SECTION 1. Correspondence. – The following regulations shall apply to correspondence between registrants/applicants and the Office or the Bureau:
(a) Business to be transacted in writing. All business with the Office or Bureau shall be transacted in writing. Actions will be based exclusively on the written record. No attention will be paid to any alleged oral promise, stipulation, or understanding.
(b) Personal attendance of applicants and other persons unnecessary. Unless otherwise provided, the personal attendance of applicants and other persons at the Office is unnecessary. Their business can be transacted by correspondence.
(c) Correspondence to be in the name of the Director of Trademarks. All Office letters with respect to matters within the jurisdiction of the Bureau must be sent in the name of the Director of Trademarks. All letters and other communications intended with respect to such matters must be addressed to him and if addressed to any other officer, they will ordinarily be returned.
(d) Separate letter for each case. In every case, a separate letter shall be written in relation to each distinct subject of inquiry.
(e) Letter relating to applications. When a letter concerns an application it shall state the name of the applicant, the mark or trade name or name or other mark of ownership sought to be registered, the application number and the filing date of the application.
(f) Letters relating to registrations. When the letter concerns a registered mark, it shall state the name of the registrant, the mark registered, the number and date of the certificate of registration, and the classes of goods or services according to the Nice Classification.
(g) Subjects on which information cannot be given. The Office cannot respond to inquiries as to whether or not a mark is acceptable for registration in advance of the filing of an application.
On the propriety of making an application for the registration of a mark, the applicant must judge for himself or consult an attorney-at-law. The Office is open to him, and its records pertaining to all registrations granted may be inspected either by himself or by any attorney or agent he may call to his aid. Further than this the Office can render him no assistance until his application comes regularly before it in the manner prescribed by law and by these Regulations. A copy of the law, rules, or circular of information, with a section marked, set to the individual making an inquiry of the character referred to, is intended as a respectful answer by the Office.
Examiners’ digests are not open to public inspection. The foregoing shall not, in any way, be interpreted to prohibit the Office from undertaking an information dissemination activity in whatever format, to increase awareness on the trademark law.
SECTION 2. Fees and Charges to be Prepaid; Fees and Charges Payable in Advance. – Express charges, freight, postage, telephone, telefacsimile including cost of paper and other related expenses, and all other charges on any matter sent to the Office must be prepaid in full. Otherwise, the Office shall not receive nor perform any action on such matters. The filing fees and all other fees and charges payable to the Office shall be collected by the Office in advance of any service to be rendered.
SECTION 3. Applications pending on Effective Date of the IP Code. – The following regulations shall apply to applications pending on the effective date of the IP Code on January 1, 1998 (referred to in this Section as “pending applications”):
SECTION 3.1. Amendment of Pending Applications. – On or before December 15, 1998, all pending applications may be amended, if practicable, to bring them under the provisions of the IP Code. Accordingly, applicants with pending applications for registration in the former Supplemental Register who wish to pursue the grant of registration may amend their applications to comply with requirements for registration under the IP Code.
SECTION 3.2. Filing Date of Pending Applications; Declaration of Actual Use. Pending applications shall retain their priority date or original date of filing with the Bureau of Patents Trademarks and Technology Transfer. Applicants which elected to prosecute their applications under Republic Act No. 166 and its Implementing Rules and Regulations under which they were required to submit proof of use of the Mark, particularly with reference to applications for registrations based on use in the Philippines, shall file the corresponding declaration of actual use with evidence to that effect as prescribed by these Regulations, without need of any notice from the Office, within three (3) years from the effectivity of these Regulations, without possibility of extension. Otherwise, the application shall be refused or the mark shall be removed from the register by the Director motu prorio.[As amended by Office Order No. 17 (1998)]
SECTION 3.3. Processing of Pending Applications. – Pending applications amended in accordance with this Section shall be proceeded with and registration thereof granted in accordance with these Regulations. Where there are no applicable provisions in the IP Code and these Regulations, pending applications that are not amended in accordance with this Section shall be proceeded with and registration thereof granted in accordance with the laws and regulations under which they were filed. SECTION 3.3.1. Interference. – In all cases where interference could have been declared under Republic Act No. 166, as amended, and its implementing rules and regulations, as amended, but the same can not be declared such as when one of the applications has been amended and prosecuted under the IP Code while the other application or applications were not, the application which first meets all the requirements for registration shall be allowed and published for opposition in the IPO Gazette in accordance with these Regulations. The other applicant or applicants shall have the right to file a notice of opposition, without need of paying the filing fee, to determine whether or not any of the applicant/s and or oppositor/s has the right to the registration of the mark, and, all other issues including the registrability of the mark.
SECTION 3.4. Duration of Registration. – A certificate of registration granted to an application filed on or before December 31, 1997 and therefore pending on the effective date of the IP Code on January 1, 1998 shall be subject to the same conditions for maintenance as provided in these Regulations and shall have a term of twenty (20) years or ten (10) years as follows:
(a) Twenty (20) years, in the case of pending applications published for opposition prior to the effectivity of these Regulations with respect to which no notice of opposition was filed within the prescribed period under Republic Act No. 166 of thirty (30) days from release for circulation of the corresponding Official Gazette (BPTTT or IPO) as certified by the Caretaker/Officer-in-Charge or Director of the Bureau of Legal Affairs.
