IPOPHL Trademark Agent cheat sheet

Section 123.1 of IP Code: A mark is registrable if it is a visible sign capable of distinguishing goods/services, including names, words, signs, symbols, devices, letters, numerals, colors, shapes, or combinations.

Absolute grounds under Section 123.1(d): Marks that are generic, descriptive, deceptive, scandalous, contrary to public order, or consist exclusively of shapes that result from the nature of the goods, are necessary to obtain a technical result, or give substantial value to the goods are unregistrable.

Descriptiveness: A mark is descriptive if it merely describes the quality, quantity, intended purpose, value, geographical origin, or other characteristics of the goods/services. It can be registered only upon proof of acquired distinctiveness (secondary meaning).

Genericness: A mark that has become the common name for the goods/services in the relevant market cannot be registered or maintained. Examples: 'Escalator' and 'Cellophane' were held generic.

Deceptiveness: A mark is deceptive if it misrepresents the nature, quality, or geographical origin of the goods/services, likely to mislead consumers.

Scandalous or immoral matter: Marks containing scandalous, immoral, or disparaging matter are refused under Section 123.1(d)(iii).

Public order: Marks contrary to public order or morality are refused. This includes marks promoting illegal activities or offensive symbols.

Functional shapes: Shapes that are functional (result from the nature of the goods, necessary to obtain a technical result, or give substantial value) are not registrable as trademarks under Section 123.1(d)(iv).

Color marks: A single color may be registrable if it has acquired distinctiveness. Color combinations may be registrable if capable of distinguishing.

Section 123.1(f): A mark cannot be registered if it is identical to a registered mark or has confusing similarity to a prior registered mark for identical or similar goods/services.

Section 123.1(g): A mark cannot be registered if it is identical or confusingly similar to a well-known mark, whether or not registered in the Philippines, for identical or similar goods/services.

Section 123.1(h): A mark cannot be registered if it is identical or confusingly similar to a well-known mark for dissimilar goods/services, if use would indicate a connection and likely damage the well-known mark owner's interests.

Confusing similarity test: The marks must be compared as a whole, considering visual, aural, and conceptual similarities, and the goods/services must be related. Dominant features are given more weight.

Prior rights: The first to file (or first to use if applicable) obtains rights. A prior registrant or user can oppose or cancel a later application.

Well-known marks: Determined by factors such as market share, duration of use, geographical extent, promotional efforts, and recognition. No need for registration in the Philippines.

Bad faith: Applications filed in bad faith, such as to free-ride on another's goodwill, can be opposed or cancelled.

Related goods: Goods/services are related if they are likely to be perceived as coming from the same source due to the similarity of marks.

Filing requirements: A trademark application must include a request for registration, name and address of applicant, a reproduction of the mark, list of goods/services, and payment of fees.

Priority claim: An applicant may claim priority based on an earlier foreign application filed within 6 months (Paris Convention) or 6 months (Madrid Protocol).

Examination: IPOPHL examines for formalities, absolute grounds, and relative grounds. If refused, applicant may respond within 2 months (extendible).

Publication: If allowed, the application is published in the IPOPHL Gazette for opposition. Opposition period is 30 days from publication.

Registration: If no opposition or opposition is dismissed, a Certificate of Registration is issued. The mark is registered for 10 years, renewable for 10-year periods.

Declaration of Actual Use (DAU): A DAU must be filed within 3 years from filing date, within 1 year from the 5th anniversary, and within 1 year from each renewal. Failure to file DAU results in cancellation.

Amendments: Applications may be amended to correct errors or restrict goods/services, but not to materially alter the mark.

Prosecution timeline: Examination typically within 6 months; opposition within 30 days; total registration may take 6-12 months.

Opposition: Any interested party may file a Notice of Opposition within 30 days from publication, based on absolute or relative grounds. Extension of 30 days may be granted.

Cancellation: A registered mark may be cancelled on grounds of absolute grounds, relative grounds, non-use, or fraud. Petition for cancellation must be filed with the Bureau of Legal Affairs.

Non-use: A mark may be cancelled if not used in the Philippines for an uninterrupted period of 5 years, unless due to special circumstances.

Fraud: Cancellation may be based on fraud in obtaining registration, such as misrepresentation of use.

Inter partes proceedings: Opposition and cancellation are inter partes. The Bureau of Legal Affairs conducts hearings and issues decisions appealable to the Director General.

