IPOPHL Trademark Agent flashcards

38 cards. Read the term and the definition here. The deck at the top of this page is optional.

Absolute grounds

Grounds for refusal based on the mark itself, such as descriptiveness, genericness, deceptiveness, scandalousness, or functionality, regardless of prior rights.

Acquired distinctiveness

A mark that is descriptive or generic can be registered if the applicant proves it has acquired distinctiveness through extensive use, making it capable of identifying source.

Functional shape doctrine

A shape that is necessary to obtain a technical result, results from the nature of the goods, or gives substantial value cannot be registered as a trademark.

Deceptive mark

A mark that misrepresents the nature, quality, or geographical origin of the goods/services and is likely to mislead consumers is refused registration.

Scandalous mark

A mark containing scandalous, immoral, or disparaging matter is refused registration under absolute grounds.

Confusing similarity

Two marks are confusingly similar if their overall impression, including visual, aural, and conceptual similarities, is likely to confuse consumers as to source.

Well-known mark

A mark that is widely recognized by the relevant public, regardless of registration in the Philippines, and is protected against identical or similar marks.

Prior rights

Rights acquired by first use or first registration of a mark, which can be used to oppose or cancel a later conflicting application.

Bad faith application

An application filed with intent to free-ride on another's goodwill or to block a legitimate user, which 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 the marks used on them.

Declaration of Actual Use

A mandatory filing within 3 years from filing, within 1 year from the 5th anniversary, and within 1 year from each renewal, proving the mark is in use.

Priority claim

A right to claim the filing date of an earlier foreign application, if filed within 6 months, under the Paris Convention or Madrid Protocol.

Publication for opposition

After examination, the application is published in the IPOPHL Gazette, opening a 30-day period for third parties to file an opposition.

Certificate of Registration

Issued after successful prosecution and no opposition, granting the registrant exclusive rights for 10 years, renewable.

Prosecution timeline

Examination typically within 6 months, opposition within 30 days, and total registration may take 6-12 months.

Opposition period

The 30-day period from publication during which any interested party may file a Notice of Opposition against a trademark application.

Cancellation

A post-registration proceeding to cancel a registered mark on grounds of absolute grounds, relative grounds, non-use, or fraud.

Non-use cancellation

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

Inter partes proceedings

Opposition and cancellation are adversarial proceedings before the Bureau of Legal Affairs, with hearings and appealable decisions.

Assignment recordal

A written assignment of a registered mark must be recorded with IPOPHL to be effective against third parties.

License recordal

A license agreement must be recorded with IPOPHL to be effective against third parties, and must include quality control provisions.

Rights conferred by registration

Exclusive right to use the mark and to prevent others from using identical or similar marks for identical or similar goods/services.

Renewal

Registration is for 10 years and renewable for 10-year periods, filed within 6 months before expiry or within 6 months after with surcharge.

Trademark infringement

Use in commerce of a registered mark or confusingly similar mark for identical or similar goods/services without consent, causing likelihood of confusion.

Unfair competition

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

Remedies for infringement

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

Likelihood of confusion

The test for infringement: whether consumers are likely to be confused as to the source or sponsorship of goods/services due to similar marks.

Madrid Protocol

An international treaty allowing trademark owners to seek protection in multiple countries through a single international registration filed with WIPO.

Paris Convention priority

A 6-month priority right for trademark applications filed in member countries, allowing the filing date of the first application to be claimed.

Nice Classification

An international system classifying goods and services into 45 classes, used by the Philippines for trademark applications.

TRIPS Agreement

An international treaty setting minimum standards for IP protection, including trademarks, to which the Philippines is a member.

IPOPHL Code of Ethics

Professional conduct rules requiring integrity, competence, confidentiality, and avoidance of conflicts of interest for trademark agents.

Power of attorney

A document authorizing a trademark agent to represent an applicant before IPOPHL, required for filing and prosecution.

Conflict of interest

A situation where an agent's duties to one client conflict with duties to another or personal interests, requiring disclosure and possible withdrawal.

Copyright term

In the Philippines, copyright lasts for the life of the author plus 50 years after death for most works.

Patent term

A patent is granted for 20 years from the filing date, provided maintenance fees are paid.

Industrial design term

An industrial design registration lasts for 5 years, renewable for two 5-year periods, for a total of 15 years.

Geographical indication

A sign indicating that goods originate from a region where a given quality or reputation is attributable to that origin, protectable as a collective mark.