Trademark exam

Question 1

What is a mark?

Answer 1

“Mark” means ANY VISIBLE SIGN CAPABLE of DISTINGUISHING the goods (trademark) OR SERVICES (service mark) of an enterprise and shall include a stamped or marked container of goods; (

Question 2

What is a collective mark?

Answer 2

Collective mark” means ANY VISIBLE SIGN DESIGNATED as such in the application for registration and CAPABLE of DISTINGUISHING THE ORIGIN or any other common characteristic, including the QUALITY of goods or services OF DIFFERENT ENTERPRISES which use the sign under the control of the registered owner of the collective mark;

Question 3

What is a tradename?

Answer 3

Trade name” means the NAME OR DESIGNATION used in IDENTIFYING or DISTINGUISHING an enterprise

Question 4

How are marks acquired?

“Acquisition of marks”

Answer 4

Rights in a mark shall be acquired THROUGH REGISTRATION made validly in accordance with the provisions of this law.

Question 5

What are non-registrable marks?

Answer 5

(a) Consists of immoral, deceptive or scandalous matter, or matter which may DISPARAGE or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
(b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;
(c) Consists of a (NPS) name, portrait or signature identifying a particular LIVING individual except by his written consent, or the (NPS) 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;
(d) 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;
(e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;
(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use;
(g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
(h) Consists exclusively of signs that are generic for the goods or services that they seek to identify;
(i) 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;
(j) 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;
(k) 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;
(l) Consists of color alone, unless defined by a given form; or
(m) Is contrary to public order or morality.

Question 6

in relation to , k and l of non-registrable marks, what happens if it beomes distinct?

Answer 6

n paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as used IN CONNECTION with the applicant’s goods or services in commerce, proof of substantially EXCLUSIVE and CONTINUOUS use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made.

Question 7

Is prior use still required?

Answer 7

Prior use of a mark in the Philippines is NOT necessary to file an application. The use of mark becomes necessary only after the application for its registration has been filed because a Declaration of Actual Use (“DAU”) in Philippine commerce is required to be submitted within 3 years from filing date.

Question 8

What are the tests to determine confusing similarity between marks?

Answer 8

The tests in determining confusing similarity between marks are:
Dominancy test
Holistic test and idem Sonans

Question 9

What is dominancy test?

Answer 9

The dominancy test focuses on the SIMILARITY of the PREVALENT OR DOMINANT features of the competing trademarks that might cause confusion, mistake, and deception in the mind of the purchasing public.

“Duplication or imitation is not necessary; neither is it required that the mark sought to be registered suggests an effort to imitate. Given more consideration are the aural and visual impressions created by the marks on the buyers of goods, giving little weight to factors like prices, quality, sales outlets, and market segments. “

Question 10

What is a holistic test?

Answer 10

The marks are considered as a whole.

An essential factor in determining whether two trademarks are confusingly similar is whether or not there is a GENERAL SIMILARITY IN THEIR APPEARANCE (Luft Co., Inc. vs. Ngo Guan, 18 SCRA 944 (1996).

This requires a comparison of the marks in their entirety as they appear in their respective labels and in relation to the goods to which they are attached since the discerning eye of the observer must focus NOT only on the predominant words, but also on the other features appearing on the labels.

Factors such as sound; appearance; form, style, shape, size or format; color; ideas connoted by the marks; the meaning, spelling, and pronunciation of words used; and the setting in which the words appear’ may be considered (Etepha v. Director of Patents, G.R. No. L-20635, 31 March 1966).

Question 11

What is idem sonans in trademark?

Answer 11

A MARK with a DIFFERENT SPELLING BUT is SIMILAR IN SOUND with a registered mark WHEN READ, may be ruled as being confusingly-similar with the said registered mark or senior mark.

Question 12

What is well-known mark in trademark?

Answer 12

a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the RELEVANT sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law.

Question 13

What are the rights conferred by registration?

Answer 13

Exclusive right to:
1. Owner of registered mark shall have the exclusive right to Prevent all third parties not having the owner’s consent from using IN THE COURSE OF TRADE identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.
In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in RELATION to those goods or services would INDICATE A CONNECTION between those goods or services and the owner of the registered mark: Provided, further, That the interests of the owner of the registered mark are likely to be damaged by such use.

Question 14

What is the exception to the exclusive right to prevent others from using the mark?

Answer 14

XPN: Except in cases of importation of drugs and medicines allowed under Section 72.1 of this Act and of off-patent drugs and medicines
- There shall be no infringement of trademarks or tradenames of imported or sold patented drugs and medicines allowed under Section 72.1 of this Act, as well as imported or sold off-patent drugs and medicines: Provided, That, said drugs and medicines bear the registered marks that have not been tampered, unlawfully modified, or infringed upon, under Section 155 of this Code.

