Registrability of Marks
- Marks cannot be registered if they:
- Consist of immoral, deceptive, scandalous matter, or disparage persons, institutions, or national symbols.
- Contain flags, coats of arms, or insignia of nations.
- Use names or portraits of living individuals without consent, or deceased Presidents except with widow's consent.
- Are identical or similar to registered marks on related goods/services causing confusion.
- Are identical/confusingly similar or translations of well-known marks, considering relevant public knowledge.
- Mislead public on nature, quality, or geographic origin.
- Are generic, customary, descriptive, technical shapes, colors alone without distinction, or contrary to public order/morality.
- Exceptions allow registration of such marks if they have acquired distinctiveness through continuous use for at least five years.
Criteria for Well-Known Marks
- Determined considering:
- Duration, extent, promotion, and geographical area of use.
- Market share domestically and internationally.
- Degree of distinction (inherent/acquired).
- Quality, reputation, worldwide registration and exclusivity.
- Commercial value and protection history including litigations.
- Presence or absence of similar marks by others.
Trade Names
- Trade names that violate public order or deceive the public cannot be used.
- Protection is provided even without registration.
- Unauthorized use or misleading similar trade names is unlawful.
- Remedies for mark cancellation and infringement apply likewise.
- Change in trade name ownership tied to enterprise transfer; misleading transfers are void.
Acquisition of Rights in Marks
- Rights are acquired through valid registration.
- Nationals or residents of countries with reciprocal intellectual property agreements are entitled to benefits and may claim priority based on earlier foreign applications.
- A filing claiming priority must be made within six months; certified foreign application and translation must follow within three months.
Declaration of Actual Use
- No proof of use is required for processing.
- Applicants/registrants must file a sworn declaration of actual use with evidence within three years from filing date, non-compliance leads to refusal or removal.
- Declaration must include detailed sales outlets, advertising, volume of sales, samples or labels of mark as used.
Application Procedures and Requirements
- Applications must be in English or Filipino, addressed to the Director of Trademarks, and include:
- Request for registration, applicant’s information
- Foreign priority claim details if applicable
- Reproduction of the mark and translations/transliterations
- Description of goods/services per Nice Classification
- Signature and power of attorney if represented
- Drawings required with specific technical specifications; photographs for stamped containers.
- Broad terms in goods/services identification are unacceptable.
- Division of applications allowed but not subdivisions within a single class.
Filing Date and Examination
- Filing date requires payment and minimum essential information including applicant identity, mark reproduction, and goods/services list.
- Examiner conducts ex parte examination, notifying applicant of objections.
- Applicants have two months to respond, extendable up to four.
- Disclaimers may be required for unregistrable parts.
- Applications may be abandoned for failure to respond; revival allowed under conditions.
Publication and Registration
- Marks allowed by Examiner are published for opposition before registration.
- After opposition period with no opposition, certificate of registration is issued upon payment.
- Certificates include detailed information about the mark, owner, priority, and goods/services.
Rights Conferred and Duration
- Registered mark owners have exclusive rights to prevent confusingly similar use by third parties.
- Well-known marks enjoy broader rights covering unrelated goods/services if damage and connection occur.
- Registration valid for ten years, renewable upon declaration of actual use.
- Non-use excused only under specific circumstances beyond owner’s control.
Amendments, Surrender, Cancellation
- Voluntary cancellation, surrender, amendment, or disclaimer require application and fees.
- Corrections of office mistakes are free; applicant mistakes must be in good faith and paid.
- Notices of changes published in IPO Gazette.
Assignment and Transfer
- Assignments must be notarized and recorded to be effective against third parties.
- Transfers without misleading the public are valid; otherwise void.
- Division of registration allowed but not subdividing a single classification.
Renewal
- Renewal valid for ten years; may be requested within six months before or after expiration with additional fee.
- Evidence of use required for prior Act registrations.
- Failure to renew may lead to refusal but subject to appeal.
Registration of Stamped or Marked Containers
- Such marks follow same rules as trademarks/service marks except no drawing required; photos and samples required.
Petitions and Appeals
- Examiner’s decisions are quasi-judicial; appeals to Director allowed for final refusals.
- Petitions possible for matters not appealable.
- Strict timelines and briefs required for appeals; further appeal to Director General and Court of Appeals possible.
Final Provisions
- All correspondence must be in writing and addressed properly.
- Fees must be prepaid.
- Pending applications under prior laws handled under transitional provisions.
- Earlier inconsistent rules repealed.
- Severability clause ensures remainder of rules valid if parts invalidated.
- Rules effective 15 days after publication.