An ISO 9001:2015 Certified Firm
An ISO 9001:2015 Certified Firm
An owner of a trademark is entitled to a trademark right if he or she registers the trademark with the IP Philippines. In exchange, the trademark gets a term of protection of 10 years renewable for another 10 years at a time. Traditionally a trademark owner has the right to prevent any person or legal entity from using his trademark.
An individual or organization can apply for a trademark registration through writing an application to the Philippine Intellectual Property Office using the trademark application form and meeting the filing fees among others. Among the form’s fields, one indicates the applicant’s information, the graphic image of the mark, the description of the goods and services and/or class of trademark for which a business wants to obtain registration.
Trade Mark can be claimed by registration or by use for goods and service in some countries. Despite the fact that trademarks can sometimes be protected through use, it is advisable to register them through the filing of an application form with the IP Philippines. The benefits of registering a trademark is that it will be easier to enforce the rights when there is a conflict with an identical or deceptively similar mark. The service of a trademark agent is in most cases beneficial (and in some situations even required) in the registration of a trademark.
To register a trademark in the Philippines, you must file the following:
a. The steps for registering a trademark are- Filing the Application –If the application is to be filed locally, then it has to be filed with Trademark Office of the Philippine Patent Office. Application for registration has to be received by a Duty Officer. After the filing of the application with the Duty Officer, a formality examination will take place. During the formality examination, the Duty Officer will check whether the application meets the following requirements for the grant of a filing date. During the formality examination, the Duty Officer will check whether the application meets the following requirements for the grant of a filing date:
The customs officer will then make a payment order to the applicant to make the payments as stated above. On payment of the application fee, a number is given to the application submitted.
b. Search –The looking up process of the application is done. The search helps in finding out another trademark similar or with the trademark that has been applied for.
c. Substantive examination – The matter is to pass an examiner who is supposed to evaluate the application’s registrability in terms of the law and the regulations. All criteria to the mark are checked and then the mark is approved. If the stipulations of application are not met or some are met incompletely, the application is rejected.
d. Publication for Opposition – Before the mark is officially registered it is published in the IP Philippines Gazette and any party who might be damaged by the registration of the mark may oppose the registration of the mark.
e. Registration- When the Director of the Office of Legal Affairs affirms that no verified or unverified opposition was filed with the Office for at least thirty (30) days since the publication of the opposition in the Official Gazette of the Philippines, and subject to the payment of the prescribed fee, the Office shall then register the mark. This certificate must be made known by being published in the Official Gazette of the Philippine Patent Office and entered into the Register of the Philippine Patent Office. The certificate of registration shall be valid for a period of ten (10) years from the date on which the registration is done.
f. Renewal – The mark may be renewed for other terms of ten (10) years by making an application for renewal accompanied by the renewal fees. However, this registration may be canned if the trademark is not used in the designated course of commerce. The law has set a requirement of filing a statement of actual use accompanied by the evidence within three (3) years from the date of filing of the application and within one (1) year from the five years of the registration of the mark.
This is done through filing of declaration of actual use (DAU) evidencing that the trademark is actually being used in the Philippines in connection with the goods/ services forming part of the trademark application for which it seeks registration and the place of use being the place of sale of the goods or place where the services are provided. The DAU must be filed on or before three years after the filing date; on or before five years from the registration of the mark; on or before one year from the date of renewal; and on or before five years from each renewal of the mark.
It is also possible to ask for an extension of time of up to six months to file the DAU for the third year as long as this is filed prior to the expiration of the three-year filing period and corresponding prescribed fees are paid.
Under legal circumstances prevailing in Philippines, an application for cancellation of trademark can be filed by any person if the trademark has not been in use for three years unjustifiably.
IPOPHL provides for a detailed schedule of trademark related fees with classification depending on filing of trademark, examination fees, filing done through DAU and more important aspects categorised into small and big entity charges.