B. What are the requirements of registration? 1. 2. A request for registration. 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. 5. 6. 7. 8. 9. Where applicant is a juridical entity, the law under which it is organized and existing. The appointment of an agent or representative, if the applicant is not domiciled in the Philippines. Claim of priority, if any. Claim of color, if any. Where the mark is a three-dimensional mark, a statement to that effect. 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. 1. The Process of Trademark Registration 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) b) c) d) e) An express or implicit indication that the registration of a mark is sought; The identity of the applicant; Indications sufficient to contact the applicant or his representative, if any; A reproduction of the mark whose registration is sought; and 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 1

200.00 300.1.1 Basic 2.1.2 Use of an old drawing.1 By Examiner 2.00 250.1.3. Registration Upon certification by the Director of the Bureau of Legal Affairs that no notice of opposition.000. 4.00 500.500. 2.1. whether or not verified and whether or not by means of the original copy. 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.3 2nd extension 2. After allowance by the examiner. EXAMINATION 2.00 500.00 400. tradenames and marked or stamped containers.5.00 250.3. claim of distinctiveness (per class) 1.1. SECTION 5. — The fees provided in this Section shall apply to trademarks.00 750.00 1.1 Filing Fee (per class) 1.00 5.5.00 1.2 Second 1.00 500.4 Revival of Abandoned Application (Without fault of Office) 2.3. service marks.2 1st extension 2.1 Request for 505 506 2. When all requirements are complied with.1. Schedule of Trademark-related Fees.00 1080. Publication for Purposes of Opposition. the application is rejected.00 500.2.00 2.1 Extension of time to file any response (1-60 days) 2. SCHEDULE OF TRADEMARK-RELATED FEES Reference Code 1. The issuance of the certificate of registration shall be published in the IPO Gazette and shall be entered on the records of the Office.3 Divisional Application 507 508 509 510 2. 5.00 1.00 3.00 800.The Application undergoes a search process. has been filed within thirty (30) days from the date of release for circulation of the IPO Gazette publishing the application for opposition. it will be known whether the trademark applied for has similar or identical marks. Through search.3 Claim of color.5 Suspension of Action 511 2.600.00 500.00 250.1. and upon payment of the required fee.600.00 Type of Fee Big Small 2 .00 250. Substantive Examination An examiner will be assigned to assess the registrability of the application pursuant to the rules.2 Claim for Convention Priority (per class) 1. the office shall issue the certificate of registration. the mark is allowed.00 250.1.1. otherwise.2 By Director 512 513 600.00 500.2.00 500.1 First 2.00 2160.5. The examiner communicates with the applicants through mail. 3.4 Request for Priority Examination 2. PRE-EXAMINATION 501 502 503 504 1.

) Single extension of time to file Declaration of Use 6. etc.750.1 Issuance of 700.2 Within 1 year from 10th year anniversary 5.00 250.00 500.00 plus publication fee 524 525 3.3 Registered under RA 166 and expiring after June 3.1 Amendment Big 700.1 Within 3 years from December 2.00 800. REGISTRATION 3.00 plus publication fee 523 800. FILING OF DECLARATION OF ACTUAL USE 5.3.7 Amendment fee (to correct formalities. 1998 1.00 3. RENEWAL OF REGISTRATION 1.2 Transfer Certificate of Registration 500.00 5.750.3.1 Filed and registered under RA 8293 (per class) 526 527 5.500.2 Correction (Without fault of Office) 1.600.200.00 2.00 0 3.2.00 0 Original/New/Replacement/Renewal of Certificate of Registration 1.8 To question correctness of Examiner's action 3.1.00 1.2.00 1.00 515 516 2.1.0 800.00 250.600.00 350.00 plus publication fee 518 3.00 0 1.3 Within 1 year from 15th year anniversary 5.0 1.00 500.2.000.00 1.00 250.600.00 517 3.1.2 Filed Under RA 166 (per class) 528 5.4 Use of mark by a related company 5.2.3 Voluntary Surrender/Abandonment 500.00 5.6 Conversion of application from Home Registration to "intent to use" 2. ANY OTHER PETITION/MOTION/REQUEST not required by the Office or not specified under this section 2.00 plus publication fee 521 3. 2004 (per class) 529 530 531 532 533 534 5.500.1.1.00 500.00 Small 350.514 2.00 2.00 plus publication fee 520 3.1 Within 1 year from 5th year anniversary 5.1 Within 3 years from filing date 5.000.00 250.5 Voluntary Disclaimer 500.1.000.1 Within 1 year from 5th year anniversary 5.4 Voluntary Cancellation 500.00 0 600.6 Division of Registration 4.000.00 250.00 1.2.2 Petition/Request for 519 3.00 Per Class 5.00 0 5.000.00 500.0 2.000.0 Additional Information 3 .2.3.00 plus publication fee 522 3.0 2.000.00 300.

