Intellectual Property Code with the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases

Rule 9

Where the Philippines has been designated in an international registration, the IPOPHL shall undertake the substantive examination of the mark in accordance with the IP Code and the TM Regulations. Upon completion of the substantive examination and the mark is allowed, the mark shall be published for purposes of opposition in the IPOPHL's e-Gazette. Opposition proceedings shall be governed by the provisions of the IP Code , the TM Regulations, the BLA Regulations, and the Uniform Rules on Appeal.

Rule 11

Where an opposition is filed with the IPOPHL in respect of an international registration designating the Philippines, the IPOPHL shall, before the expiry of the refusal period under Article 5(2)(c) of the Madrid Protocol, notify the International Bureau of a provisional refusal based on an opposition following the requirements of the Madrid Protocol and the Common Regulations. The holder of that international registration shall enjoy the same remedies as if the mark had been filed for registration directly with the IPOPHL under the IP Code and the TM Regulations.

Rule 12

No Grounds for Refusal; Statement of Grant of Protection. ­ Where all procedures, including publication for opposition, before the IPOPHL have been completed, and there is no ground for the IPOPHL to refuse protection, the IPOPHL shall, as soon as possible and before the expiry of the refusal period under Article 5(2) of the Madrid Protocol, send to the International Bureau a statement to the effect that protection is granted to the mark in the Philippines.

Rule 13

Final Decision Following the Notification of a Provisional Refusal. ­ (1) Statement of Grant of Protection. Where the IPOPHL has notified to the International Bureau a provisional refusal of protection in accordance with Rule 10 or Rule 11 , with all the procedures before the IPOPHL having been completed and such provisional refusal has been either totally or partially withdrawn, the IPOPHL shall send to the International Bureau either: (a) a statement to the effect that the provisional refusal is withdrawn, and that protection of the mark is granted in the Philippines for all the goods and services for which protection has been requested; or (b) a statement to the effect that the provisional refusal is withdrawn, and that protection of the mark is granted in the Philippines for some of the goods and services for which protection has been requested, and specifying therein the goods and services for which protection is granted. (2) Confirmation of Total Refusal. Where the IPOPHL has sent to the International Bureau a notification of provisional refusal in accordance with Rule 10 or Rule 11, with all the procedures before the IPOPHL having been completed, and the IPOPHL has decided to confirm such refusal of protection of the mark in the Philippines for all the goods and services for which protection has been requested or the opposition to the registration of the mark has been upheld by the Director of the Bureau of Legal Affairs of the IPO PHL or by the Director General of IPOPHL upon an appeal, but regardless of any appeal to the regular courts, the IPOPHL shall send to the International Bureau a statement to the effect that there is total refusal of protection of the mark.

Rule 14

Further Decision Affecting Protection of a Mark. ­ Notwithstanding the statements sent to the International Bureau in accordance with Rule 13, the IPOPHL shall notify the International Bureau of any subsequent decision affecting the protection of the mark in the Philippines as soon as it receives any such information from the applicant, the court, or any interested party. The notification shall contain a statement indicating the goods or services for which the mark is protected in the Philippines.

Rule 15

Effects of an International Registration.­ (1) An international registration designating the Philippines shall have the same effect, from the date of the international registration, as if an application for the registration of the mark had been filed directly with the IPOPHL under the IP Code and the TM Regulations. (2) If no refusal is notified by the IPOPHL to the International Bureau in accordance with the Madrid Protocol and the Common Regulations, or if a refusal has been so notified but has been subsequently withdrawn, or if a statement of grant of protection is sent by the IPOPHL, the protection of the mark in the Philippines shall be the same as if the mark had been registered directly by the IPOPHL on the date of the international registration.

Rule 16

Where the effects of an international registration are cancelled or invalidated in the Philippines, and the cancellation or invalidation is no longer subject to appeal, the IPOPHL shall, as soon as it is informed of that decision, notify accordingly the International Bureau in accordance with the relevant provisions of the Madrid Protocol and the Common Regulations.

Rule 17

Where, in accordance with Article 6 of the Madrid Protocol, the basic application, the registration resulting from such application, or the basic registration, ceases to have effect, the IPOPHL, as the Office of Origin, shall inform the International Bureau accordingly, and shall request the cancellation of the international registration in respect of the goods and services affected.

Rule 18

Any recording made in the International Register in respect of an international registration, shall, to the extent that it applies to the Philippines as a Designated Contracting Party, have the same effect as if it had been recorded by the IPOPHL in its register of marks. In the case of license contracts, publication by the International Bureau shall have the effect of national publication stipulated in Section 150.2 of the IP Code. However, within 2 months from the recording of the license contract with the International Bureau, the holder must provide a copy of the license contract directly to the IPOPHL showing compliance with Sections 87, 88, and 150.1 of the IP Code, otherwise the recording of the license contract shall not have effect in the Philippines. The license contract shall be reviewed and a certification of compliance with the IP Code provisions shall be issued in accordance with the TM Regulations, otherwise the contract shall not be enforceable.

Rule 19

Where an international registration designating the Philippines is a collective mark, a copy of the agreement governing the use of such collective mark shall be submitted directly by the holder of the international registration to the IPOPHL within two months 'from the date of international registration with the International Bureau. The international registration will not be examined unless the agreement is received by the IPOPHL.

