PART 6
Proceedings in the Examination of an Application for Registration
CHAPTER 1
Nature of the Proceedings
RULE 600. Application prosecuted ex parte; Protests. – An application for registration is prosecuted ex parte by the applicant; that is, the proceedings are like a lawsuit in which there is a plaintiff (the applicant) but no defendant, the court itself (the Examiner) acting as the adverse party.
No attention shall be paid to ex parte statements or protests of persons concerning pending applications to which they are not parties, unless information of the pendency of these applications shall have been voluntarily communicated by the applicants.
RULE 601. Proceedings a contest between Examiner and the Applicant. – An ex parte proceeding in the Office for the registration of a mark is a law contest between the Examiner, representing the interest of the public and the applicant (or his attorney), representing his own private interests.
RULE 602. Applicant supposed to look after his own interests. – The Office, represented by the Examiner, is not supposed to look after the interest of an applicant. The law imposes that duty upon the applicant himself. The Examiner is charged with the protection of the interests of the public and hence must be vigilant to see that no registration issues for a mark contrary to law and these Regulations.
RULE 603. Preliminary adverse action of the Examiner valuable to Applicant. – The positive value of a preliminary adverse action of the Examiner should be fully appreciated by the applicant or his attorney. A hard-fought application will produce a registration much more likely to stand in court than a registration which has slid through the Office easily. The reason for this is that every point raised by the Examiner and finally decided by the Office in favor of the applicant will give the applicant a prima facie standing on that point in court.
The Office is empowered by law to pass upon applications for registration and, because of the authority vested in it, its decisions with respect to the grant of a registration, or on any point connected with it, are presumed to be correct by the courts.
RULE 604. A preliminary rejection should not be taken literally; Examiner is only trying to be helpful. – A preliminary rejection by the Examiner is never to be taken literally. An applicant should remember that the Examiner may not be actually rejecting his application. The Examiner may in fact be quite prepared to admit the application, and is only trying to give the applicant a chance to explain away some reference or some difficulty rather than have him wait until the registration is granted and become involved in a litigation, when it may then be difficult for him to make the explanation.
CHAPTER 2
Manner of Examination of an Application for Registration; Action by the Examiner; Response by the Applicant; Abandonment; Revival
RULE 605. Order of examination; priority of action. – (a) Applications shall be examined for registrability in the order in which the complete requirements for grant of filing date are received by the Office. Ordinarily, the order of the application number assigned to them by the Office will be followed and no application bearing a higher application number shall be examined in advance of the applications with lower application numbers unless the filing date of the application bearing the higher number is earlier than those bearing a lower number.
(b) Priority of action and/or examination may be granted upon petition under oath with payment of fees and upon order of the Director, to trademark applications falling under any of the following:
1. Re-filing by the same registrant or assignee of a mark previously registered but cancelled for failure to meet the maintenance requirement.
2. Re-filing by the same applicant of a mark previously filed but abandoned and can no longer be revived.
3. An application for registration of a mark, names or abbreviation of names, logos of any nation, intergovernmental or international organizations.
4. An application for registration of a mark, names, abbreviation of names, logos of any sports competition conducted within a short period of time or when periodically conducted, the TM registration is necessary to promote goodwill or image before the commencement of the sports activity.
5. An application for registration of mark, names, abbreviation of names, logos of product and services of applicants introduced and/or participating in a trade mission and/or exposition local or abroad and will be conducted within a short period of time.
6. An application for registration of mark, names, abbreviations of names, logos of a religious, social or charitable, educational activity the early registration of which is necessary to achieve its purpose or objective.
7. Domain names (as service mark); and,
8. Trademarks, servicemarks, and tradenames used or to be used in Information and Communications Technology (ICT) infrastracture.