ashtonbg. A name which denotes what the product does reflects poor understanding of what a brand really entails. the development of the right brand name is very crucial to the success of a product and the business. p. the business owner must ensure that the brand name is successful in both its product introduction and its management over time. especially of what the product does. 1996. (Roberto. 1996. This implies that in developing a brand name. 1996. A name is like a work of art. 1996. it should distinguish it. Likewise. with a name. 2. What’s in a name? There is great value to be gained from a strong brand name. A study (Schmitt and Pan. Thus. 4 . The name must be hard to imitate. (Roberto. The name gives recognizability to the new product. 116) 3. Ned Roberto.116) Other considerations in choosing the right name are: 1. 2001). (www. p. 1994) suggested that the consideration must include at least four linguistic aspects: How the consumers in the countries regard a written name. The ideographic character of the language must be considered when developing and promoting a brand name. “What is the Right Name?”. If managed properly. Dr. a new brand name can become one of a company’s most valuable and vital assets. The brand name must not describe the product. that is the question. especially once it has been established. Thus. p. The third consideration is important in countries where the language is ideographic and based on Chinese characters. There must be a conscious effort to develop a brand that is both differentiating and trademarkable. The right name clears the way for market acceptance.116) Of the two. the attention must be on creating “distinct writings” for the name. It is the name’s calligraphic strokes that count in making it both memorable and rich in imagery. should be avoided. 116) Consider the characters composing the name as “sign symbols”.TIPS ON CHOOSING YOUR BRAND I. the latter function is more important because it embodies the essence of brand name as the product’s “identity” or its “core indicator”. The name lends a positive. (Roberto. (“User-Friendly Marketing Research. B. relevant meaning to the new product. The Development of a Brand Name A. A brand name is right when it effectively performs two important functions: 1. nothing can be left to chance. Businessmen believe that opportunity knocks only once. p.com. 2. A name which is a mere product descriptor.

with a falling. Beware of the different homonyms the pronunciations of the name’s characters carry. Current Usage Words are words that already have meaning in our language. “Extremely inventive products and companies that represent new ideas can make their names almost synonymous with the industry itself. 2. Current Usage Words Contrary to Neologisms. is a word that is created. Advantages of Neologisms: a) The distinctive nature of new words would mean fewer trademark difficulties. when first introduced. or new word. neologism does not speak of the product’s key benefit. and (3) the character’s smaller units. The spoken name may have homonyms with undesirable meanings. This suggests that the right brand name has no or minimal “tonal confusions”.com. Drawbacks a) One problem with neologisms is that they have no meaning when they were first introduced. for example. This means that a company must invest more in the advertisement of its name b) Most of the time. 2001) Companies like Kleenex and Xerox practically invented their own product class. p.Characters are inherently meaningful. rising or flat tone. 116) C. 1996. Cantonese and Mandarin are tonal so that a name with the same phonetic pronunciation will have different meanings depending on how it is pronounced. but trigger something more in the minds of 5 . “All send messages about the product or company to which they are affixed. it is important to make sure that there are no negative meanings in: (1) the whole name. The tonal character of the names as pronounced.” (www. Neologisms A neologism. thus neologisms are considered to be globally friendly.ashtonadams. (2) each of its component characters. All possess an element of description. even up to their smaller units. 4 Basic Types of Names. c) Neologisms might encounter difficulties in spelling and pronunciation.(Roberto. 1. Thus. Most of the now famous neologisms were mispronounced when they were first introduced. Examples of neologisms are Pepsi and Xerox. a typical problem when introducing new words. The right name for a brand must sound good to consumers or at least have no negative sound associations. b) Most neologisms can be understood and recognized in different languages. The names People and Sprint are current usage names. Their Advantages and Drawbacks An important element in the development of a brand name that should be discussed in greater detail is what type of name would best suit the entity in question. thus missing the opportunity to position the product using its name.

