Oct 10, 2019 (Newsletter Issue 14/19)Flexible Approach on Mediation ImplementedThe Intellectual Property Office of the Philippines (IPOPHL ) will embark on another first in alternative dispute resolution (ADR) by implementing the Mediation Outside Litigation Service on September 2, 2019.
The Mediation Outside Litigation Service is a flexible approach on mediation which will allow parties to submit their dispute to mediation even before or without filing a case. This gives parties the opportunity to reach an agreement at the earliest possible instance.
For further information, please view hereSource: www.ipophil.gov.ph Mar 15, 2018 (Newsletter Issue 5/18)Amendments to IP Code ProposedOn December 22, 2017, the Intellectual Property Office of the Philippines (IPOPHL) has submitted to the Philippine Congress its proposed amendments to the IP Code (Republic Act No. 8293).
For further information, please see the article of our Gold Country Index Partner Hechanova & Co. here
Source: Hechanova & Co. Inc., Philippines Sep 20, 2017 (Newsletter Issue 16/17)More Proof of UseThe Intellectual Property Office of the Philippines (IPOPHL) issued Memorandum Circular No. 17-010 entitled Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2017 which took effect on August 1, 2017.
A major amendment involves the submission of the Declaration of Actual Use (DAU) when renewing the registration, and within one year from the 5th year anniversary of the renewal. Failure to do so will result in the application being refused or the removal of the registration from the IPOPHL Registry (Rule 204). The notable periods for the submission of the DAU’s under these new rules are:
(a) Within three (3) years from the filing date of the application;
(b) Within one (1) year from the fifth anniversary of the registration;
(c) Within one (1) year from date of renewal;
(d) Within one (1) year from the fifth anniversary of each renewal.
Only “a” or the third year DAU allows for extension of filing, and this is a one-time extension of six (6) months. Actual use of the mark may commence during the extension period. All the DAU’s to be filed must be coupled with the evidence of such use, and payment of the required fees. It is not obligatory for the IPOPHL to issue notices to the applicants/registrants to file its DAU.
A new rule was further introduced. As provided in the old rules, use in any of the goods or services in a class inures to the benefit of all the goods in said class. The new Rule 209 clarifies the effect of actual use for related classes. It allows the subsequent filing of another DAU to cover classes for which the first DAU filed did not include. However, this subsequent filing must be done within the prescribed period or within the extension period.
The IPOPHL has issued several other Memorandums which can be seen below:
- Memorandum Circular No. 17-011: Philippine Regulations Implementing the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks of 2017
- Memorandum Circular No. 17-012: Expediting the Trial of Cases by Amending Certain Provisions of the Regulations on Administrative Complaints for Violation of Law Involving Intellectual Property Rights
- Memorandum Circular No. 17-013: Amending the Revised Implementing Rules and Regulations for Patents, Utility Models, and Industrial Designs
- Memorandum Circular No. 17-014: Amending further the IPOPHL Revised Fee Structure of 2017 (Memorandum Circular No. 16-012, S. 2016, as Amended by Memorandum Circular No. 17-02, S. of 2017) see here
For further information, please click here
Source: Hechanova & Co. Inc., Philippines Jan 11, 2017 (Newsletter Issue 1/17)Structure of Official Fees Revised SoonThe Philippine Intellectual Property Office (IPOPHL) will increase its official fees in order to rationalise and streamline its fee structure to make adjustments in order to address inflation and rising operational costs and expenses, as well as to support additional mandates and services, and other developmental programs/projects and advocacies; and further to reduce or abolish redundant fees.
The new official fee for filing a trademark application will be PHP 1,200 for small entities and PHP 2,592 for big entities per each class. The publication fee will be PHP 900 for small entities and PHP 960 for big entities.
'Big entity' is any natural or juridical persone whose assets are worth more than one hundred million Pesos or any natural or juridical person which do not fall under the catecory of a small entity. 'Small entity' refers to any natural or juridical person whose assets are worth not more than one hundred million Pesos or any entity, agency, office, bureau or unit of the Philippine government including government-owned or controlled coroporations, state universities and colleges and government-owned or government-run schools.
The revised fee structure will be effective January 1, 2017.
For more information, please click here
Source: Platon Martinez Flores San Pedro & Leaño, The Philippines
Nov 25, 2015 (Newsletter Issue 18/15)
IP Cases for WIPO Mediation Accepted
The Intellectual Property Office of the Philippines (IPOPHL) is now offering WIPO Mediation for disputes pending before the IPOPHL. In accordance with a Memorandum of Understanding, the IPOPHL and the World Intellectual Property Organization (WIPO) have established a joint dispute resolution procedure for the referral of intellectual property (IP) disputes to the WIPO Arbitration and Mediation Center (WIPO Center).
