Guidelines to Trademark Registration

GUIDE TO TRADEMARK REGISTRATION

A. What may be registered?

All marks that are capable of distinguishing goods or services are registrable. Exceptions to this rule are:

Absolute Proscriptions

Where the mark:

1. Consists of immoral, deceptive or scandalous matter.

2. Consists of the flag or coat of arms or other insignia of the Philippines, or of any

foreign nation , or any simulation thereof.

3. Consists exclusively of signs that are generic for the goods and service that they

seek to identify.

4. Mark/s contrary to public order or morality.

Relative Proscriptions

Where the mark:

1. 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.

2. 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.

3. Is identical with or confusingly similar to an internationally well-known mark.

4. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services.

5. 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.

6. 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.

7. 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.

8. Consists of colors alone, unless defined by a given form.

9. Is contrary to public order or morality.

B. What are the requirements of registration?

1. A request for registration.

2. The name and address of the applicant.

3. Applicant’s nationality or place of domicile or the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any.

4. Where applicant is a juridical entity, the law under which it is organized and existing.

5. The appointment of an agent or representative, if the applicant is not domiciled in the Philippines.

6. Claim of priority, if any.

7. Claim of color, if any.

8. Where the mark is a three-dimensional mark, a statement to that effect.

9. Reproduction of the mark and facsimiles thereof.

10. A Transliteration or translation of the mark or of some parts of the mark.

11. The names of the goods or services for which the registration is sought.

12. A signature by, or other self-identification of, the applicant or his representative.

C. The Process of Trademark Registration

1. Filing of Application.

Applications must be filed with the Bureau of Trademarks (BOT) of the Intellectual Property Office (IPO). A duty officer is assigned to receive the request for registration. Once the application is submitted to the duty officer, a formality examination takes place. In a formality examination, the duty officer checks if the application complies with the following requirements needed for the grant of a filing date:

a) An express or implicit indication that the registration of a mark is sought;

b) The identity of the applicant;

c) Indications sufficient to contact the applicant or his representative, if any;

d) A reproduction of the mark whose registration is sought; and

e) The list of goods or services for which the registration is sought.

The Duty officer then issues an order of payment to the applicant An Application Number is issued after payment of the filing fee.

2. Search

The Application undergoes a search process. Through search, it will be known whether the trademark applied for has similar or identical marks.

3. Substantive Examination

An examiner will be assigned to assess the registrability of the application pursuant to the

rules.

The examiner communicates with the applicants through mail. When all requirements are

complied with, the mark is allowed, otherwise, the application is rejected.

4. Publication for Purposes of Opposition.

After allowance by the examiner, the application is published in the IPO Gazette to give

chance to those who might be damaged by the registration of the mark to oppose said

registration.

5. Registration

Upon certification by the Director of the Bureau of Legal Affairs that no notice of opposition, whether or not verified and whether or not by means of the original copy, has been filed within thirty (30) days from the date of release for circulation of the IPO Gazette publishing the application for opposition, and upon payment of the required fee, 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.

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