18 October 2013
BOT Office Order No. 13-06 Series of 2013
Subject: Implementation Guidelines: Office Order No. 13-061, s. 2013, "Trademark Applications with Priority Right Claim"
To ensure the accurate implementation of Office Order No. 13-061 , s. 2013 entitled "Trademark Applications with Priority Right Claim", which became effective on 02 May 2013 , the following guidelines shall be followed :
1.0 All pending applications as of the date of effectivity of the office order are covered, subject to the following conditions:
1.1 The application was not subject of provisional allowance (first or second provisional allowance) under the old Rule 618 of the Trademark Regulations;
1.2 No request for the first or second provisional allowance under the old Rule 618 was pending with the IPOPHL at the time the order became effective.
2.0 A copy of the foreign application used as basis to claim convention priority shall only be required if the fact of such filing cannot be verified by the Examiner-in-Charge of the Philippine application from the online trademarks database of the foreign IP Office where the earliest application is filed or in case the IP Office where the foreign application is filed does not have an online database. The enumeration of goods and services must likewise be accessible from the database. If such enumeration is not in English , the Examiner may require the submission of the English translation.
3.0 The goods and services in the Philippine application must be covered by the application/s used as basis for claiming convention priority.
4.0 The following shall apply to national (direct) applications where fees are not paid in full:
4.1 If an application is allowed under Rule 618 , as amended by Office Order No. 13-061 , s. 2013 , the applicant shall pay the allowance and first publication fee within six months from the mailing date of the notice of allowance or within the one-year extension period, if such extension was requested .
4.2 If no extension of one (1) year was requested and payment1
was not made within the initial period of six months, the application
____ __s_ha_l_l_b_e_a_b_a_n_doned. The application may be revived within a perio~
1 The fee to be collected is Php 1,010 (Fee Code No . 512) .
Republic of the Philippines INTELLECTUAL PROPERTY OFFICE
Intellectual Property Center. 28 Upper Mc kinley Road, Mckinley Hill Town Center Fort Bonifacio, Taguig City 1634 Philipp ines
T: +632-2386300. F: +632-7980114. www.ip ophil.gov.ph
L
of 3 months from the lapse of the six-month period, but the claim for convention priority shall be automatically waived.
4.3 If an extension of one (1) year was requested, the applicant shall be required to pay the allowance and first publication fee within the extension period. Non-payment of the allowance and first publication fee shall result in the abandonment of the mark and loss of the convention priority claim.
5.0 Once the foreign application is registered, the applicant shall inform the IPOPHL of such registration and submit a copy of the foreign registration if the foreign IP Office does not have an online trademarks database providing information on the registration of the mark .
6.0 The IPOPHL shall not require that the Philippine application as allowed conform to the list of goods and services in the foreign registration for as long as the goods and services in the Philippine application as examined and allowed by the Examiner-in-Charge are covered by the foreign application that served as basis for the claim of convention priority .
18 October 2013; Taguig City, Philippines.