The Intellectual Property Office (IPOPHL) has scheduled a number of
public consultations to present and discuss its proposed regulations,
including the fees, implementing the Madrid Protocol. They start in May
2012 and run up to the first week of July, in time to meet the deadline
of the Protocol coming into force on July 25 2012. Most participants
commented that the proposed fees are high, and requested that they be
reduced. A great number of the questions pertained to international
registrations where the Philippines is a designated contracting party,
and the following points in the proposed regulations were clarified.
The Intellectual Property Code of the Philippines is not being
amended with the accession to the Madrid Protocol. Hence, in case of
conflict, the IP Code shall prevail. The trade marks covered by
international registrations shall be examined in accordance with the IP
Code. Opposition proceedings shall be governed by the provisions of the
IP Code and its regulations. The holder of the international
registration shall enjoy the same remedies as if the mark has been filed
directly with the IPOPHL. In case of opposition, the IPOPHL shall
notify the International Bureau of a provisional refusal. If the Bureau
of Legal Affairs (BLA), the adjudicating bureau of the IPOPHL or the
Office of the Director General of the IPOPHL affirms the refusal,
notwithstanding the availability of remedies to the appellate courts,
the IPOPHL will send to the International Bureau a notification of total
refusal of the international registration.
An international registration designating the Philippines shall have
the same effect, from the date of international registration, as if an
application for registration of the mark had been filed directly with
the IPOPHL under the IP Code.
All holders of international registrations that designate the
Philippines shall file a declaration of actual use directly with the
IPOPHL, with the required evidence attached, within three years from the
date of international registration. A one-time extension of six months
will be allowed upon request, and the holder may commence actual use of
the mark within the extension period.
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| Editha R Hechanova |
Hechanova Bugay & Vilchez
GF Chemphil Building Antonio Arnaiz Ave
Makati City 1223
Philippines
Tel: +63 2 888 4293
Fax: +63 2 888 4290
editharh@info.com.ph