Most acronyms have technical backgrounds. it is important to understand the essence and the core message of a brand. (www. Like current usage words. one must make certain that the messages conveyed by these words areall positive. the word cola is not protectablebecause it describes an entire product class. however. Thus.ashtonadams.com. Today. The probability of legal problems is also less since hybrids are not likely to be the same as other regular words. 20001) and tts power is measured by its ability to elevate brand recognition and magnify brand imagery. they too must convey positive messages. clip arts and digital illustrations took the place of sketches in logo development.their market. is that initially these acronyms mean nothing and may leave the customers’ minds blank. It is therefore important to choose the right fonts to clearly convey the brand’s message. the logo development process begins with rough sketches. When designing a visual identity. 2001) This names are descriptive enough to inform but can distinctively evoke positive images in the mind of the consumer. B. What is a Design/Design mark? What Can You See? Design mark is a brand’s graphical representation. Typography The process of assigning of fonts and typefaces is called typography. Nevertheless. 6 . beverages from the Kola nut.com. Moreover. II.ashtonbg. 2001) 4. companies like AT&T which took the risk with acronyms made it big. one may actually be able to communicate better with hybrids since the combination of words can highlight several attributes of the product.Current usage words can also pose problems in their translation to otherlanguages. Like current usage words. It supplies the visual component of a brand (www. The name Polo refers to clothing but also suggests sophistication and good taste. Drawbacks The problem with Current usage words is that their being too descriptive will proscribethem to be legally owned and registered.com. Acronyms like neologisms are advantageous because there are less legal problems in their registration. hybrids can send the right messages with the name. with the new technology.ashtonadams. Fonts can convey a myriad of emotions.The challenge is to create a design that can distinctly and clearly communicate the brand’s key message. The design must be powerful yet simple in form. GE (General Electric) and IBM (International Business Machines). The problem. 3.” (www. The Hybrid Hybrids are combinations of current usage words or recognizable syllables. 2. The Acronym Acronyms are collection of letters that send out a targeted message. Like neologisms. A. Examples of such are ATM (Automated Teller Machine). hybrids must be pronounceable and memorable. For example. Elements Of Design Illustration Before. 1.

or any simulation thereof. deceptive or scandalous matter. 5. or (ii) closely related goods or services. Color Finally. Consists of immoral.3. Is likely to mislead the public. Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date. Layout Lay-outing is the bringing together of the first two elements (the icons and illustrations) to create a holistic appearance.. Is identical with or confusingly similar to an internationally well-known mark. quality. 4. signature. Mark/s contrary to public order or morality. color gives the finishing touches to the design. or (iii) if it nearly resembles such a mark as to be likely to deceive or cause confusion. Consists of a name. 2. or portrait of a deceased President of the Philippines. Consists of the flag or coat of arms or other insignia of the Philippines. Relative Proscriptions Where the mark: 1. A good layout would make all the elements complement each other to powerfully convey the brand’s message. particularly as to the nature. 3. Exceptions to this rule are: Absolute Proscriptions Where the mark: 1. moods and meanings. What may be registered? All marks that are capable of distinguishing goods or services are registrable. if any. 4. or of any foreign nation . in respect of (i) the same goods or services. or the name. 7 . during the life of his widow. 3. Different colors and their combinations convey different emotions. portrait or signature identifying a particular living individual except by his written consent. 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. GUIDE TO TRADEMARK REGISTRATION A. It is therefore a matter of choosing the right colors to complement the story that would make the brand design successful. characteristics or geographical origin of the goods or services. except by written consent of the widow. 2. 4. Consists exclusively of signs that are generic for the goods and service that they seek to identify.

intended purpose. unless defined by a given form. 8. 9. value. or other characteristics of the goods or services.ipophil.6. 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. Consists of colors alone. 7. quality.ph/ 8 . geographical origin. time or production of the goods or rendering of the services. Consists exclusively of signs or of indications that may serve in trade to designate the kind.gov. Source: http://www. quantity. Is contrary to public order or morality.

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