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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:
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.
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.
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:
1. The division shall not involve any change in the registration that requires republication of
the trademark, and
2. 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:
1. Within three (3) years from filing date of the application, subject to an extension of 6
months;
2. Within one (1) year from the fifth (5th) anniversary of the registration;
3. Within one (1) year from date of renewal; and
4. 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?
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.
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?
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.
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?
1. 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.
2. 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.