All cases filed in the IPOPHL primarily involving one or more parties domiciled outside the Philippines can now avail of the WIPO Mediation, specifically:
- Administrative complaints for violation of intellectual property rights (IPV) and/or unfair competition
- Inter partes cases (IPC)
- Disputes involving technology transfer payments
- Disputes relating to the terms of a license involving the author's rights to public
- performance or other communication of his work
- Cases appealed to the Office of the Director General (ODG) from decisions of the Bureau of Legal Affairs (BLA) and the Documentation, Information and Technology Transfer Bureau (DITTB)
- All other cases which may be referred to mediation during the settlement period declared by the Director General
The WIPO Mediation option offered by IPOPHL may be especially advantageous for international parties or parties seeking to settle related disputes in multiple jurisdictions.
Source: www.ipophil.gov.ph
Dec 03, 2013 (Newsletter Issue 17/13)
TM Applications with Priority Claim
On April 5, 2013, the Intellectual Property Office of the Philippines (IPOPHIL) announced that a certified true copy of a priority application is no longer required to prove entitlement to an applicant’s priority claim. Further clarification was issued on October 18, 2013.
The new guidelines are as follows:
1. For applications claiming Paris Convention priority, a certified true copy of the priority application is no
longer required if details of the priority application in the English language are available from the online trademarks database of the foreign IP Office. If the priority application is not in the English language or its details are not available online, a photocopy of the priority application will suffice.
2. It is important that the goods and services stated in the Philippine application be covered or included in the foreign priority application. It is no longer necessary to adopt the specification of goods and services of the foreign priority application verbatim. However, the inclusion of goods and services outside those of the foreign priority application may lead to an office action.
3. Applicants are invited to pay the allowance fees within six months from the mailing date of the Notice of Allowance. An extension of one year may be granted if necessary. If no payment is received by IPOPHIL, the application will be abandoned. In the event that the application is abandoned for failure to pay the allowance fees, a revival may be filed, but the claim for Convention priority will be automatically waived.
4. Once the foreign application is registered, the applicant shall inform IPOPHL. A photocopy of the priority registration will suffice if the foreign IP Office does not have an online database in the English language.
All pending applications as of May 2013 are covered by the new guidelines except those subject to Provisional Allowance (first or second provisional allowance) and those with pending requests for Provisional Allowance under the old Trademark Rule No. 168.
Source: INTA Bulletin, Vol. 68 No. 21, Patrick mirandah co., philippines, inc., Taguig
Verified by Diageo Philippines, Inc., Taguig
Jul 01, 2013 (Newsletter Issue 10/13)
Declaration of Use of IR Required
The Philippines has notified the WIPO that holders of international registrations containing a designation of the Philippines must file declarations of actual use of the mark with evidence to that effect.
Such declarations must be filed directly with the Office of the Philippines, as prescribed by the applicable laws and regulations and upon payment of a fee:
- Within a three year period, counted from the date of the international registration or the date of the recordal of the subsequent designation of the Philippines. A one-time six month extension of the three-year period to file the aforementioned declaration may be requested, provided that such request is filed before the expiry of the said period;
- Within a one-year period, following five years counted from the date on which protection was granted in the Philippines, as indicated in the statement sent by the Office of the Philippines to the International Bureau under either Rule 18ter(1) or (2) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement;
- Within a one-year period, following five years counted from the date of each renewal of the international registration.
Alternately, within the aforementioned periods, holders may file, directly with the Office of the Philippines, in the manner prescribed by the applicable laws and regulations and upon payment of a fee, a declaration of non-use of the mark, stating the valid grounds, under the laws of the Philippines, for such non-use.
The declaration of actual use or non-use of the mark must be submitted by the holder’s authorized representative with a local address or by a legal representative in the Philippines. A local address is required for purposes of notification.
Failure to file declarations of either actual use or non-use of the mark, within the applicable periods, will prompt the Office of the Philippines to declare, ex officio, that protection to the mark which is the subject of an international registration containing a designation of the Philippines cannot or can no longer be granted.
Source: www.wipo.int
Sep 02, 2012 (Newsletter Issue 13/12)
Examination of Applications Remain the Same
The Intellectual Property Office of the Philippines (IPOPHL) has announced that there will be no difference in the substantive examination of applications received by way of Madrid Protocol or by way of national application. In other words, the applications will be examined in the chronology by which they are received and no preference will be given to one type of application over the other.
Moreover, international registrations extending to the Philippines will also be subject to the requirements of a Declaration of Actual Use (DAU). The DAU and the corresponding fees have to be filed with IPOPHL through a resident agent.
Source: patrick mirandah co, Philippines
Jul 31, 2012 (Newsletter Issue 12/12)
Accession to the Madrid Protocol Now Effective
The Madrid Protocol has become effective in the Philippines on 25 July 2012. It is now possible to file for international registration of trademarks.