Question 15

What is the consequence of the Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used?

Answer 15

Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.

XPN: secondary meaning-“
Under the doctrine of secondary meaning, a word or phrase originally incapable of exclusive appropriation with reference to an article in the market, because geographical or otherwise descriptive might nevertheless have been used so long and so exclusively by one producer with reference to this article that, in that trade and to that group of the purchasing public, the word or phrase has come to mean that the article was his produce

Question 16

May an application for registration of a mark or the registration itself be assigned or transferred?

Answer 16

An application for registration of a mark, or its registration, may be assigned or transferred with or without the transfer of the business using the mark.

Such assignment or transfer shall, however, be null and void if it is liable to mislead the public, particularly as regards the nature, source, manufacturing process, characteristics, or suitability for their purpose, of the goods or services to which the mark is applied.

49. 3. The assignment of the application for registration of a mark, or of its registration, shall be in writing and require the signatures of the contracting parties. Transfers by mergers or other forms of succession may be made by any document supporting such transfer.
50. 4. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the prescribed fee; assignment and transfers of applications for registration shall, on payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in the name of the assignee or transferee.
51. 5. Assignments and transfers shall have no effect against third parties until they are recorded at the Office.

Question 17

What must include in the license contract?

Answer 17

Any license contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the QUALITY of the goods or services of the licensee in connection with which the mark is used. If the license contract does not provide for such quality control, or if such quality control is not effectively carried out, the license contract shall not be valid.

license contract shall be submitted to the Office which shall keep its contents confidential but shall record it and publish a reference thereto. A license contract shall have no effect against third parties until such recording is effected. The Regulations shall fix the procedure for the recording of the license contract.

Question 18

When may the mark be cancelled?

Answer 18

Cancellation. ‑ 151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows:

(a) Within five (5) years from the date of the registration of the mark under this Act.

(b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.
If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed.
A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service.
The PRIMARY SIGNIFICANCE of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. (n)

(c) At any time, if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.

Question 19

When may the non-use of the mark be excused?

Answer 19

Non-use of a mark may be excused if caused by circumstances arising INDEPENDENT of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark.

use of the mark in a form different from the form in which it is registered, which does not alter its distinctive character, shall not be ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark.

152.3. The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class.

Question 20

When is there infringement

Answer 20

Any person who shall, without the consent of the owner of the registered mark:

155.1. Use in commerce any
reproduction,
counterfeit
copy, or
colorable imitation of a registered mark or
the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

155.2. Reproduce,
counterfeit,
copy or
colorably imitate a registered mark or a dominant feature thereof and
apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth:

Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material.

Question 21

What are the actions for infringement?

Answer 21

The owner of a registered mark may

1. recover DAMAGES
   - from any person who infringes his rights, and the measure of the damages suffered shall be either
   a. the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or
   b. the profit which the defendant actually made out of the infringement, or
   c. in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party.

The court may IMPOUND during the pendency of the action, sales invoices and other documents evidencing sales.

156.3. In cases where ACTUAL INTENT to MISLEAD the public or to DEFRAUD the complainant is shown, in the discretion of the court, the DAMAGES may be DOUBLED

The complainant, UPON PROPER SHOWING, may also be granted INJUNCTION.

Question 22

Does the court have the power to Order Infringing Material be Destroyed?

Answer 22

157. 1 In any action arising under this Act, in which a violation of any right of the owner of the registered mark is ESTALISHED , the court may order that goods found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds, matrices and other means of making the same, shall be delivered up and destroyed.
158. 2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations, to permit the release of the goods into the channels of commerce.

Question 23

Does the court have the power to Order Infringing Material be Destroyed?

Answer 23

157. 1 In any action arising under this Act, in which a violation of any right of the owner of the registered mark is ESTALISHED , the court may order that goods found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds, matrices and other means of making the same, shall be delivered up and destroyed.
158. 2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations, to permit the release of the goods into the channels of commerce.

Question 24

When can you claim damages in TI?

Answer 24

In any suit for infringement, the owner of the registered mark shall NOT be entitled to recover profits or damages UNLESS the acts have been committed with 1. KNOWLEDGE that such imitation is LIKELY TO CAUSE CONFUSION, or to CAUSE MISTKE, or to DECEIVE. Such KNOWLEDGE IS PRESUMED if the registrant GIVES NOTICE that his mark is registered by DISPLAYING with the mark the words ‘”Registered Mark” or the letter R within a circle or if the defendant had otherwise actual notice of the registration

Question 25

What are the limited actions for infringment?

