Process Of Registration Of Trademark In The Philippines

30th September, 2023 - 8:38 am Categories: Trademark 0 Comments

PROCESS OF REGISTRATION OF TRADEMARK

The steps involved in the registration process of trademarks in the Philippines are as follows:

1. APPLICATION FOR REGISTRATION

Section 124 of The Act lays down the requirements of an application for registration of a trademark. The application for the registration of the mark shall be in Filipino or in English and shall contain the following:

(a) A request for registration

(b) The qpplicant’s name and address

(c) The applicant’s nationality, his place of domicile, and the states in which he operates an industrial or commercial establishment.

(d) Where the applicant is a juridical entity, the law under which it is organized and existing

(e) If the applicant is not domiciled in the Philippines, an agent or representative must be appointed.

(f)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 filing date of the earlier application, and the earlier application’s application number, where the applicant claims the priority of an earlier application.

(g) When the applicant claims colour as a distinctive characteristic of the mark, the name or names of the claimed colour(s) and an indication of the principal parts of the mark that are in each colour are required.

(h) A statement that the mark is three-dimensional in cases when it is

(i) One or more reproductions of the mark, as prescribed in the Regulations

(j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in the Regulations

(k) The names of the goods or services for which registration is requested, classified in accordance with the Nice Classification classes, along with the number of the Nice Classification class that each group of goods or services belongs to

(l) Self-identification of the applicant or his representative

If during the examination of the application, the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt.

The application for registration can be filed in person or in the online mode. The filing fee, per class for a small entity in the Philippines is PHP 1,200 and for a big entity is PHP 2,592.

[Image Sources : Shutter stock]

EXAMINATION OF THE APPLICATION

Once the Applicant has filed the Application for Registration of Trademark, the Office shall examine whether the application meets all the filing requirements and whether the mark can be registered. Section 123 enumerates what cannot be registered as a mark. It states that a mark cannot be registered if:

1. It 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
2. 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
3. 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
4. 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;
5. 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;
6. 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
7. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services
8. Consists exclusively of signs that are generic for the goods or services that they seek to identify
9. 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
10. 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
11. 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
12. Consists of color alone, unless defined by a given form
13. Is contrary to public order or morality.

Where the Office finds that the mark does not fall under the categories laid down in Section 123 of The Act and all the conditions are fulfilled, it shall, upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner.

If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four months in which to reply or amend his application, which shall then be re-examined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner.

Registration Of The Mark

Once it is found that there are no issues with the trademark application and the mark may be registered, a notice of allowance is served upon the applicant so as to inform the applicant that their trademark application has been allowed and its publication in the Official Gazette has been approved. Within, two months from the receipt of the notice of allowance, the applicant is required to make payment of the prescribed publication fees in order to facilitate the publication of the mark. The Applicant also has the option of making payment of the issuance fee and the 2^nd publication fee for obtaining the certificate of registration.

Upon issuance of a certificate of registration, the mark will be published in the IPO Gazette.

A certificate of registration of a mark is evidence of the validity of the registration. The certificate of registration confers an exclusive right of ownership and use of the mark by the registrant.

Opposition

Any person who believes that he would be damaged by the registration of a mark may upon payment of the prescribed fees within thirty days after the publication of the mark in the IPO Gazette, filean opposition to the registration of the mark in writing.

Cancellation Of Registration Of Trademark

As per Section 151 of The Act, a trademark can be cancelled after any person files a petition to cancel the registration of a trademark with the Bureau of Legal affairs.

The registered mark may be revoked at any time if it is being used by the registrant or with their consent by any other person in a way that misrepresents the source of the goods or services in connection with which the mark is registered or if the mark has been abandoned, or if the mark has become a generic name. A registered mark can also be revoked if the registration was obtained fraudulently or in violation of The Act.

The mere fact that a registered mark is also used to designate or identify a distinctive product or service does not automatically deem it to be the generic name of such goods or services. In order to determine whether a registered mark has become a generic name, the primary significance of the registered mark to the relevant public should be evaluated rather than the purchaser’s motivation.

If the registered owner of the mark fails at any time, without a legitimate reason, to use the mark within the Philippines or to make sure it is used therein with a license for a continuous period of at least three (3) years, then also the registration of the said mark may be revoked.

Validity Of Trademark

Section 145 of The Act stipulates that upon registration of a trademark in the Philippines, it shall remain in force for a period of 10 years from the date of its registration provided that a declaration must be filed within one year from the date on which the registration of the trademark completes five years to show actual use or valid reasons relating to the obstacles to such actual use.

Renewal Of Trademark

Section 146 of The Act states that once a trademark expires after a period of 10 years of its validity, it can be renewed upon filing a request for renewal of the trademark and making payment of the prescribed fees.

The request for renewal of a trademark must be made within six months prior to the expiration of the period for which the registration was issued.

The request for renewal of a trademark can be made after the expiration of the period of six months upon payment of the prescribed fees.

Author: Sonakshi Pandey, Symbiosis Law School, NOIDA, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.

References

1. https://www.ipophil.gov.ph/trademark/trademark-registration-process-overview/ (last visited on 29 September, 2023)
2. https://www.ipophil.gov.ph/trademark/(last visited on 29 September, 2023)
3. https://www.linkedin.com/pulse/step-by-step-trademark-registration-philippines-carl-edison-balagtas/(last visited on 29 September, 2023)
4. https://www.officialgazette.gov.ph/1997/06/06/republic-act-no-8293/ (last visited on 29 September, 2023)