On April 25 2012, the Philippines acceded to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”). The Madrid Protocol is an international registration procedure that allows a trademark holder to secure protection of the trademarks in multiple countries through a single procedure, thus resulting in a more simplified and cost-effective process.
To implement the provisions of the Madrid Protocol, the IPOPHL promulgated Office Order No. 139 (known as “the Philippine Madrid Regulations”) on June 13, 2012. The salient provisions are as follows:
I. International Applications originating from the Philippines
Where an international application is filed with the IPOPHL for transmittal to the International Bureau, the IPOPHL shall verify if the Philippines may be considered as the country of origin in respect of that application, and that the relevant particulars appearing in the international application correspond to those appearing in the basic application or basic registration, as the case may be, in accordance with the provisions of the Common Regulations.
The following are required to be contained in the application form:
1. Name and address and contact details of the applicant or the address and contact details of his representative, if any;
2. The Designated Contracting Parties;
3. Reproduction of the mark; and
4. Indication of the goods and services for which registration of the mark is sought.
II. International Registrations with the Philippines as a Designated Party
The procedure for International Registrations with the Philippines as a Designated Party is the same as that for basic applications or registrations in the Philippines. The mark shall undergo the same examination process with the IPOPHL in accordance with Philippine trademark laws and regulations.
III. Fees
The fees relating to transactions covered by the Madrid Protocol are as follows:
| Handling fee1 (for every international application filed with IPOPHL as Office of Origin) | Php 2,181.60 |
| Individual fee2 (for International Registrations designating the Philippines and for designations subsequent to an International Registration) | Php 4, 807.60 per class |
| Individual fee3 (for renewal) | Php 7, 373.00 per class |
| Transformation fee | Php 2, 181.00 |
| Other Madrid related transactions4 (including replacement, handling fee for renewal, and other documents filed through the IPOPHL for transmission with the WIPO) | Php 606.00 |
IV. Appointment of Resident Agent
Although this is not particularly provided for in Office Order No. 139, just like in local applications, it is necessary for an applicant under the Madrid Protocol to appoint a resident agent to transact business with the IPOPHL subsequent to the application, such as in filing a response to a Notification of a Provisional Refusal of Protection, filing the Declaration of Actual Use (DAU), renewal of the registration of the mark, and all other transactions with the IPOPHL.
V. Declaration of Actual Use (DAU)
a. 3rd yr DAU. Within three (3) years from the date of the mark’s international registration, the holder of an international registration that designate the Philipines shall file a DAU with the required evidence of use with the IPOPHL. The holder may, within the same three-year period, request a non-extendible period of six months within which to file the DAU. Actual use of the mark may commence within the extension period.
b. 5th yr DAU. A fifth year Declaration of Actual Use together with the evidence of use should also be filed (i) within one (1) year from the fifth anniversary of the international registration date (in cases of international registration it is from the date of the grant of protection); and (ii) within one (1) year from the fifth anniversary of the date of renewal of the registration of the mark.
c. Failure to file the DAU shall result in the removal of the mark from the Registry.
IPAP QUESTIONS THE CONSTITUTIONALITY OF THE PHILIPPINES’ ACCESSION TO THE MADRID PROTOCOL
Intellectual Property Association of the Philippines (IPAP) vs. Honorable Paquito Ochoa in his capacity as Executive Secretary, Honorable Albert Del Rosario in his capacity as Secretary of the Department of Foreign Affairs, & Honorable Ricardo Blancaflor in his capacity as the Director General of the Intellectual Property of the Philippines (GR No. 204605)
Noteworthy of mention is the petition for certiorari filed by the Intellectual Property Association of the Philippines (IPAP) on December 14, 2012 questioning the constitutionality of the Philippines’ accession to the Madrid Protocol without the concurrence of the Philippine Senate. IPAP argued in its petition for certiorari to the Supreme Court that the Madrid Protocol is in the nature of a treaty/ international agreement. IPAP cited the case of Commissioner of Customs vs. Eastern Sea Trading (GR No. L-14279), wherein treaties are defined as “international agreements involving political issues or changes of national policy and those involving international agreements of a permanent character”. Based on the Philippine Constitution, treaties shall not be valid and effective without the concurrence by at least 2/3 of all the members of the Senate.
IPAP argued that not only is the Madrid Protocol of a permanent character, it also conflicts with local laws and changes the national policy on trademark protection. More particularly, it is arguably in conflict with the Intellectual Property Code of the Philippines in relation to the requirement of the appointment of a resident agent.
Sec. 125 of the IP Code states that if an applicant is not domiciled, or has no real and effective establishment in the Philippines, then he should designate a resident agent who may transact with the IPO regarding the trademark. Meanwhile, the Madrid Protocol was alleged to have dispensed with such requirement, as foreign applicants may be protected of their trademark rights in the Philippines via a single international application without the need of first designating a resident agent. IPAP further argued that by doing away with this requirement, the Madrid Protocol in effect amended the provisions of a local law without the Senate’s concurrence.
IPAP further argued that the accession of the Philippines to the Madrid Protocol should be declared unconstitutional, or even assuming that the accession is valid, its implementation in the Philippines, specifically the processing of applications without a resident agent, without the concurrence of the Senate is tantamount to an amendment of the local laws by the Executive Department. As such, IPAP prayed that the accession be declared unconstitutional. It also prayed that the Supreme Court issue a temporary restraining order against the Director General of the IPO, prohibiting him from implementing the Madrid Protocol. Alternatively, IPAP also prayed that a writ of injunction be issued mandating all foreign applicants to designate resident agents before their applications are processed.