Rule 20

Declaration of Actual Use.­ (1) All holders of international registrations that designate the Philippines shall file a Declaration of Actual Use of the mark directly with the IPOPHL, with the required evidence attached thereto, or shall show valid reasons for non-use based on the existence of obstacles to such use, as prescribed by the TM Regulations, within three years from the date of the international registration or the date of recording of the territorial extension to the Philippines made subsequently to the international registration, as appropriate. The holder may, within the same three-year period, request a non-extendible period of six months within which to file the declaration of actual use. The actual use of the mark may commence within the extension period. In the event that the holder fails to submit the declaration of actual use within the period, the mark shall be removed by the IPOPHL from its register, unless a Declaration of Non-Use has been submitted. The IPOPHL shall inform the International Bureau accordingly. (2) All holders of international registrations shall file a declaration of actual use and evidence to that effect, or shall show valid reasons for non-use based on the existence of obstacles to such use, as prescribed by the TM Regulations, within one (1) year from the fifth anniversary of the date of statement of grant of protection of the mark and within one (1) year from the fifth anniversary of the date of renewal of registration of the mark. If the declaration of actual use is not submitted within the prescribed period, the IPOPHL shall remove the mark from the Register and notify the International Bureau accordingly. Except in cases where use of a registered mark or mark subject of an active application has been interrupted or discontinued by a pending litigation, non-use of the mark shall not be allowed for a total of more than six (6) years from the date of the statement of grant of protection. For this purpose, actual use must commence and the DAU filed within one (1) year from the 5th anniversary of the statement of grant of protection, otherwise, the Office shall remove the mark from the Register (3) All holders of international registrations shall file a declaration of actual use and evidence to that effect within one (1) year from the date of renewal of registration of the mark. If the declaration of actual use is not submitted within the prescribed period, the IPOPHL shall remove the mark from the Register and notify the International Bureau accordingly. The requirements for the filing of the declaration of actual use under paragraphs 1, 2 and 3 shall be the same as those prescribed in the TM Regulations.

Rule 21

Replacement. (1)(a) The holder of an international registration may request the IPOPHL to take note of that international registration in the register where: (i) a mark registered in the Philippines is also the subject of an international registration, and the protection resulting therefrom extends to the Philippines; (ii) the same person is recorded as holder of the registration in the Philippines and of the international registration; (iii) all the goods and services listed in the registration in the Philippines are also listed in the international registration in respect of the Philippines; and (iv) the extension of that international registration to the Philippines took effect after the date of registration of the mark in the Philippines. (b) The request for replacement filed with the IPOPHL in accordance with paragraph 1(a), shall be made in the prescribed form and shall be subject to the payment of the prescribed fee. (c) Replacement is without prejudice to any rights acquired by virtue of the earlier national registration. (2) Where the IPOPHL has taken note of an international registration in accordance with paragraph (l)(a), the IPOPHL shall notify the International Bureau accordingly. Such notification shall indicate the following: (a) the number of the international registration; (b) where only some of the goods and services listed in the international registration are concerned, those goods and services; (c) the filing date and number of the application for registration of the mark in the Philippines; (d) the registration date and number of the registration in the Philippines; and (e) the priority date, if any, of the registration in the Philippines.

Rule 22

Transformation.­ (1)(a) Where an international registration designating the Philippines is cancelled at the request of the Office of Origin, in accordance with Article 6(4) of the Madrid Protocol, in respect of all or some of the goods and services listed in the international registration, an application may be made to the IPOPHL, within three months from the date on which the international registration was cancelled, by the person who was the holder of the international registration at the date of its cancellation, for registration of the same mark ("an application resulting from transformation"), in respect of goods and services covered by the list of goods and services contained in the international registration. (b) Subject to paragraphs (2) and (3), the provisions applicable to a trademark application filed directly with the IPOPHL shall apply mutatis mutandis to an application resulting from transformation. (1)(b) An application resulting from transformation shall be made in the prescribed form and shall, in addition, include the following: (i) a statement that the application is made by way of transformation; (ii) the international registration number of the international registration which has been cancelled; (iii)the date of the said international registration, or the date of recording of the territorial extension made subsequently to the international registration, as appropriate; (iv)the date on which the cancellation of the international registration was recorded; and (v) where applicable, the date of any priority claimed in the international application and recorded in the International Register; (b) An application resulting from transformation shall be subject to the payment of the prescribed transformation fee. (2)(b) Where an international mark has become protected in the Philippines on or before the date on which the international registration was cancelled and, provided that all the requirements relating to an application resulting from transformation have been met, that mark shall be registered by the IPOPHL without need to undergo another substantive examination. The date of registration shall be the date of the cancelled international registration, or the date of recording of the territorial extension to the Philippines made subsequently to the international registration, as appropriate, and that registration shall enjoy any priority enjoyed by the cancelled international registration. (b) Where an international mark has not yet become protected in the Philippines on or before the date on which the international registration was cancelled, any procedures or measures already undertaken on or before the date on which an application resulting from transformation is filed for the purpose of the international registration shall be considered as having been undertaken for the purposes of the application resulting from transformation. The filing date of the application resulting from transformation shall be the date of the international registration or the date of recording of territorial extension to the Philippines made subsequently to the international registration, as appropriate.