What are the requirements for filing a trademark application in the Philippines?
To apply for trademark registration in the Philippines, an applicant must provide the following:
- Signed trademark application form, which includes:
- The country or residence of incorporation;
- Name and address of the local representative, if the applicant is not domiciled in the Philippines;
- Details of the priority claim, such as filing date, application number and country or state where the application was filed, designation of goods and services, reproduction of the mark, a transliteration or translation of the trademark or some parts of the trademark, an indication whether the trademark is three-dimensional, a collective mark or for a stamped or marked container of goods, and colors claimed, if any.
- Signed Power of Attorney, if the filing is through a representative;
- Plain copy of the home application, if priority application is claimed;
- Sworn statement that the applicant is a small entity, if applicable.
What are the minimum requirements to secure a filing date for a trademark application?
To secure a filing date, the applicant must file the trademark application form indicating the name and address of the applicant, reproduction of the mark, and list of goods and services, and then pay the required fee.
Can a Power of Attorney be filed after the filing of the trademark application?
Yes. The Power of Attorney can be filed even after the trademark application has been filed.
Is multi-class trademark application allowed in the Philippines?
Yes, one (1) application may cover several classes of goods and services under the Nice Classification.
A multi-class trademark application will result in one (1) trademark registration only.
Is a divisional trademark application allowed in the Philippines?
Yes, a multi-class trademark application, with or without claim of convention priority, could be divided into several trademark applications, called divisional applications, to distribute the goods and/or services covered by the initial trademark application. The divisional applications shall preserve the filing date of the initial trademark application or the benefit of the right of priority.
Could an issued trademark registration covering several classes of goods and services be divided?
Yes, during the term and enforceability of a trademark registration, it could be divided to distribute the covered goods and/or services, upon formal request and payment of prescribed fees and provided that:
- The division shall not involve any change in the registration that requires republication of the trademark, and
- A single class shall not be subdivided.
Is prior commercial use of the trademark required for filing a trademark or service mark application?
No. Commercial use of the trademark is not required at the time of the filing of the trademark application.
When is use of the mark required to be submitted in order to maintain protection of the trademark?
The applicant or registrant must submit a Declaration of Actual Use (DAU) along with the supporting Evidence of Actual Use (EAU) on the following periods:
- Within three (3) years from filing date of the application, subject to an extension of 6 months;
- Within one (1) year from the fifth (5th) anniversary of the registration;
- Within one (1) year from date of renewal; and
- Within one (1) year from the fifth (5th) anniversary of each renewal.
Failure to file the Declaration of Actual Use with the supporting Evidence of Actual Use within the prescribed periods shall result in the automatic abandonment of the trademark application or the cancellation and removal of the trademark from the Register.
What are the requirements to file a Declaration of Actual Use with Evidence of Actual Use?
The minimum filing requirements are as follows:
- Notarized Declaration of Actual Use form; and
- Evidence of Actual Use consisting of one of the following:
- Labels of the mark as these are used;
- Downloaded pages from the website of the applicant or registrant clearly showing that the goods are being sold or the services are being rendered in the Philippines;
- Photographs of goods bearing the mark as these are actually used or of the stamped or marked container of goods and of the establishment/s where the services are being rendered;
- Brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
- For online sale, receipts of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines or that the transaction took place in the Philippines; or
- Copies of contracts for services showing the use of the mark.
When is non-use of a trademark excusable?
The following are the acceptable reasons for non-use:
- The applicant or registrant is prohibited from using the trademark because of a requirement imposed by another government agency prior to putting the goods in the market or rendering of the services;
- There is a restraining order or injunction issued by the Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL), courts, or quasi-judicial bodies prohibiting the use of the trademark; or
- The trademark is the subject of an opposition or cancellation case.
Non-use of a mark may also be excused if caused by circumstances independent of the will of its owner, but in no case shall lack of funds be an excuse for non-use of a mark.
If there is no use of the trademark due to any of the foregoing reasons, a notarized Declaration of Non-Use (DNU) form could be filed, instead of the DAU form.
What evidence is required to support the filing of the Declaration of Non-Use?
Evidence of non-use may be any of the following:
- A copy of a Bureau of Food and Drug Administration application;
- Copies of documents filed with the BLA, if the trademark is under opposition or cancellation; or
- Copies of the court-issued injunctions (preliminary injunction, restraining order);
If the application has matured into registration before the end of three (3) years from the filing date of the application, or before the end of the six (6)-month extension, is the requirement of the Declaration of Actual Use with Evidence of Actual Use already dispensed with?
No, it is still mandatory for the registrant to file a DAU with the EAU.
What are the additional requirements for applications claiming priority right?
There is no additional requirement if there is an official website of the foreign Intellectual Property Office where the earliest application was filed, and it is the responsibility of the Examiner to verify the fact of filing and/or registration of the foreign application.
In the event that the foreign Intellectual Property Office where the earliest application was filed does not have an online trademark database, the applicant, without need of notice, shall submit a photocopy of the foreign application or registration and an English translation, if the application or registration is not in English.
What are the deadlines to observe in the submission of foreign trademark registrations?
If the foreign application has not been registered at the time of allowance or if the foreign Intellectual Property Office does not have an online trademark database, the Examiner shall, in the notice of allowance, require the applicant to submit a photocopy of the foreign registration within six (6) months from the mailing date of the notice.
The period to submit a copy of the foreign trademark registration may be extended for a period of one (1) year, counted from the expiry of the initial period of six (6) months.
If the foreign trademark application does not mature to registration within the 1 year extension, what will happen to the priority claim?
If the applicant is unable to submit a copy of the foreign trademark registration within the extension period, the claim to the right of priority shall be deemed waived. The Philippine trademark application will thereafter be published for opposition upon payment of the required fees.
What is the deadline to respond to an Examiner’s official action? Are there any allowable extensions?
A trademark applicant has two (2) months from the mailing date of any office action to respond thereto.
A single extension of two (2) months may be requested.
In case of a Final Rejection against the trademark application, what are the remedies available?
The applicant must file a Notice of Appeal within two (2) months from the mailing date of the Final Rejection and file an Applicant-Appellant’s Brief within two (2) months from the date of filing of the Notice of Appeal.
If the Director of the Bureau of Trademarks affirms the Final Rejection of the trademark application, is there any further appeal available?
Yes, the applicant has two (2) options:
- He can file a motion for reconsideration with the Director of the Bureau of Trademarks (BOT) within thirty (30) days from receipt of the copy of the decision or final order. Only one (1) motion for reconsideration shall be allowed. In case the motion for reconsideration is denied, the applicant has the balance of the thirty (30)-day period within which to file an appeal.
- He can file an appeal with the Office of the Director General of the IPOPHL. The Director General may grant an additional period of fifteen (15) days within which to file the appeal, upon proper motion citing meritorious reasons and the payment of fees. No further extension of the period to file the appeal shall be allowed.
If the Director General affirms the rejection of the trademark application, then the applicant may file an appeal with the Court of Appeals, and then to the Supreme Court of the Philippines.