PART 4
Trademark Application
RULE 400. Requirements of application. – All applications must be addressed to the Director and shall be in Filipino or English and shall contain the following:
(a) a request for registration;
(b) the name and address of the applicant;
(c) the name of a State of which the applicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any;
(d) where the applicant is a juridical entity, the law under which it is organized and existing;
(e) the appointment of an agent or representative, if the applicant is not domiciled in the Philippines;
(f) where the applicant claims the priority of an earlier application, a declaration claiming the priority of that earlier application, together with an indication of:
– the name of the state with whose national Office the earlier application was filed or if filed with an Office other than a national Office, the name of that Office;
– the date on which the earlier application was filed; and
– where available, the application number of the earlier application;
(g) where the applicant wishes to claim color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color or colors claimed and an indication, in respect of each color, of the principal parts of the mark which are in that color;
(h) where the mark is a three-dimensional mark, a statement to that effect;
(i) a reproduction of the mark and facsimiles thereof as provided in these Regulations;
(j) a transliteration or translation of the mark or of some parts of the mark, as prescribed in these Regulations;
(k) the names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs;
(l) where the application is for a collective mark, a designation to that effect;
(m) a signature by, or other self-identification of, the applicant or his representative;
(n) Power of Attorney if the filing is through a representative; and
(o) sworn statement that the applicant is a small entity if such be the fact.
RULE 401. Office Application Form. – For the convenience of applicants, the Office shall draw up and make available a standard application form which may be reproduced at will by applicants and other persons at their own cost.
RULE 402. Label. – The applicant may include the label as actually used or intended to be used on the goods or a copy or duplicate made by photo engraving or some similar process.
The mark must be bigger and more dominant than the generic term of goods except in the case of medicine as required by law.
RULE 403. Drawing. – (a) The drawing of the mark shall be substantially exact representation thereof as actually used or intended to be used on or in connection with, the goods or services of the applicant.
(b) A typed drawing may be accepted by the Examiner if no special characteristics have to be shown such as design, style of lettering, color, diacritical marks, or unusual forms of punctuation. A computer print-out may also be accepted by the Examiner if it substantially complies with the requirement that it must be the exact representation of the mark.
(c) The provisions of this Rule shall, however be construed liberally in determining whether the applications shall be considered complete for the purpose of granting a filing date.
RULE 404. Drawing for a service mark may be dispensed with in certain cases. – The drawing of a service mark may be dispensed with but the application must contain an adequate description of such mark.
RULE 405. Drawing to be on Bristol board. – The Drawing must be made upon pure white paper of a thickness of a Bristol board. The surface of the paper must be calendered and smooth.
RULE 406. Size of board; “sight”. – The size of a sheet on which a Drawing is made must be exactly two hundred ten millimeters (210 mm) by two hundred ninety-seven millimeters (297 mm) or the size of an A4 paper. Nineteen millimeters (19 mm) from its edges, a single marginal line is to be drawn, leaving the “sight” precisely one hundred seventy-two millimeters (172 mm) by two hundred fifty-nine millimeters (259 mm). Within this margin all work and signatures must be included. One of the shorter sides of the sheet should be regarded as its top.
RULE 407. Drawing to be with the Pen or by other processing giving satisfactory results. – If colors are not claimed, all Drawings must be made with pen only or by a process which will give them satisfactory reproduction characteristics. Every line and letter, signatures included, must be absolutely black. This direction applies to all lines, however fine, and to shading. All lines must be clean, sharp, and solid, and they must not be too fine or crowded. Surface shading, when used, should be open.
RULE 408. The Name of the Owner to be within Marginal Lines. – The name of the proprietor of the trademark or service mark trade name must be within the marginal lines and should not encroach upon the drawing. It should be signed by the owner or his Attorney of record. However, a printed or stamped signature or the use of seal accompanied by an indication in letters of the name of signatory is also accepted.
RULE 409. When board may be turned on its side. – When the view is longer than the width of the sheet, the sheet should be turned on its side.
RULE 410. Manner of mailing the Drawing to the Bureau. – Drawing transmitted to the Office should be sent flat, protected by a sheet of heavy binder’s board, or should be rolled for transmission in a suitable mailing tube. They should never be folded.
RULE 411. Color. – Where color is a material feature of the mark as used or intended to be used, the color or colors employed may be actually reproduced in the drawings and facsimiles. Otherwise, a statement must be made giving the name or names of the color or colors claimed indicating the principal part or parts of the mark which are in such color or colors.
RULE 412. Informal Drawing. – A Drawing not executed in conformity with the foregoing rules may be accepted for the purpose of examination, but the Drawing must be corrected or a new one furnished, as may be required, before the mark can be published for opposition or the application allowed. Substitute Drawings will not be accepted unless they have been required by the Examiner or unless correction of original Drawing would require that the mark or trade name be substantially entirely redrawn.
RULE 413. Use of an old Drawing in a new application. – In an application filed in place of an abandoned or rejected application, a new complete application is required, but the old Drawing, if suitable, may be used. The application must be accompanied by a request for the transfer of the Drawing, and by a permanent photographic copy, or an order for such copy, of the Drawing to be placed in the original file. A drawing so transferred or to be transferred cannot be amended.
RULE 414. The small facsimiles of the Drawing, how prepared. – The ten small facsimiles of the Drawing must be printed in black ink or in color, if colors are claimed, one facsimile on Bristol board and the other nine facsimiles on an ordinary coupon bond paper and must be capable of being satisfactorily reproduced when published in the IPO Gazette. The size of the sheet on which these facsimiles are to be printed must be seventy millimeters (70 mm) long and thirty-five millimeters (35 mm) wide.
