Trademark Registration and Declaration of Actual Use

What is a Trademark?

A trademark is any visible sign capable of distinguishing the goods.[1]

It is any distinctive word, name, symbol, emblem, sign, or device, or any combination thereof, adopted and used by a manufacturer or merchant on his goods to identify and distinguish them from those manufactured, sold, or dealt by others.[2] It is "intellectual property deserving protection by law," and "susceptible to registration if it is crafted fancifully or arbitrarily and is capable of identifying and distinguishing the goods of one manufacturer or seller from those of another."[3]

What are the types of trademark for registration?

1. Word mark – this is represented by using words, letters, numbers or any other characters that can be typed.

2. Figurative mark – this is represented by using pictures, graphics, or images. This does not contain words or letters.

3. Figurative with words mark – this combines the use of pictures, graphics, or images with words or letters.

4. 3D mark – this is represented using a three-dimensional shape, such as the actual product or its packaging.

5. Stamped or marked container of goods – is any container of goods on which a mark is impressed or molded.

What is the procedure for trademark registration?

1. File an application providing the following information, among others:

a. Title of the Mark;

b. Claim of Color (s);

c. Transliteration/Translation;

d. Claim of Priority, stating the country, application number, and date of filing;

e. Whether the mark is three-dimensional, collective, or stamped or marked in container of goods.

2. The application will undergo Formality and Substantive Examinations.

If, after the examination, the application is found not to be registrable for any reason, the applicant will be advised of the reason/ s therefor, and will be given such information and references as may be helpful in the further prosecution of the application. [4]

The applicant has two (2) months from the mailing date of any action of the Examiner to respond thereto. [5]

3. Publication of the application in IPO e-Gazette for opposition.

if after examination or re-examination of an application for registration, it should appear to the Examiner- in-charge that the mark is registrable, it shall be published for opposition in the IPO eGazette for 30 days. [6]

This will allow the public to oppose the trademark application.

An opposition should be filed by way of a verified petition accompanied by a certification of non-forum shopping, and with proof of service to the representative or agent on record.

4. Issuance of Certificate of Registration and publication of approved TM in e-Gazette.

When no opposition is filed within thirty (30) days after the publication for opposition, the mark is deemed registered on the next calendar day following the expiration of the opposition period. In cases where a motion for extension for the period to file an opposition is granted by the Bureau of Legal Affairs, the mark is deemed registered the day following the expiration of the extension period. [7]

What is the duration of effectivity of an approved Trademark?

The registration shall remain in force for ten (10) years, renewable for periods of ten (10) years: Provided, That the requisite DAU as provided for under these Regulations has been filed. [8]

How to maintain ownership of Trademark?

By filing a Declaration of Actual Use (DAU) in accordance with the following schedule: [9]

1. Within 3 years from the filing of the trademark application.

2. Within 1 year from the 5th anniversary of the registration of the mark.

3. Within 1 year from the 5th anniversary of each renewal.

4. Within 1 year from the date of renewal of registration. This requirement only applies for registered trademarks due for renewal on January 01, 2017 and onwards.

For other discussions relative to Trademarks, please check our blog on Trademarks and Infringement.

[1] Section 121.1, Republic Act No. 8293 (R.A. No. 8293) as amended, Intellectual Property Code of the Philippines.

[2] Dermaline, Inc. v. Myra Pharmaceuticals, Inc., G.R. No. 190065, August 16, 2010.

[3] Wilton Dy and/or Philites Electronic & Lighting Products v. Koninklijke Philips Electronics, N.V., G.R. No. 186088, March 22, 2017.

[4] Rule 603, IPOPHL Memo Circular 17-010

[5] Rule 606, IPOPHL Memo Circular 17-010

[6] Rule 700 in relation to Rule 703, IPOPHL Memo Circular 17-010

[7] Rule 703, IPOPHL Memo Circular 17-010

[8] Rule 801, IPOPHL Memo Circular 17-010

[9] Rule 204, IPOPHL Memorandum Circular 17-010.

Recent Posts

See All