[As amended by Office Order No. 20 (2001)]
RULE 606. Jurisdiction of the Examiner. – The Examiners shall have original jurisdiction over the examination of all applications for registration and over their allowance for publication in the IPO Gazette for purposes of opposition. Their decision, when final, shall be subject to petition and appeal to the Director. Applicants, their attorneys or agents shall take up the problems arising from their pending applications only with the respective Examiners in charge and with no other person in the Office.
RULE 607. Examination of the application; Action by the Examiner. –
(a) If, after the examination, the applicant is found not entitled to registration for any reason, he will be so notified by the Examiner. He will be advised of the reasons therefor and of any formal requirements or objections, and he will be given such information and references as may be helpful to him in the further prosecution of his application.
(b) All Examiners are required to include all grounds of objection existing at the time of the issuance of an action in that action. Piece meal action shall be prohibited.
Rule 608. Disclaimers.
The basic purpose of disclaimers is to make of record, that a significant element of a composite mark is not being exclusively appropriated apart from the composite. The following portions of a mark when forming part of the composite mark, must be disclaimed to permit registration, namely (a) a generic term; (b) a descriptive matter in the composite mark; (c) a matter which does not function as a trademark, or service mark or a trade name.
Such disclaimer shall not prejudice or affect the applicant’s rights then existing under some other law or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant’s rights to registration on another application of later date, where the disclaimed matter has become distinctive of the applicant’s goods, business or services.
Where the examiner determines that any portion of a mark contains unregistrable matter which must be disclaimed, he shall communicate his finding to the Applicant by means of an Action document. If the applicant fails to respond within the time allowed under these Rules, the finding of the examiner shall become final and the unregistrable matter shall be disclaimed.
[as amended by Office Order No. 39 (2002)]RULE 609. Interview with the Examiners: when no interview is permitted. – Interviews with Examiners concerning applications pending before the Office can be held only upon written request specifying the query he would want to propound and after payment of the required fee, but in respect of which the Examiner has the discretion to grant the interview or instead reply to the query in writing. The interview shall take place within the premises of the Office and during regular office hours as specified by the Examiner. All interviews or conferences with Examiners shall be reduced to writing and signed by the Examiner and the applicant immediately after the conference. Such writing shall form part of the records of the Office. Interviews for the discussion of pending applications shall not be held prior to the first official action thereon.
RULE 610. Period for response, action by applicant. – The applicant has two (2) months from the mailing date of any action of the Examiner to respond thereto. Such response may be made with or without amendment and must include such proper action by the applicant as the nature of the action of the Examiner and the condition of the case may require. The period to respond may be extended upon written request and upon payment of the required fee but in no case shall the total period to respond exceed four (4) months from the mailing date of the Examiner’s action requiring the response.
RULE 611. Communications other than the original. – “Communication” shall mean any response filed with the Office except compliance with filing date requirements. The Office shall accept communications to it by telecopier, or by electronic means. When communications are made by telefacsimile, the reproduction of the signature, or the reproduction of the seal together with, where required, the indication in letters of the name of the natural person whose seal is used, must appear. Within twenty-four (24) hours from receipt of the telefacsimile by a machine of the Office, the Examiner shall confirm the date of receipt of the telefacsimile by means of a notice requiring the applicant to pay the cost, as may be established by the Office from time to time, incurred by the Office to enable the Office to receive such telefacsimile. The original copy such communication and the payment of the cost herein provided must be received by the Office within one (1) month from date of receipt of the telefacsimile. Otherwise, the communication shall be deemed withdrawn and expunged from the records. In all cases, the burden of proof lies on the applicant that such documents have been received by the Office.
RULE 612. Re-examination. – After response by the applicant, the application will be re-examined or reconsidered by the Examiner, and if the registration is again refused or formal requirements insisted upon, but not stated to be final, the applicant may respond again.
RULE 613. Final Action. – On the first or any subsequent re-examination or reconsideration, the Examiner may state that the refusal of the registration or the insistence upon a requirement is final. Thus, the applicant’s recourse is limited to an appeal to the Director or to a compliance with the requirement made by the Examiner.