Source: www.ipophil.gov.ph
May 29, 2012 (Newsletter Issue 9/12)
Accession to the Madrid Protocol
Philippine trademark holders and applicants can now file more easily trademark applications in more than 80 countries after President Benigno Aquino III signed the Instrument of Accession of the Philippines to the Madrid Protocol on 25 April 2012. Madrid Protocol operations in IPOPHL will commence on 25 July 2012.
Currently, a Philippine trademark holder seeking protection abroad has to apply separately in every country of interest. This involves different application forms, languages and payments in different currencies.
The Madrid Protocol will provide a cost-effect, centralized procedure that will allow a trademark owner to obtain protection for its mark in different countries by filing one international application in the Intellectual Property Office of the Philippines (“IPOPHL”).
Source: Bengzon Negre Untalan Intellectual Property Attorneys, Philippines
RA 8293 entitled “Intellectual Property Code of the Philippines” was enacted on January 1st, 1998 and codifies the Philippine Laws on IP conformably with the WTO-TRIPS Agreement. It created the Intellectual Property Office (IPO) and repealed old IP and IP-related laws, insofar as the same are inconsistent with RA 8293, as for example RA 166 of June 29th, 1947.
The Philippines adhered to the Madrid Protocol effective July 25, 2012.
Trademark protection is obtained either by registration or local use prior to January 1st, 1998. Under RA 166, the trademark law in force before RA 8293, registration was merely a right or prerogative of the trademark owner, and was not a prerequisite to the enjoyment of rights. The passage of RA 8293 did not impair trademark rights arising from local use under RA 166.
Nice classification, 11th Edition as of January, 2019
Registrable as a trademark is any visible sign capable of distinguishing a good (trademarks) or service (service marks of an enterprise) and shall include a stamped or marked container of goods (Section 121.1, R.A. 8293). In order to be registrable, the trademark must be distinctive and visually perceptible such as words, names, letters, numerals, devices or signs such as 2-D marks, 3-D marks, holograms, movement, and colors, if defined by a given form as colors alone, claimed independently of any specific shape, contour or other defining element or feature cannot be registered as a mark.
Under Philippine laws, marks that consist exclusively or essentially of a word that is generic, customary, common, scientific or technical name or designation of a particular product or service, or of a category of goods or services are unregistrable and cannot be appropriated in exclusivity by any individual trader as a mark to distinguish such goods or services. Likewise unregistrable are those which consist of the flag or coat of arms or other insignia of the Philippines, its political subdivisions, or any foreign nation. Misleading, deceptive, contrary to public order or morality, or identical or confusingly similar with a mark that has been registered or with an earlier or priority filing date are also unregistrable.
The following trademark types may be applied for registration: trademarks, service marks, collective marks, trade names, and even domain names.
The standard application form provided by IP Office of The Philippines (IPOPHIL), written in English or Filipino, is filed through the online filing system of IPOPHIL.
Multiple-class applications are possible.
If a foreign applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he must designate by a written document filed through IPOPHIL online filing system, the name and address of a Philippine resident who may receive notices in proceedings affecting the mark.
A signed Power of Attorney is sufficient.
One to two days after filing the trademark application via IPOPHIL's online filing system, the applicant/agent will receive an electronic copy of the application filed, indicating the application number and filing date. The application is then raffled to an examiner.
The application process includes both a formal and a substantive examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 1 to 3 months.
Should there be no objections raised by the examiner, the mark will be allowed for publication. Prior to registration, the trademark application is published in the weekly official electronic Gazette of the IPOPHIL on its official website for a period of thirty (30) days for opposition purposes. Upon certification by the Director of the Bureau of Legal Affairs that no verified notice of opposition, or motion for extension of time to file the same, has been filed within the opposition period, the office shall issue the certificate of registration. The issuance of the certificate of registration shall be published in the IPO Gazette and shall be entered on the records of the office.
National:The opposition period is 30 days from publication date of the application in the eGazette. The period may be extended for three (3) additional thirty (30) day periods, upon motion due to meritorious grounds and payment of the appropriate fees.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from the date of registration subject to the use requirement below.
The registration is renewable for periods of 10 years.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fees for filing a trademark application, without claim of color and priority will be PHP 1,212.00 for small entities and PHP 2,617.92 for big entities per each class. Should the mark have a claim of color, there is an additional fee of PHP 282.80 for small entities and PHP 606.00 for big entities. Simultaneous payment for publication and issuance fees will be PHP 2,394.70 for small entities and PHP 3,151.60 for big entities.
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Practical details on trademark licensing are available in our publication
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More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
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Mar 16, 2022
Hechanova & Co. Inc., Makati City, Philippines
Mar 02, 2022
Rouse & Co. International LLP, Jakarta, Indonesia