RULE 415. Translation/Transliteration. – A translation or transliteration of the mark or of some parts of the mark must accompany the application if the mark or of some parts of the mark is/are foreign word(s), letter(s) and character(s), or foreign sounding.
Transliteration is an act, process or instance of representing or spelling of words, letters or characters of one language in the letters and characters of another language or alphabet.
Translation is an act, process or instance of translating as rendering from one language or representational system into another.
RULE 416. Nice Classification. – The applicant must indicate the names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the Nice Classification to which each group of goods or services belongs.
CLASSIFICATION OF GOODS
TITLE
Class
1 Chemical products used in industry, science, photography, agriculture, horticulture, forestry; artificial and synthetic resins; plastics in the form of powders, liquids or plates, for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances used in industry.
2 Paints, varnishes, lacquers, preservatives against rust and against deterioration of wood; coloring matters; dyestuffs; mordants; natural resins; metals in foil and powder form for painters and decorators
3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery; essential oils, cosmetics, hair lotions, dentrifices
4 Industrial oils and greases (other than edible oils and fats and essential oils );lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, nightlights and wicks
5 Pharmaceutical, veterinary and sanitary substances; infants’; and invalids’ foods; plasters, material for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin
6 Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains (except driving chains for vehicles); cables and wires (non-electric); lock-smiths’ work ; metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; nails and screws; other goods in non-precious metal not included in other classes; ores
7 Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators
8 Hand tools and instruments; cutlery, forks and spoons; side arms
9 Scientific, nautical, surveying and electrical apparatus and instruments (including wireless), photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; coin or counter-freed apparatus; talking machines; cash registers; calculating machines; fire-extinguishing apparatus
10 Surgical, medical, dental and veterinary instruments and apparatus (including artificial limbs, eyes and teeth)
11 Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes
12 Vehicles; apparatus for locomotion by land, air or water
13 Firearms; ammunition and projectiles; explosive substances; fireworks
14 Precious metals and their alloys and goods in precious metals or coated therewith ( except cutlery, forks and spoons); jewelry, precious stones; horological and other chronometric instruments
15 Musical instruments (other than talking machines and wireless apparatus)
16 Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; bookbinding materials; photographs; stationery, adhesive materials (stationery); artists’ materials; paint brushes; typewriters and Office requisites (other than furniture); instructional and teaching material (other than apparatus);playing cards; (printers’) type and cliches (stereotype)
17 Gutta percha, india rubber, balata and substitutes, articles made from these substances, and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacturers; materials for packing, stopping or insulating; asbestos, mica and their products; hose pipes (non-metallic)
18 Leather and imitations of leather, articles made from these materials, and not included in other classes; skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
19 Building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of earthenware or cement; road-making materials; asphalt, pitch and bitumen; portable buildings; stone monuments; chimney pots
20 Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whale-bone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these material, or of plastic
21 Small domestic utensils and containers (not of precious metal, nor coated therewith);combs and sponges; brushes (other than paint brushes);brush-making materials; instruments and materials for cleaning purposes; steel wool; unworked or semi-worked glass (excluding glass used in building); glassware, porcelain and earthenware not included in other classes
22 Rope, string, nets, tents, awnings, tarpaulins, sails, sacks; padding and stuffing materials (hair, capoc, feathers, seaweeds, etc.); raw textile materials
23 Yarns, threads
24 Tissues (piece goods); bed and table covers; textile articles not included in other classes
25 Clothing, including boots, shoes and slippers
26 Lace and embroidery, ribbons and braids; buttons, press buttons, hooks and eyes, pins and needles; artificial flowers
27 Carpets, rugs, mats and matting; linoleums and other materials for covering existing floors; wall hangings (non-textile)
28 Games and playthings; gymnastic and sporting articles (except clothing); ornaments and decorations for Christmas trees
29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs; milk and other dairy products; edible oils and fats; preserves, pickles
30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals; bread, biscuits, cakes pastry and confectionery, ices; honey, treachel; yeast, baking-powder; salt mustard; pepper, vinegar, sauces; spices; ice
31 Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals, malt
32 Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages.
33 Wines, spirits and liqueurs
34 Tobacco, raw or manufactured; smokers’ articles; matches
(b) CLASSIFICATION OF BUSINESS OR SERVICES
35 Advertising and business
36 Insurance and financial
37 Construction and repair
38 Communication
39 Transportation and storage
40 Material treatment
41 Education and entertainment
42 Miscellaneous
RULE 417. Broad terms. – In any application, the use of broad terms in identifying the goods, business or services shall be unacceptable. Applicants whose application are based on foreign registration shall be required to specify the goods covered by such foreign registration in all cases where the foreign registration used broad terms in identifying the goods, business or services.
RULE 418. Single registration for goods and/or services. – One (1) application may relate to several goods and/or services, whether they belong to one (1) class or to several classes of the Nice Classification. Where goods and/or services belonging to several classes of the Nice Classification have been included in one (1) application, such an application shall result in one registration.
RULE 419. Division of Applications. – (a) Any application referring to several goods or services referred to as the “initial application” may be divided by the applicant into two (2) or more applications hereafter referred to as the “divisional applications” by distributing among the latter the goods or services referred to in the initial application.
(b) A single class shall not be subdivided.
(c) The divisional applications must be submitted before examination of the initial application or within two (2) months from mailing date of the first action of the Bureau.
(d) Upon receipt of the divisional applications, the Office shall cancel the initial application together with its application number. New application numbers shall be given to the divisional applications but the filing date shall be the same as the filing date of the initial application. The divisional applications shall likewise preserve the benefit of the right of priority of the initial application.
