Questions When Filing Philippines Trademark Application

Our clients always raise 05 asked questions when filing Philippines trademark application: Descriptive part, removal of one part from trademark, use of expired trademark citing against new Philippines trademark, trademark according to Paris and deadline to respond to office action.

1. Is this acceptable for Philippines Trademark including descriptive part. For example, ANZ Good Bar does the applicant need to remove the word “Good Bar” from the trademark before officially filing new trademark application in Philippines. Or the trademark applicant only needs to disclaim the word “Good Bar”? 

Answer: We advise that the trademark applicant does not need to remove the words “ Good Bar ” from the trademark before filing new Philippines trademark application. It is preferred, however, to disclaim the said words “Good Bar” for being descriptive to the goods the trademark covers. Disclaimer of the same at the time of filing the new Philippines trademark will expedite the prosecution of your proposed trademark. Such disclaimer, however, will not apply to the way, manner and combination of words and letters in the subject mark. Hence, ANZ Good Bar is still being claimed for the exclusive use of the trademark applicant.

2. Philippines trademark includes Word part & device part. By the stage of Philippines trademark substantive examination result, if one of the parts of the trademark is refused, could we remove such part from the Philippines trademark, then the remaining part of the Philippines trademark shall be protected?

Answer: We advise that if one part of Philippines trademark is refused, the trademark applicant may either “disclaim” the refused part but maintain its claim for protection over the undisclaimed portion of the mark (see our advice in item no. 1) or amend the trademark by removing the objected portion of the trademark provided that such amendment does not substantially alter the trademark or its nature (Rule 617 of IPOPHL Office Order No. 17-010).

3. Could one expired trademark in Philippines still be a cited one to a new Philippines trademark in a specific period of time counted from the expired date? For example, some countries still use the expired trademark as a cited one against new trademark within the 5 years from the expired date?

Answer: Based on our practice, Philippines trademark that was already expired/cancelled/abandoned is no longer cited as a bar for the allowance of the new trademark application in Philippines. For an abandoned trademark application in Philippines, the same may be cited if the revival period has not lapsed.

 4. For the Paris Convention trademark application, shall the applicant file the counterpart trademark in Philippines within 06 months? Is there any grace period of late filing trademark in Philippines?

Answer: There is no grace time period to claim the priority right of the earliest foreign application. However, the trademark applicant can apply for a trademark application in Philippines after six (6) months without convention priority.

5. What is the deadline for responding the refusal of Philippines trademark office. Please write down deadline to each type of refusal.

Answer: The trademark 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 trademark 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.

6. How much does it cost of trademark registration in Philippines?

– You could see Fee of Trademark in Philippines here

– You could visit here to see Procedure of Philippines Trademark Registration.

– You could visit here to check the required documents for filing trademark in Philippines

Contact AAA IPRIGHT: Email: [email protected]

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