(b) Ten (10) years, in the case of pending applications published for opposition after the effectivity of these Regulations with respect to which no notice of opposition is filed as certified by the Caretaker/Officer-in-Charge or Director of the Bureau of Legal Affairs in accordance with these Regulation.
(c) Ten (10) years, in the case of pending applications subject of opposition or any other proceeding before the Office.
SECTION 3.5. Duration of Renewal of Registration Granted Under Republic Act No. 166. – The renewal of a registration granted under Republic Act No. 166 shall have the same term of ten (10) years and shall be subject to the same requirements for renewal as a registration granted under the IP Code.
SECTION 3.6. (a) Abolition of the Supplemental Register. – In compliance with the state policy declared in the IP Code, the IPO shall endeavor to issue certificates of registration that can stand up to scrutiny in infringement and other cases. Considering that (i) marks or trade names that are not registrable on the principal register under Republic Act No. 166 are registrable in the Supplemental Register; (ii) marks or trade names not registrable on the said principal register are not registrable under the IP Code; and , (iii) the Supplemental Register was abolished by the IP Code, all applications for registration in the Supplemental Register pending upon effectivity of the IP Code shall be examined in accordance with the IP Code and such applications which do not meet requirements for registration under the IP Code shall be rejected.[as amended by Office Order No. 40 (2002)]
(b) Release of Certificates of Registration of Applications in the Supplemental Register Allowed Prior to Effectivity of the IP Code. A Certificate of registration may be released covering an application for registration in the Supplemental Register provided that all the following requirements occurred prior to the effectivity of the IP Code, i.e. on or before 31 December 1997 : (1) such application had been allowed and the allowance was approved by Atty. Rosario N.E. Macatangay, Chief of the Trademark Examining Division of the then Bureau of Patents Trademarks and Technology Transfer as evidenced by the original copy of the Allowance in the file wrapper of the application; (2) Notice of Issuance of Certificate of Registration had been issued as evidenced by the original copy of the Notice in the file wrapper of the application or the applicant’s original copy thereof, and (3) all the required fees were fully paid for by the applicant as evidenced by the original copy of the Official Receipt, a photocopy of which shall be submitted by the applicant to the Bureau for inclusion in the corresponding file wrapper. The Registration shall remain in force for twenty (20) years from the date of allowance, without possibility of renewal, and subject to compliance with all the requirements for maintenance of the registration. The mark shall be published in the IPO Gazette and may be subject to cancellation on grounds provided under the law.[as amended by Office Order No. 40 (2002)]
SECTION 3.7. Renewal of a Registration in the Supplemental Register. – The following regulations shall apply to the renewal of a registration in the Supplemental Register under Republic Act No. 166:
SECTION 3.7.1 Registrations Subsisting on January 1, 1998. – The registration, or extension thereof, in the Supplemental Register under Republic Act No. 166 of a trade name or mark which was subsisting on the effectivity of the IP Code on January 1, 1998 shall remain in force for the entire term for which it was granted. However, such registration shall no longer be subject to renewal.
SECTION 3.7.2 Registrations, or Extension Thereof, with Term Ending on or Before December 31, 1997. – The renewal of a registration, or any extension thereof, in the Supplemental Register whose term ended on or before December 31, 1997 may be granted as follows :
(a) The application for renewal of registration in the Supplemental Register was seasonably filed including full payment of the required fee pursuant to Section 15 of Republic Act No. 166 and the applicable regulations;
(b) Full compliance with all the requirements for renewal shall have been made by the applicant on or before December 31, 1998;
(c) The renewal shall be for a term of twenty (20) years counted from the date of expiration of the registration or renewal subject of the application; and,
(d) The renewal herein granted shall no longer be subject to renewal.
SECTION 3.7.3. Notice to Comply. – For the effective implementation of Section 3.7.2 (b), all concerned examiners together with the Chief of the Trademark Examining Division of the former Bureau of Patents Trademarks and Technology Transfer have been directed to mail to the applicants the corresponding notice to comply with requirements for renewal of registration, or extension thereof, on or before October 31, 1998. Further, applicants who have not received said notice may request for a copy thereof from the examiner concerned who shall issue said copy within two (2) working days from receipt of the request.
SECTION 4. Repeals. – All rules and regulations, memoranda, circulars, and memorandum circulars and parts thereof inconsistent with these Regulations particularly the Rules of Practice in Trademark Cases, as amended, are hereby repealed; Provided that such earlier rules or parts thereof shall be continued only for the purpose of prosecuting applications for registration in the principal register filed as of December 31, 1997 wherein the applicants expressly elected to prosecute said applications under Republic Act No. 166; and, Provided, further, that there are no applicable provisions in these Regulations.
SECTION 5. Separability. – If any provision in these Regulations or application of such provision to any circumstance is held invalid, the remainder of these Regulations shall not be affected thereby.
SECTION 6. Effectivity. – These rules and regulations shall take effect fifteen (15) days after publication in a newspaper of general circulation.
Done this 29th day of October 1998.
(Sgd.) LENY B. RAZ
Bureau of Trademarks
(Sgd.) EMMA C. FRANCISCO