Article 172p. 172

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

wherein the originals would be evidence; and any person

who applies and pays the prescribed fee shall secure such

copies. (n)

SECTION

142. Correction of Mistakes Made by the

Office . — Whenever a material mistake in a registration

incurred through the fault of the Office is clearly disclosed

by the records of the Office, a certificate stating the fact

and nature of such mistake shall be issued without

charge, recorded and a printed copy thereof shall be

attached to each printed copy of the registration. Such

corrected registration shall thereafter have the same

effect as the original certificate; or in the discretion of the

Director of the Administrative, Financial and Human

Resource Development Service Bureau a new certificate

of

registration

may

be

issued

without

charge.

All

certificates of correction heretofore issued in accordance

with the Regulations and the registration to which they

are attached shall have the same force and effect as if

such certificates and their issuance had been authorized

by this Act. (n)

SECTION 143. Correction of Mistakes Made by Applicant .

— Whenever a mistake is made in a registration and such

mistake occurred in good faith through the fault of the

applicant, the Office may issue a certificate upon the

payment

of

the

prescribed

fee:

Provided ,

That

the

correction does not involve any change in the registration

that requires republication of the mark. (n)

SECTION 144. Classification of Goods and Services . —

144.1. Each registration, and any publication of the Office

which concerns an application or registration effected by

the Office shall indicate the goods or services by their

names, grouped according to the classes of the Nice

Classification, and each group shall be preceded by the

number of the class of that Classification to which that

group of goods or services belongs, presented in the

order of the classes of the said Classification.

144.2.Goods or services may not be considered as being

similar or dissimilar to each other on the ground that, in

any registration or publication by the Office, they appear

in different classes of the Nice Classification. (Sec. 6, R.A.

No. 166a)

SECTION 145. Duration . — A certificate of registration

shall remain in force for ten (10) years: Provided , That 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 the Regulations, within one (1) year from the fifth

anniversary of the date of the registration of the mark.

Otherwise, the mark shall be removed from the Register

by the Office. (Sec. 12, R.A. No. 166a)

SECTION

146.

Renewal .

—

146.1.

A

certificate

of

registration may be renewed for periods of ten (10) years

at its expiration upon payment of the prescribed fee and

upon filing of a request. The request shall contain the

following indications:

(a) An indication that renewal is sought;

(b)

The name and address of the registrant or his

successor-in-interest, hereafter referred to as the "right

holder";

(c) The registration number of the registration concerned;

(d) The filing date of the application which resulted in the

registration concerned to be renewed;

(e )Where the right holder has a representative, the name

and address of that representative;

(f) The names of the recorded goods or services for which

the renewal is requested or the names of the recorded

goods or services for which the renewal is not requested,

grouped

according

to

the

classes

of

the

Nice

Classification to which that group of goods or services

belongs and presented in the order of the classes of the

said Classification; and

(g) A signature by the right holder or his representative.

146.2. Such request shall be in Filipino or English and may

be made at any time within six (6) months before the

expiration of the period for which the registration was

issued or renewed, or it may be made within six (6)

months

after

such

expiration

on

payment

of

the

additional fee herein prescribed.

146.3. If the Office refuses to renew the registration, it

shall notify the registrant of his refusal and the reasons

therefor.

146.4.An

applicant for renewal not domiciled in the

Philippines shall be subject to and comply with the

requirements of this Act. (Sec. 15, R.A. No. 166a)

SECTION 147. Rights Conferred . — 147.1. Except in cases of

importation

of

drugs

and

medicines

allowed under

Section 72.1 of this Act and of off-patent drugs and

medicines, 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 trademark 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.

There

shall

be

no

infringement

of

trademarks

or

tradenames of imported or sold patented drugs and

medicines allowed under Section 72.1 of this Act, as well

as imported or sold off-patent drugs and medicines:

Provided,

That,

said

drugs

and

medicines bear the

registered

marks

that

have

not

been

tampered,

unlawfully modified, or infringed upon, under Section 155

of this Code.

(as amended by RA No 9502)

147.2. The exclusive right of the owner of a well-known

mark defined in Subsection 123.1(e) 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 that 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. (n)

SECTION 148. 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. (n)

SECTION 149. Assignment and Transfer of Application

and Registration . — 149.1. An application for registration

of

a

mark,

or

its

registration,

may be assigned or

transferred with or without the transfer of the business

using the mark. (n)

149.2. Such assignment or transfer shall, however, be null

and void if it is liable to mislead the public, particularly as

regards

the

nature,

source,

manufacturing

process,

characteristics, or suitability for their purpose, of the

goods or services to which the mark is applied.

149.3. The assignment of the application for registration of

a mark, or of its registration, shall be in writing and

require

the

signatures

of

the

contracting

parties.

Transfers by mergers or other forms of succession may be

made by any document supporting such transfer.

149.4. Assignments and transfers of registrations of marks

shall be recorded at the Office on payment of the

prescribed fee; assignment and transfers of applications

for registration shall, on payment of the same fee, be

provisionally recorded, and the mark, when registered,

shall be in the name of the assignee or transferee.

© Compiled by RGL

172 of 211