Answer 25

Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act shall be limited as follows: 159. 1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall have NO effect against ANY person who, IN GOOD FAITH, BEFORE the filing date or the priority date, was using the mark for the purposes of his business or enterprise: Provided, That his RIGHT may only be transferred or assigned TOGETHER with his enterprise or business or with that part of his enterprise or business in which the mark is used. 159. 2. Where an infringer who is engaged SOLELY in the business of printing the mark or other infringing materials for others is an INNOCENT infringer, the owner of the right infringed shall be entitled as against such infringer only to an INJUNCTION against future printing. 159.3. Where the infringement complained of is contained in or is part of paid advertisement in a newspaper, magazine, or other similar periodical or in an electronic communication, the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an INJUNCTION against the presentation of such advertising matter in FUTURE ISSUES of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to INNOCENT infringers: Provided, That such injunctive relief shall not be available to the owner of the right infringed with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter where restraining the dissemination of such infringing matter in any particular issue of such periodical or in an electronic communication WOULD DELAY the delivery of such issue or transmission of such electronic communication is customarily conducted in accordance with the sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter; and 159.4 There shall be no infringement of trademarks or tradenames of imported or sold drugs and medicines allowed under Section 72.1 of this Act, as well as imported or sold off-patent drugs and medicines: Provided, That said drugs and medicines bear the registered marks that have not been tampered, unlawfully modified, or infringed upon as defined under Section 155 of this Code.

Question 26

Do foreign corporation has the right to sue in Trademark or serviemark enforcement?

Answer 26

Any foreign national or juridical person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines under existing laws.

Question 27

What is the Action for False or Fraudulent Declaration?

Answer 27

Any person who shall procure registration in the Office of a mark by a false or fraudulent declaration or representation, whether oral or in writing, or by any false means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof

Question 28

When name cannot be used as trade name?

Answer 28

name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put 1. it is contrary to public order or morals and if, in particular, 2. it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name.

Question 29

Tradename

Answer 29

65. 2. (a) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties. (b) In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful. 165. 3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply mutatis mutandis. 165. 4. Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis mutandis.

Question 30

Acquisition of tradename

Answer 30

65.2. (a) Notwithstanding any laws or regulations providing for any obligation to REGISTER trade names, such names shall be protected, EVEN PRIOR to or without registration, against any unlawful act committed by third parties.

Question 31

When may collective marks be cancelled?

Answer 31

e Court shall cancel the registration of a collective mark if the person requesting the cancellation proves that only the registered owner uses the mark, or that he uses or permits its use in contravention of the agreements referred to in Subsection 166.2 or that he uses or permits its use in a manner liable to deceive trade circles or the public as to the origin or any other common characteristics of the goods or services concerned. 167.4. The registration of a collective mark, or an application therefor shall not be the subject of a license contrac

Question 32

Unfair competition in TM

Answer 32

A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a registered mark is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights. 168.2. Any person who shall EMPLOY DECEPTION or any other means contrary to good faith by which he shall PASS OF THE GOODS he goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor. Confusion of goods (product confusion), where the ordinarily prudent purchaser would be induced to purchase one product in the belief that he was purchasing the other; and confusion of business (source or origin confusion), where, although the goods of the parties are different, the product, the mark of which registration is applied for by one party, is such as might reasonably be assumed to originate with the registrant of an earlier product, and the public would then be deceived either into that belief or into the belief that there is some connection between the two parties, though inexistent.

Question 33

What are the acts of unfair competition?

Answer 33

he following shall be deemed guilty of unfair competition: (a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose; (b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public; or (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another.

Question 34

What is the use of madrid protocol?

Answer 34

one of two treaties comprising the Madrid System for international registration of trademarks. It provides a cost-effective and efficient way for trademark holders -- individuals and businesses -- to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency. Moreover, no local agent is needed to file the initial application.

Question 35

Coverage of madrid protocol

Answer 35

An application for international registration (international application) may be filed only by a natural person or legal entity having a connection – through establishment, domicile or nationality – with a Contracting Party to the Agreement or the Protocol. A mark may be the subject of an international application only if it has already been registered with the trademark office of the Contracting Party with which the applicant has the necessary connections (referred to as the office of origin). However, where all the designations are effected under the Protocol (see below), the international application may be based simply on an application for registration filed with the office of origin. An international application must be presented to the International Bureau of WIPO through the intermediary of the office of origin.

Question 36

registration under madrid protocol

Answer 36

Once the International Bureau receives an international application, it carries out an examination for compliance with the requirements of the Protocol and its Regulations. This examination is restricted to formalities, including the classification and comprehensibility of the list of goods and/or services. If there are no irregularities in the application, the International Bureau records the mark in the International Register, publishes the international registration in the WIPO Gazette of International Marks (hereinafter referred to as "the Gazette"), and notifies it to each designated Contracting Party. Any matter of substance, such as whether the mark qualifies for protection or whether it is in conflict with a mark registered previously in a particular Contracting Party, is determined by that Contracting Party's trademark office under the applicable domestic legislation. The Gazette is available in electronic form (e-Gazette) on the Madrid system website.

