16th Apr 2013

Trademark application

Trademark applications are filed with the Philippine Intellectual Property Office (IPO). Filipinos or Filipino corporations may directly file their applications with the IPO. However, foreigners or foreign corporations have to appoint a local agent or representative in order to file applications with the IPO.

Applying for a trademark is not like getting a business permit wherein you can get the permit immediately in juts a couple of days. A conservative estimate of the period of time to complete the whole application process is around 6 to 18 months. This is in view of the fact that the application undergoes examination and publication.

In applying for a trademark with the IPO, the following documents must be submitted:

1. Application form
2. Trademark specimen (attached to the application from)
3. Special Power of Attorney (if the application is being processed by a trademark agent or representative)

Goods and services are classified into different classes which are guided by the Nice Classification (pursuant to an international treaty). It is best to consult with your intellectual property lawyer regarding this matter and other details that have to be spelled out in the application form.

The government fee for a trademark application in one (1) class for small entities (assets less than 100 million pesos) is One Thousand Eighty Pesos (P1,080.00). If there are many classes, you just multiply the amount to the number of classes. If the trademark has color, then an additional Two Hundred Fifty Pesos (P250.00) must be paid for each class. It must also be remembered that an additional one percent (1%) is assessed as legal research fund for the government fees paid to the IPO.

After the application has been filed, the IPO will conduct a trademark search to determine if there are similar marks. Thereafter, it will be assigned to a Trademark Examiner who will check the application and signify his objections or comments in the form of Registrability Reports. One should not disregard these reports because failure to respond to these reports within two (2) months from its mailing date will result in the abandonment of the application.

If the Trademark Examiner does not have any objections to the application or if the objections were properly traversed, a Notice of Allowance will be issued by the IPO. The government fee for publication and issuance is Two Thousand One Hundred Twenty-One Pesos (P2,121.00) for small entities. Again, the Notice of Allowance should not be ignored because if the fees are not paid within two (2) months from mailing date, then the application is also considered as abandoned.

After the fees have been paid, the application shall be published in the e-gazette of the IPO. Third parties may within thirty (30) days of the publication, oppose the application. If the application is opposed, then the proceedings become adversarial because it will now be prosecuted before the Bureau of Legal Affairs of the IPO. The process in such case is similar to that in courts. The process is summary in nature and testimonies are done by way of affidavits.

If there is no opposition to the application during the publication, then the application will be deemed registered and the corresponding Certificate of Registration issued in approximately 3 to 5 months.

For further inquiries, you may seek legal assistance by e-mailing us atinfo@ndvlaw.com.

Nicolas & De Vega Law Offices is a full service law firm in the Philippines. You may visit us at the 16th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, 1605 Pasig City, Metro Manila, Philippines. You may also call us at +632 4706126, +632 4706130, +632 4016392.

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