Appeal: Decisions of the Bureau of Legal Affairs may be appealed to the Director General within 30 days, then to the Court of Appeals.

Rectification: Any person may file a petition for rectification to correct errors in the register.

Other remedies: Infringement action, unfair competition action, and administrative complaints.

Rights conferred: Registration confers exclusive right to use the mark and to prevent others from using identical or similar marks for identical or similar goods/services.

Assignment: A registered mark may be assigned with or without goodwill. Assignment must be in writing and recorded with IPOPHL to be effective against third parties.

Licensing: A license agreement must be recorded with IPOPHL. Recordal is required for the license to be effective against third parties.

License terms: The license must include provisions on quality control, duration, and territory. Exclusive license may be recorded.

Recordal process: File a request with the Bureau of Trademarks, submit the assignment/license agreement, and pay fees. Recordal is published.

Effect of non-recordal: Unrecorded assignments/licenses are not effective against third parties.

Term of registration: 10 years from filing date, renewable for 10-year periods. Renewal must be filed within 6 months before expiry or within 6 months after with surcharge.

Marking: No mandatory marking, but 'Registered Mark' or '®' may be used.

Infringement: Use in commerce of a registered mark or confusingly similar mark for identical or similar goods/services without consent. Elements: valid registration, use, likelihood of confusion.

Unfair competition: Any act of competition contrary to honest practices, including passing off, false representation, and misleading the public.

Remedies: Injunction, damages, accounting of profits, destruction of infringing goods, and attorney's fees. Criminal penalties for infringement (2-5 years imprisonment and fines).

Test for confusion: Likelihood of confusion as to source or sponsorship. Factors: similarity of marks, similarity of goods, strength of mark, evidence of actual confusion.

Defenses: Prior use, fair use (descriptive), exhaustion, invalidity of registration, laches.

Customs: IPOPHL can request customs to seize counterfeit goods.

Administrative action: Complaint for infringement or unfair competition filed with Bureau of Legal Affairs.

Criminal action: Filed with regular courts. Preliminary investigation by prosecutor.

Paris Convention: Philippines is a member. Provides priority right (6 months for trademarks) and national treatment.

Madrid Protocol: Philippines acceded in 2012. Allows international registration through WIPO. Office of origin and designated offices.

Madrid filing: File application with IPOPHL (Office of origin) or directly with WIPO. Fees include basic fee, complementary fee, and supplementary fee.

Designation: Applicant designates countries. Each designated office examines according to national law. Provisional refusal possible within 12 months (18 months for some).

Subsequent designation: After international registration, can designate additional countries.

Transformation: If international registration cancelled, can transform into national applications within 3 months.

TRIPS Agreement: Sets minimum standards for trademark protection. Philippines is a member.

Nice Classification: Philippines uses the Nice Classification (45 classes) for goods/services.

IPOPHL Code of Ethics: Agents must act with integrity, competence, and confidentiality. Avoid conflicts of interest.

Representation: A registered trademark agent may represent applicants before IPOPHL. Must file power of attorney.

Confidentiality: Communications with clients are privileged. Must not disclose without consent.

Conflicts: Must decline representation if conflict of interest exists. Must inform client.

Fees: Must disclose fees clearly. Contingency fees allowed but must be reasonable.

Deadlines: Must diligently meet deadlines. Extensions available upon request with fees.

Misconduct: Grounds for disciplinary action include fraud, negligence, and unauthorized practice.

Practice rules: IPOPHL Rules of Procedure govern filings, hearings, and appeals. Must follow proper format and service.

Copyright: Protects original works of authorship (literary, artistic, musical). Term: life of author plus 50 years (Philippines). Registration not required but optional.

Patents: Protect inventions (product or process) that are new, inventive, and industrially applicable. Term: 20 years from filing. Examination by IPOPHL.

Industrial designs: Protect ornamental designs. Term: 5 years, renewable for two 5-year periods (total 15 years).

Geographical indications (GIs): Signs indicating goods originate from a region with specific quality. Protected under TRIPS and Philippine law. Can be registered as collective marks.

Utility models: Protect minor inventions. Term: 7 years from filing, no renewal.

Layout designs of integrated circuits: Protected for 10 years.

Traditional knowledge: Not specifically protected under IP Code but can be protected via GIs or trademarks.

Overlap: A product may be protected by multiple IP rights (e.g., shape as trademark and design).