Under the Intellectual Property Code (“IP Code”), a “Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and includes a stamped or marked container of goods (Section 121.1, IP Code).
The rights in a mark are acquired through valid registration made in accordance with the provisions of the IP Code (Section 122, IP Code).
Documentary Requirements
In filing a trademark application with the Philippine Intellectual Property Office (“IPO”), whether for a single class or for multiple classes, the following information/documents are required to be submitted to the IPO:
1. Duly accomplished Trademark Application Form which must contain the following information:
- name and address of the applicant;
- contact details of the applicant (telephone number, fax number, mobile no. and email address)
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nationality of the applicant;
-
International Class and list of goods or services sought to be registered;
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where there is a claim of the priority date of an earlier foreign trademark application, the name of the country where said application was filed, the date and serial number of the foreign trademark application and a certified copy of the priority application [Note: The certified copy of the priority application must be filed within three (3) months of the date of filing of the Philippine application. Otherwise, the claim of priority will be denied. If the foreign language is not in English, an English translation must likewise be submitted.];
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where there is a claim of color as a distinctive feature of the mark, the colors claimed and an indication, with respect to each color, of the principal parts of the mark which are in that color;
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where the mark is three-dimensional, information regarding the same; and
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if the mark includes or consists of a device, a detailed description of said device.
2. A copy of the mark in .JPEG format, in the size two (2) inches by three (3) inches;
3. Special Power of Attorney (“SPA”) is executed by the applicant appointing our Firm as its duly authorized attorney and agent in the Philippines.
An applicant or registrant for a trademark is also required to file with the IPO a Declaration of Actual Use (“DAU”) of the mark, with proof to that effect, within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Trademark Register.
Procedure and Timeframe
The following are the steps and the estimated time in the prosecution of a trademark application with the IPO:
|
Action to be taken
|
Estimated Time
|
|
Examination of the trademark application
|
4 to 6 months from filing date
|
|
IPO issues a Notice of Allowance and publication for purposes of opposition
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5 to 7 months from filing date
|
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Applicant pays the publication fee prescribed by the IPO
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2 months from mailing date of notice of allowance
|
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IPO publishes the application in the Official Gazette for purposes of opposition
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2 weeks to 1 month from payment of publication fee
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Persons who may be prejudiced by the registration file an opposition to the application
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30 days from release of IPO’s Official Gazette
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IPO issues Notice of Issuance and Publication Fee, assuming no opposition is filed
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2 to 3 months from publication of the application
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Applicant pays the issuance and publication fees prescribed by the IPO
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2 months from mailing date notice of issuance
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IPO issues the Certificate of Registration
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5 to 7 months from payment of issuance and publication fees
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Please note that during the examination process in Item 1, if the examiner finds any reason why the application should not be registered, the examiner will issue an action paper requiring the applicant to respond to the objections or comply with additional requirements stated in the action paper.
Anent Items No. 2 and 6, please note that the applicant has the option to pay the Issuance and Second Publication Fee (for the issuance of the Certificate of Registration) simultaneously with the Publication Fee (for purposes of opposition) in order to expedite the processing period of a trademark application and issuance of the Certificate of Registration if no opposition to the registration of the mark is filed within thirty (30) days from the publication of the subject mark in the e-Gazette. Note, however, that if an opposition is filed, the Issuance and Publication Fee will not be refunded.
Based on our experience, if there is no opposition to the registration of a trademark, a trademark application is expected to ripen to registration within one (1) to two (2) years from the time of filing the application.
The term of a trademark registration is ten (10) years from the date of issuance and is renewable for a period of ten (10) years at a time.
Costs for Filing Trademark Applications
As a member of the Intellectual Property Association of the Philippines (“IPAP”), our Firm adopts the Schedule of Minimum Attorneys' Fees agreed upon by all the members of the IPAP. Since IPAP members adopt the same attorneys' fees, any competition among the members is based on the quality and promptness of their service. Our many clients will attest that our Firm provides superior quality and consistently reliable and efficient professional service in intellectual property practice in the Philippines.
