Article 170p. 170

COMMERCIAL LAWS NEGOTIABLE INSTRUMENTS, CORPORATION, INSURANCE, TRANSPORTATION, BANKING

i) 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,

ii) The date on which the earlier application was filed, and

iii) Where available, the application number of the earlier

application;

(g) Where the applicant claims 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) One or more reproductions of the mark, as prescribed

in the Regulations;

(j) A transliteration or translation of the mark or of some

parts of the mark, as prescribed in the 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; and

(l) A signature by, or other self-identification of, the

applicant or his representative.

124.2.

The

applicant

or

the

registrant

shall

file

a

declaration of actual use of the mark with evidence to

that effect, as prescribed by the Regulations within three

(3)

years

from

the

filing

date

of

the

application.

Otherwise, the application shall be refused or the mark

shall be removed from the Register by the Director.

124.3. 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.

124.4. If during the examination of the application, the

Office finds factual basis to reasonably doubt the veracity

of any indication or element in the application, it may

require the applicant to submit sufficient evidence to

remove the doubt. (Sec. 5, R.A. No. 166a)

SECTION 125. Representation ; Address for Service . — If

the applicant is not domiciled or has no real and effective

commercial establishment in the Philippines, he shall

designate by a written document filed in the Office, the

name and address of a Philippine resident who may be

served notices or process in proceedings affecting the

mark. Such notices or services may be served upon the

person so designated by leaving a copy thereof at the

address specified in the last designation filed. If the

person so designated cannot be found at the address

given in the last designation, such notice or process may

be served upon the Director. (Sec. 3, R.A. No. 166a)

SECTION 126. Disclaimers . — The Office may allow or

require

the

applicant

to

disclaim

an

unregistrable

component of an otherwise registrable mark but such

disclaimer shall not prejudice or affect the applicant's or

owner's rights then existing or thereafter arising in the

disclaimed matter, nor such shall disclaimer prejudice or

affect

the

applicant's

or

owner's

right

on

another

application of later date if the disclaimed matter became

distinctive of the applicant's or owner's goods, business or

services. (Sec. 13, R.A. No. 166a)

SECTION 127. Filing Date . — 127.1. Requirements . — The

filing date of an application shall be the date on which

the

Office

received

the

following

indications

and

elements in English or Filipino:

(a) An express or implicit indication that the registration

of a mark is sought;

(b) The identity of the applicant;

(c) Indications sufficient to contact the applicant or his

representative, if any;

(d) A reproduction of the mark whose registration is

sought; and

(e) The list of the goods or services for which the

registration is sought.

127.2. No filing date shall be accorded until the required

fee is paid. (n)

SECTION

128. Single Registration for Goods and/or

Services . — 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. (n)

SECTION 129. Division of Application . — Any application

referring to several goods or services, hereafter 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.

The

divisional

applications

shall

preserve the filing date of the initial application or the

benefit of the right of priority. (n)

SECTION

130.

Signature

and

Other

Means

of

Self-Identification . — 130.1. Where a signature is required,

the Office shall accept:

(a) A hand-written signature; or

(b) The use of other forms of signature, such as a printed

or stamped signature, or the use of a seal, instead of a

hand-written signature: Provided , That where a seal is

used, it should be accompanied by an indication in letters

of the name of the signatory.

130.2. The Office shall accept communications to it by

telecopier,

or

by

electronic

means

subject

to

the

conditions or requirements that will be prescribed by the

Regulations.

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, appears. The original communications

must be received by the Office within thirty (30) days

from date of receipt of the telefacsimile.

130.3.

No

attestation,

notarization,

authentication,

legalization or other certification of any signature or other

means of self-identification referred to in the preceding

paragraphs, will be required, except, where the signature

concerns the surrender of a registration. (n)

SECTION 131. Priority Right . — 131.1. An application for

registration of a mark filed in the Philippines by a person

referred to in Section 3, and who previously duly filed an

application for registration of the same mark in one of

those countries, shall be considered as filed as of the day

the application was first filed in the foreign country.

131.2. No registration of a mark in the Philippines by a

person described in this section shall be granted until

such mark has been registered in the country of origin of

the applicant.

131.3. Nothing in this section shall entitle the owner of a

registration granted under this section to sue for acts

committed prior to the date on which his mark was

registered

in

this

country:

Provided ,

That,

notwithstanding

the

foregoing,

the

owner

of

a

well-known mark as defined in Section 123.1(e) of this Act,

that is not registered in the Philippines, may, against an

identical

or

confusingly

similar

mark,

oppose

its

registration, or petition the cancellation of its registration

or

sue

for

unfair

competition,

without

prejudice to

availing himself of other remedies provided for under the

law.

131.4. In like manner and subject to the same conditions

and requirements, the right provided in this section may

be based upon a subsequent regularly filed application in

the same foreign country: Provided , That any foreign

application filed prior to such subsequent application has

been withdrawn, abandoned, or otherwise disposed of,

without having been laid open to public inspection and

without leaving any rights outstanding, and has not

served, nor thereafter shall serve, as a basis for claiming a

right of priority. (Sec. 37, R.A. No. 166a)

© Compiled by RGL

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