response.
- RULE 615. Revival of Abandoned Application.
- RULE 616. Time less than four months; when request for extension should be made.
- RULE 617. Suspension of action by the Bureau.
- Rule 618. Provisional Allowance.
- RULE 619. Express Abandonment.
- CHAPTER 3 Amendments to the Application; Response to Objections of the Examiner
- CHAPTER 1 Nature of the Proceedings
- PART 7 Publication, Allowance and Issuance ofCertificate Of Registration
- RULE 700. Publication in the IPO Gazette; end of jurisdiction of the Examiner.
- RULE 701. Examiner may Petition for the remand to his Jurisdiction, of an allowed application.
- RULE 702. Examiner to be in charge of 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. Non-use of a Mark When Excused.
- RULE 803. Use of a Mark in a different form.
- RULE 804. Use of a Mark for goods belonging to the class registered.
- RULE 805. Use of a Mark by Related Company.
- RULE 806. Certificates of Registration; Records and copies in registered cases.
- RULE 807. Contents of Certificate of Registration.
- RULE 808. Use of indications by Third Parties for Purposes Other than those for which the Mark is Used.
- PART 9 Other Proceedings Affecting the Application or Registration
- CHAPTER 1 Voluntary Surrender or Cancellation, Amendment, Disclaimer by the Registrant or by Assignee of Record, Correction of Mistakes
- RULE 900. Jurisdiction of the Examiner.
- RULE 901. Cancellation upon Application by Registrant.
- RULE 902. Amendment or Disclaimer of Registration.
- RULE 903. Correction of Mistakes Made by the Office.
- RULE 904. Corrections of Mistakes Made by Applicant.
- RULE 905. Surrender, cancellation, amendment, disclaimer, and correction to be given publicity.
- CHAPTER 2 Recording of Assignments of Registration, or any Other Instrument Affecting the Title to any Registered Mark, Including Licenses;
- Division of Registration
- RULE 906. Assignment and Transfer of Application and Registration.
- RULE 907. Form of assignment or transfer.
- RULE 908. Recordal of Assignment or Transfer.
- RULE 909. Assignment, other instruments affecting the registration, or license, and translation, to be submitted in duplicate.
- RULE 910. Date of receipt of instrument to be recorded considered its date of recording.
- RULE 911. A new certificate of registration must be issued to assignee.
- RULE 912. Action may be taken by assignee of record in any proceeding in Office.
- RULE 913. Clearance of Trademark License Agreement prior to recordal
- RULE 914. Division of Registration.
- RULE 915. Cancellation of Original Certificate and issuance of transfer certificates of registration.
- RULE 916. Contents of transfer certificates of registration.
- Division of Registration
- CHAPTER 3 Renewal of Registration
- RULE 917. Request for Renewal.
- RULE 918. When to file request for Renewal
- RULE 919. Jurisdiction of the Examiner.
- RULE 920. Need for appointing a resident agent.
- RULE 921. Renewal of prior Act registration; use and proof thereof, required.
- RULE 922. Prior Act certificate of registration to be surrendered.
- RULE 923. Refusal of renewal registration; appeal to the Director.
- RULE 924. Certificate of renewal of Registration.
- CHAPTER 1 Voluntary Surrender or Cancellation, Amendment, Disclaimer by the Registrant or by Assignee of Record, Correction of Mistakes
- OFFICE ORDER NO. 125
- PART 11 Petitions and Appeal
- RULE 1100. Nature of the function of Examiners.
- RULE 1101. Petition to the Director to question the correctness of the action of an Examiner on a matter not subject to appeal.
- RULE 1102. Appeals to the Director.
- RULE 1103. Effect of a final decision of an Examiner which is not appealed.
- RULE 1104. Time and manner of appeal.
- RULE 1105.Appellant's brief required.
- RULE 1106. The Examiner's answer.
- RULE 1107. Appellant's reply.
- RULE 1108. Appeal to the Director General
- RULE 1109. Appellant's brief required.
- RULE 1110. Director's comment.
- RULE 1111. Appeal to the Court of Appeals.
- FINAL PROVISIONS
- SECTION 1. Correspondence.
- SECTION 2. Fees and Charges to be Prepaid; Fees and Charges Payable in Advance.
- SECTION 3. Applications pending on Effective Date of the IP Code.
- SECTION 3.1. Amendment of Pending Applications.
- SECTION 3.2. Filing Date of Pending Applications; Declaration of Actual Use.
- SECTION 3.3. Processing of Pending Applications.
- SECTION 3.3.1. Interference.
- SECTION 3.4. Duration of Registration.
- SECTION 3.5. Duration of Renewal of Registration Granted Under Republic Act No. 166.
- SECTION 3.6. (a) Abolition of the Supplemental Register.
- SECTION 3.7. Renewal of a Registration in the Supplemental Register.
- SECTION 3.7.1 Registrations Subsisting on January 1, 1998.
- SECTION 3.7.2 Registrations, or Extension Thereof, with Term Ending on or Before December 31, 1997.
- SECTION 3.7.3. Notice to Comply.
- SECTION 4. Repeals.
- SECTION 5. Separability.
- SECTION 6. Effectivity.
PART 1
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)]
Registration of Trademarks and Service Marks