Please find below the government fees and our professional fees in connection with the search and the filing and prosecution of one (1) mark in one (1) class, subject to adjustments by the Philippine Intellectual Property Office (“IPO”):
|
ACTIVITY |
PROFESSIONAL FEES |
GOVERNMENT FEES |
I. Trademark Search
|
Search and report (per mark, per class) |
US$200.00 |
- - - - |
II. Filing
a) Filing of application for original registration, per mark, per class (Please note that for applications covering multiple classes, our professional fees and the government fees are multiplied by the number of classes covered by the application. This applies only to the initial filing of the multi-class application. Subsequent professional fees and government filing fees for responses to Official Action Papers and other filings with the Philippine Intellectual Property Office are fixed and no longer computed based on the number of classes covered.) |
320.00 |
US$48.48 |
b) Preparation of set of drawings/facsimiles |
80.00 |
- - - - |
c) Claim of color |
- - - - |
11.22 (per class) |
d) Claiming convention priority
(if applicable) |
100.00 |
33.67(per class) |
e) Late or subsequent filing of required documents |
100.00 |
- - - - |
III. Examination
a) Filing of divisional application |
150.00 |
11.22(min) |
b) Response to each official action |
150.00 |
- - - - |
c) Request for extension of time to respond to official action (if necessary) |
100.00 |
13.47 |
d) Interview/conference with examiner not exceeding one (1) hour |
250.00 |
22.44 |
e) Request for suspension of action |
150.00 |
17.96(min) |
f) Revival of abandoned application |
250.00 (min) |
22.44 |
g) Amendment to the application |
150.00 |
15.71 |
V. Publication and Issuance
a) Compliance with Notice of Allowance (for publication for purposes of opposition) |
100.00 |
17.96(min) |
b) Compliance with Notice of Issuance and Payment of Publication Fee (for issuance of the Certificate of Registration) |
100.00 |
40.40(min) |
V. Registration
Securing and transmitting owner’s copy of certificate of registration |
100.00 |
- - - - |
VI. Filing of Declaration of Actual Use
a) Within 3 years from filing
b) 5th Anniversary
c) 10th Anniversary
d) 15th Anniversary |
250.00 |
35.91 (per class)
44.89 (per class)
89.78 (per class)
123.44 (per class) |
Request for a single six (6)-month extension of time to file the Declaration of Actual Use |
150.00 |
71.82 |
VII. Others
a) Filing of application for renewal of registration |
US$320.00
(per class) |
US$123.44
(per class) |
b) Recordal of assignment, licensing or similar document for one application/registration (excluding registration with the Documentation, Information and Technology Transfer Bureau) |
200.00 |
15.71(min)
[pending]
33.67 (min)
[registered] |
c) Recordal of change of name or other instrument affecting ownership of marks, e.g. merger
c.1) pending application
c.2) registered
|
150.00
150.00 |
15.71 (min)
33.67 (min)
|
d) Recordal of change of address of pending application or registered mark |
150.00 |
15.71 |
e) Securing new certificate of registration based on assignment or change of ownership |
100.00 |
22.44 |
f) Preparing and filing petition for voluntary surrender or cancellation, amendment of disclaimer after registration |
100.00 |
29.18(min) |
g) Obtaining substitute certificate of registration for the unexpired term of the original registration due to amendment or disclaimer of a registration |
100.00 |
22.44 |
Reduction of Government Fees
For entities considered to be Small Entities, there shall be a 50% discount on the government fees. A Small Entity is any natural or juridical person whose assets are worth One Hundred Million Pesos (PhP100,000,000.00) or less; or any entity, agency, office, bureau or unit of the Philippine government including government-owned or controlled corporations, state universities and colleges and government-owned or government-run schools.
A duly notarized Sworn Statement Form must be submitted to the IPO within sixty (60) days from the filing of the application, otherwise the applicant shall be assessed to pay the full amount of the government fees.
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