The case is still pending with the Supreme Court. Further updates on this matter will be reported soon.
1 Equivalent to the filing fee currently charged by the IPOPHL
2 Equivalent to the filing fee, 1st and 2nd publication, and issuance fees
3 This includes the renewal fee and issuance and publication fees
4 This is the same fee collected by IPOPHL for any other request
Trademarks at the Intellectual Property Office
Office Order No. 13-056 – Declaration of Actual Use
On April 5, 2013, the intellectual Property issued Office Order No. 13-056 which amended provisions on the Declaration of Actual Use of the Trademark Regulations. The salient amendments are as follows:
1. A one-time six-month extension to file the 3rd year Declaration of Actual use may be filed prior to the expiration of the third year period upon payment of a fee. Actual use of the mark may commence within the extension period;
2. If the goods or services are available only by online purchase, the website must be indicated on the Declaration of Actual Use form in lieu of the name and address of the establishment;
3. Any of the following may be submitted as proof of use of the mark: labels of the mark; downloaded pages from the applicant’s or registrant’s website showing that the mark is used on the goods or services; photographs of the goods or of the stamped or marked containers bearing the mark and of the establishment where the services are being rendered; brochures or advertising materials; for online sale, receipts of the dale of the goods or services or similar evidence of use showing that the goods are placed on the market or the services are available in the Philippines or that the transaction took place in the Philippines; copies of contracts for services showing the use of the mark;
4. Computer printouts of the drawing or reproduction of the marks are not acceptable proof of use;
5. Actual use for some of the goods or services in the same class constitutes use for the entire class of goods or services;
6. Actual use for one class is considered use for related classes; and
7. In the event that no Declaration of Use for the other classes of goods or services are filed, the classes shall be automatically dropped from the trademark application or registration without need of a notice.
Applicants/registrants are reminded that failure to file the Declaration of Actual Use will result in the refusal of the trademark application or the removal of the registered mark from the register by the Director motu proprio.
Office Order No. 13-170 – IPR Enforcement Office
the Intellectual Property Office issued Office Order No. 13-170 in September last year, known as the “Rules of Procedure on Intellectual Property Rights (IPR) Enforcement”. An IPR Enforcement Office (IEO) is created under these Rules to undertake enforcement functions and ensure compliance with the provisions of the Intellectual Property Code, to conduct visits to business establishments and premises relative to complaints or reports relating to Intellectual Property violations, and to otherwise carry out mission orders. Section 4 Rule II provides that the IEO shall be headed by the Deputy Director General or an officer-in-charge for IPR Enforcement and assisted by the IPOPHL personnel and law enforcement agencies. Section 3 Rule III specifically provides that enforcement functions are directed only against manufacturing, production, importation, exportation, distribution, trading and offering for sale, including preparatory actions for the sale of counterfeit goods. The enforcement functions shall be invoked only provided that there is no pending case before any office, tribunal, quasi-judicial body or court involving the same issue or subject matter. The IEO is immediately divested of jurisdiction to undertake enforcement actions once a complaint is commenced.
New Patent Procedure at the Intellectual Property Office
The Director of the Bureau of Patents issued on March 3, 2014 Memorandum Circular No. 14-002 to achieve a uniform procedure in the payment of annual fees for direct route and PCT national phase divisional applications.
Based on Section 55.1 of the Intellectual Property Code (“IP Code”), the first annual fee payment must be made “upon the expiration of four years from the date the application was published pursuant to Section 44 hereof [referring to the IP Code], and on each subsequent anniversary of such date” (Section 55.1 of the IP Code). In essence paragraph 1, Rule 1100 of Part 11 of the Revised Implementing Rules and Regulations for Patents, Utility Models and Industrial Design (“IRR”) also provides the same period to pay the annual fee. In addition, paragraph 2 of the same rule requires that the first annual fee for PCT national phase entry application is payable on the expiration of four years from the international publication date, and by implication the subsequent annual fees every year thereafter.
While the above-cited provisions of the IP Code and the IRR do not expressly state that the said rule applies to divisional applications, the same are used for both direct route and PCT national phase entry divisional applications with the four year period reckoned from the date of publication of the divisional application. It is emphasized that the due date of the first annuity fee for PCT national phase divisional applications applied by the Philippines Patent Office is on the fourth year from the publication date which is not consistent with the requirement of par. 2, Rule 1100, Part I of the IRR(which considers the date of international publication date in computing the four year period).
With the issuance of Memorandum Circular No. 14-002, the rule on annuity payment for both direct route and PCT national phase entry divisional application has been clarified and made uniform. Thus, the first annual fee for direct route divisional application “shall commence upon the expiration of four years from publication date of the direct route parent application”. For PCT national phase entry divisional application, the first annuity payment “shall commence upon the expiration of four years from the international publication date of the parent international publication”. To address a scenario where the divisional application is filed more than four years from the publication date of the parent application, the annuity payment shall start on the following year from the last annual payment date of the parent application and every year thereafter. Moreover, the annual fee of the parent application shall only cover the remaining claims in the subsequent annuity payments.