Keeping up with amendments to trademark rules in the Philippines
Editha Hechanova of Hechanova Group overviews the Philippines’ recent overhaul of its trademark regulations, with significant repercussions for foreign applicants
The Intellectual Property Office of the Philippines recently amended the 2017 Rules and Regulations on trademarks, taking effect on February 1 2023. There were many procedural amendments affecting the requirements for filing trademark applications, but amendments which may create an additional burden for foreign applicants are as follows:
Composition of filing fees
The filing fees shall consist of:
A basic fee;
A colour claim fee (if applicable); and
A publication for opposition fee.
The filing fee also includes the following, if applicable, and may be paid in advance:
A convention priority claim fee;
A priority examination fee; and
An issuance and second publication fee.
The filing fee shall be deemed forfeited in favour of the government should the application not proceed to registration for whatever cause (Rule 501).
Submission of additional evidence during examination
If, during the examination of the application, the examiner finds actual basis to reasonably doubt the veracity of any aspect of the application, the examiner may require the applicant to submit sufficient evidence to remove doubt. This evidence may be in the form of a sworn statement of ownership and/or affidavit of good faith, among others (Rule 603).
Republication of mark amended by settlement or compromise agreement
In instances when the mark is the subject of a settlement and/or compromise agreement, and there was an amendment to the mark, its description, and/or specification, the amended mark may be republished for the public’s information (Rule 704).
Access to files by the public
Once the application has been published, access to files, including declaration of actual use and submitted proofs of use, may be made available to the public upon request and payment of the prescribed fees (Rule 702).
Assignment/transfer documents executed outside the Philippines
Assignment or transfer documents executed outside the Philippines must be authenticated by the Philippine Consulate Office at the place of execution. The past practice only required notarisation (Rule 1101).
Translation of documents executed outside the Philippines
The original copy of the document or assignment and its verified translation into English, if executed and notarised abroad, must be authenticated by the Philippine Consulate Office nearest the place of execution (Rule 1103).
Licence agreements must have quality control provision
A trademark licence agreement requires the licensor to ensure the quality control of the goods or services for 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 licence contract shall be invalid. A licence contract shall have no effect on third parties until such quality control is ensured (Rule 1107).