For each trademark application in Philippines, the Intellectual Property Office of Philippines (IPOPHL) will conduct an examination process including the following stages: Formality examination; Substantive examination; Publication for purpose of opposition; Issuance of the Certificate of Registration
Formality examination in Trademark examination process in Philippines
Formality examination is carried out by an assigned duty officer. In this stage, the duty officer checks whether or not the following requirements are fulfilled:
- An express or implicit indication that the registration of a mark is sought;
- Information on the applicant;
- Indications sufficient to contact the applicant or his representative (if any);
- A reproduction of the mark;
- The list of goods or services;
If all of the above requirements are fulfilled, an order of payment will be issued. An application number is issued after payment of the filling fee. Please note that this is only the first fee need to be paid.
Substantive examination in Trademark examination process in Philippines
If the application passes the formality examination, a substantive examination will be begun.
Substantive examination is carried out by an assigned examiner. The purpose of this stage is to determine whether or not the mark falls under any of the absolute grounds or relative grounds.
Absolute grounds cover generic, descriptive, non-distinctive, customary and immoral marks. Relative grounds include marks which are identical or confusingly similar to earlier filed marks or well known marks in Philippines or around the world.
The examiner also has the responsibility to request the applicant to correct or fulfill any remaining formality error or deficiency.
If there is any issue, the examiner will send to the applicant an office action. The applicant has 02 months from the mailing date of an office action to respond to all the issues raised. This period can be extended for an additional period of 02 months with a written request and payment of the required fee. The total period can not exceed 04 months from the mailing date of the office action.
After response by the applicant, the application will be re-examined or reconsidered. If the examiner decides to refuse the application again, the applicant may respond again, unless the office action is stated to be the final action.
Once the final action is issued, the applicant will have two choices that are file an appeal to the Director of the Bureau of Trademarks or comply the requirements made by the examiner.
If the applicant fails to respond in time, the application shall be deemed abandoned on the day immediately following the last day of the above-mentioned period. However, an abandoned application can be revive within 03 months from the date of abandonment with sufficient proofs and payment of the required fee. The grounds of revival may include fraud, accident, mistake or excusable negligence. Each issue can only to be used as a ground only one time.
Once all of the substantive requirements are fulfilled, the examiner will allow the application to be published publish in the IP Philippines Gazette.
Publication for purpose of opposition
The purpose of this stage is to give any other person or entity, whose rights or interest might be violated by the registration of the mark, a chance to oppose the registration. The applicant shall pay the required fee for publication within 02 months from the date of notice of publication. If the applicant fails to pay the fee, the application will be deemed abandoned. However, an abandoned application can still be revived.
Third parties will have 30 days from the publication date to file an opposition.
IPOPHL will send a notice the applicant to require a verified answer within 30 days from the date of reception of the formally completed opposition. If the applicant fails to respond in time, the opposition case will be decided solely on the claims of the third party.
A preliminary conference will be held to meditate the dispute. Within 10 days from the termination of the preliminary conference, the parties may submit their respective position papers. After that, the case will be submitted for decision.
Issuance of the Certificate of Registration
If there was no opposition or all of the oppositions are resolved in favor of the applicant, the application shall be deemed registered on the day following the expiration of the opposition period or the date of the decision on the opposition case.
The applicant shall pay the required fee for the issuance of the Certificate of Trademark Registration in Philippines within 02 months from the mailing date of the notice of the fee. The applicant also needs to pay the fee for the publication of registration in the IP Philippines Gazette.
After the issuance of the Certificate, the applicant still needs to submit the Declaration of Actual Use and related evidences to maintain the validity and to renew the protection period of the Certificate.
A straightforward registration case usually takes six months from the filling date. This period can be prolonged by office action and opposition by the third parties.
Please note that all the required fees regarding the registration of a trademark in Philippines is split into two categories: fee for Small Entity and fee for Big Entity. A small entity is an entity with 100M worth of assets or less. A big entity is an entity with more than 100M worth of assets.