PART 8
Effect and Notice of Registration
RULE 800. Rights Conferred. – (a) The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the mark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed.
(b) The exclusive right of the owner of a well-known mark which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use.
RULE 801. Duration. – A certificate of registration shall remain in force for ten (10) years; Provided, That, without need of any notice from the Office, the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by these Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the Office shall remove the mark from the Register. Within one (1) month from receipt of the declaration of actual use or reason for non-use, the Examiner shall notify the registrant of the action taken thereon such as acceptance or refusal.
RULE 802. Non-use of a Mark When Excused. – (a) Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark.
(b) The special circumstances to excuse non-use in affidavits of non-use shall not be accepted unless they are clearly beyond the control of the registrant such as the prohibition of sale imposed by government regulation.
RULE 803. Use of a Mark in a different form. – The use of the mark in a form different from the form in which it is registered, which does not alter its distinctive character, shall not be ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark.
RULE 804. Use of a Mark for goods belonging to the class registered. – The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class.
RULE 805. Use of a Mark by Related Company. – The use of a mark by a company related with the registrant or applicant shall inure to the latter’s benefit, and such use shall not affect the validity of such mark or of its registration: Provided, That such mark is not used in such manner as to deceive the public. If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services, such use shall inure to the benefit of the registrant or applicant.
RULE 806. Certificates of Registration; Records and copies in registered cases. – A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate.
After a mark or trade name or name or other mark of ownership has been registered, the statement, the drawings, and all documents relating to the case are subject to general inspection, and copies will be furnished upon payment of the required fees.
RULE 807. Contents of Certificate of Registration. – The certificate of registration of a mark shall include a reproduction of the mark and shall mention its number, the name and address of the registered owner and, if the registered owner’s address is outside the country, his address for service within the country; the dates of application and registration; if priority is claimed, an indication of this fact, and the number, date and country of the application, basis of the priority claims; the list of goods or services in respect of which registration has been granted, with the indication of the corresponding class or classes; and such other data as the Regulations may prescribe from time to time.
RULE 808. Use of indications by Third Parties for Purposes Other than those for which the Mark is Used. – Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services.