Question 37

territioriality under adrid protocol

Answer 37

when designated Contracting Parties examine the international registration for compliance with their domestic legislation, and if some substantive provisions are not complied with, they have the right to refuse protection in their territory. Any such refusal, including an indication of the grounds on which it is based, must be communicated to the International Bureau, normally within 12 months from the date of notification. However, a Contracting Party to the Protocol may declare that, when it is designated under the Protocol, this time limit is extended to 18 months. That Contracting Party may also declare that a refusal based on an opposition may be communicated to the International Bureau even after the 18-month time limit. The refusal is communicated to the holder of the registration or the holder's representative before the International Bureau, recorded in the International Register and published in the Gazette. The procedure subsequent to a refusal (such as an appeal or a review) is carried out directly by the competent administration and/or court of the Contracting Party concerned and the holder, without the involvement of the International Bureau. The final decision concerning the refusal must, however, be communicated to the International Bureau, which records and publishes it.

Question 38

Registration

Answer 38

Convenient - File a single application in one language, and pay one set of fees to apply for trademark protection in multiple territories; manage your brand portfolio through a centralized system, and easily expand protection into new markets. 1. ENTITLEMENT You can file an international application with IPOPHL if: you are a national of the Philippines you are domiciled in the Philippines you have a real and effective industrial or commercial establishment in the Philippines 2. BASIC MARK You should have a duly maintained local trademark registration or an active local trademark application with IPOPHL.

Question 39

period of protection under madrid protocol

Answer 39

The trademark registration granted through the Madrid Protocol is valid for 10 years from the date of registration. You can renew the registration at the end of each 10-year period directly with WIPO with effect in the designated Contracting Parties concerned.

Question 40

Requirements under madrid protocol

Answer 40

What are the requirements for submitting an international application through the IPOPHL as an office of origin? The following are the minimum requirements to submit an international application: Name, address and contact details of the applicant or the address and contact details of the applicant’s representative, if any; The Designated Contracting Parties; Reproduction of the mark; and Indication of the goods and services for which registration of the mark is sought. The applicant must fill out Form MM2, to be filed with the IPOPHL as the office of origin. Under the Agreement, an applicant for the international registration of a mark must have already obtained registration of the mark in the country of origin (basic registration). Under the Protocol, an international application may be based on either a registration with the Office of origin (basic registration) or on an application for registration filed with that Office (basic application). The international application may The international application must be filed through the Office of origin. The first contact that an Office will have with an international application, therefore, is when a request is made to it to present an international application to the International Bureau An international application must be presented to the International Bureau on the official for An international application which is governed (in whole or in part) by the Agreement must be based on the registration of a mark (or on several registrations of the same mark) by the Office of origin. An international application which is governed exclusively by the Protocol may be based either on a registration by the Office of origin or on an application for registration filed with that Office; equally, it may be based on several applications or registrations (or a combination thereof). Article 3(1) Rule 9(5)(a) and (b) 07.28 A basic registration effected by the Office of origin must be indicated by its registration number and its date of registration. This date should be the date which, under the law which governs the Office concerned, is regarded as the date of registration, which will not necessarily be the date on which the mark was actually recorded by the Office in its register; for instance if, under the law applicable to that Office, a mark is registered as of the date of filing, that is the date that should be given here. Where an international application is based on a registration with the Office of origin, the number of the application from which the said registration resulted should not be given, because it is liable to be confused with a basic application.

Question 41

Registration under MP

Answer 41

1. Entitlement To be entitled to use the Madrid System, you must first have a connection with one of its members (known as “Contracting Parties”). This connection will determine your Office of origin (national/regional intellectual property office). You must submit your international application through this Office of origin. To meet the entitlement requirement, you must: have a business (i.e., a real and effective industrial or commercial establishment) in a Contracting Party, or be domiciled in a Contracting Party, or be a national of a Contracting Party For example, if you are a national of, or have a business in Australia, your connection will be with Australia (a member of the Madrid System) and you must file your international application through Australia’s Intellectual Property (IP) Office. If you have a connection with several members (for example, you may be a national of Mexico living in the United States of America), you can choose any one of these members to file your international application. Using the Madrid Protocol, your international application will also be filed through your country’s trademark office. They will then certify your application and forward it to the World Intellectual Property Organization. WIPO will then review the application and send it to the trademark offices in the countries you’ve indicated on the application. Again, the Madrid Protocol will not grant your trademark in every country for which you’ve applied. Each individual trademark office will examine your application and make a decision based on their specific trademark legislation. You should be notified by each trademark office within 12-18 months regarding approval or rejection. Once approved, you will need to renew your trademark registration every 10 years.