RULE 614. Abandonment; Incomplete Response. – If an applicant fails to respond, or to submit a complete response, within the period given counted from the mailing date of an action of the Examiner, the application shall be deemed abandoned as of the day immediately following the last day of the aforesaid period.
RULE 615. Revival of Abandoned Application. – (a) An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, if it is shown to the satisfaction of the Director, and upon payment of the required fee, that the delay was due to fraud, accident, mistake, or excusable negligence.
(b) A request to revive an abandoned application must be accompanied by a statement of the causes of the delay in submitting the complete response and by the proposed response, unless the same has been previously filed. Any application not revived within the specified time will be deemed forfeited upon the expiration of the three-month period to revive.
(c) There shall be no revival of an abandoned application that has been revived once before on the same issue.
RULE 616. Time less than four months; when request for extension should be made. – (a) The applicant may be required to prosecute his application in a time shorter than four months but not less than one (1) month from the mailing date of the examiner’s action whenever such shorter time is deemed necessary or expedient. Unless the applicant is notified in writing that response is required in less than four months, a maximum period of four months is allowed.
(b) The time for reply, when a time less than four months has been set, will be extended only for good and sufficient cause and for a reasonable time specified. Any request for such extension must be filed on or before the day on which the response of the applicant is due. In all cases, the maximum time within which to submit a response to an action shall not exceed four months from the mailing date of the action.
RULE 617. Suspension of action by the Bureau. – Action by the Bureau may be suspended upon written request of the applicant for good and sufficient cause, for a reasonable time specified and upon payment of the required fee. The Examiner may grant only one suspension, and any further suspension shall be subject to the approval of the Director. An Examiner’s action, which is awaiting a response by the applicant, shall not be subject to suspension.
RULE 618. Provisional Allowance. – If the only issue remaining in an application based on foreign application claiming priority right is the submission of a certified copy of the foreign or home registration, the Examiner may provisionally allow the application and suspend the submission of the certified copy of the foreign or home registration for a period not exceeding twelve (12) months counted from allowance. On request of the applicant and subject to the approval of the Director and payment of the required fee, said twelve month period may be extended for good cause by an additional period not exceeding twelve (12) months. Should the applicant fail to submit the certified copy of the foreign or home registration within the maximum period of twenty four (24) months counted from allowance, the applicant may waive his claim to priority right in writing and request that the application be considered based on intent to use. Said waiver and request shall be filed within two (2) months, without extension, counted from the expiration of the maximum twenty four (24) month period without need of any notice from the Office. Otherwise, the application shall be deemed forfeited. After submission of the request for conversion to intent to use and upon payment of the required fees, the application shall be published by the Office for opposition. Furthermore, the declaration of actual use shall be filed within three (3) years without extension and without need of notice counted from the date of the filing of request for conversion. Otherwise, the application shall be refused or the mark shall be removed from the register by the Director motu proprio. [As amended by Office Order No. 08 (2000)]
RULE 619. Express Abandonment. – An application may be expressly abandoned by filing with the Bureau a written declaration of abandonment signed by the applicant himself or by the assignee of record.
CHAPTER 3
Amendments to the Application; Response to Objections of the Examiner
RULE 620. Amendments to the Application. – The application may be amended to correct formalities, to overcome objections made by the Examiner, or for other reasons arising in the course of examination.
RULE 621. Amendments to Description or Drawing. – Amendments to the description or drawing of the mark may be permitted only if warranted by the mark as shown on the labels originally filed, but may not be made if the nature of the mark is changed thereby.
RULE 622. Manner of Making the Amendment. – In every amendment the exact word or words to be stricken out or inserted must be specified and the precise point indicated where the erasure or insertion is to be made. All such amendments must be on sheets of paper separate from the papers previously filed, and written on only one side of the paper.
RULE 623. Prohibition against marking of papers or records of the Office by applicants. – The applicant or his representative shall not make any erasure, addition, insertion, or mutilations of any papers or records of the Office.
