PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
4.4 Application Requirements Documentary Requirements for Trade Mark Applications A trade mark application is filed online via the IPOPHL’s eTMFile system. The following are required: • the applicant’s name, address, nationality or place of incorporation; • a list of goods/services with Nice Classifications; • priority claims, if any, with documentation; • details for marks with colour, 3D features or device components; • clear mark copy in JPEG format; and • a signed Special Power of Attorney, if applicable. Marks must be reproduced as used or intended for use with the specified goods/services. Multiple-class applications are allowed, with the filing fee multiplied based on the number of classes included. Application Procedure After filing, the application undergoes examination within two months. If allowed, a Notice of Allowance is issued; otherwise, an office action is sent, requiring a response within two months (extendible for anoth - er two). Permitted applications are published in the IPOPHL e-Gazette for opposition. If unopposed within 30 days, the mark proceeds to registration upon pay - ment of fees. A straightforward application (no office actions or oppositions) typically registers within six months, with fees of around USD115 per class. Trade Mark Applicants Applications can be filed by individuals or juridical entities. Non-residents must appoint a Philippines- based representative. Applications may be signed by the applicant, joint owners or an authorised agent/ representative, as required. 4.5 Use in Commerce Prior to Registration An applicant is not required to use the mark in com - merce before the registration is issued.
4.6 Consideration of Prior Rights in Registration
The Philippines grants priority rights to foreign appli - cants under the Paris Convention. Therefore, a Phil - ippine trade mark application can benefit from the earlier filing date of a foreign application. However, the mark cannot be registered in the Philippines until it has been registered in the applicant’s home country. 4.7 Revocation, Change, Amendment or Correction of an Application A trade mark application may be amended to cor - rect formalities and overcome objections made by the examiner, or for other reasons arising in the course of examination. Amendments pertaining to the reproduction of the mark will not be permitted if the mark or the nature of the mark is substantially altered. Amendment by the addition of goods and/or services related to those originally filed and which fall under the same class may be allowed. Amendment by deletion is likewise allowed. In every amendment, the exact word or words to be stricken out or inserted must be specified, and the precise point where the erasure or insertion is to be made must be indicated. 4.8 Dividing a Trade Mark Application The IP Code allows the creation of “divisional appli - cations”. This is typically done when a multiple class application meets objections to specific classes or goods/services and the applicant needs to separate the problematic parts from the rest to expedite their registration. The applicant can distribute the classes from the origi - nal application into different divisional applications, and a single class can be divided into multiple appli - cations by paying the corresponding fees. The request for division must be made before the application is registered. Once a request for division is submitted along with the necessary payment, the IPOPHL will assign new application numbers to the divisional applications, but
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