MADRID SYSTEM

What is the Madrid system of trademark registration?

The Madrid system of trademark registration provides for a single procedure for trademark registration covering several territories. It is governed by two (2) treaties, the Madrid Agreement and the Madrid Protocol, and is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

Is the Philippines a member of the Madrid Protocol and Madrid Agreement?

The Philippines is a member to the Madrid Protocol only. The Philippines is not a member of the Madrid Agreement.

When did the Madrid Protocol become effective in the Philippines?

The Madrid Protocol became effective in the Philippines on July 25, 2012.

What are the declarations made by the Philippines pursuant to the Madrid Protocol?

  1. The protection resulting from any international registration effected under the Madrid Protocol before the date of entry into force of the Philippines cannot be extended to it. Subsequent designations of the Philippines with respect to international registrations with dates prior to July 25, 2012 are not allowed.
  2. The time limit to notify a refusal of protection shall be eighteen (18) months. However, where a refusal of protection results from an opposition to the granting of such protection, such refusal may be notified after the expiry of the eighteen (18)-month time limit.
  3. The Philippines will receive an individual fee for each request for territorial extension of protection of an international registration and the renewal of any such international registration.

Who can submit an international application through the Intellectual Property Office of the Philippines (IPOPHL) as an office of origin?

An international application may be filed only by a natural person or a legal entity having an industrial or commercial establishment in, or being domiciled in, or a national of, the Philippines.

Does an applicant need a basic mark to file an international application?

Yes. Under the Madrid Protocol, an international trademark application may be based on a mark that has either already been registered (“basic registration”) or has been applied for, but not yet registered (“basic application”).

What are the requirements for submitting an international application through the IPOPHL as an office of origin?

The following are the minimum requirements to submit an international application:

  1. Name, address and contact details of the applicant or the address and contact details of the applicant’s 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.

The applicant must fill out Form MM2, to be filed with the IPOPHL as the office of origin.

Can the applicant send the international application directly to the International Bureau?

No. An international application must be sent to the International Bureau through the IPOPHL as the office of origin.

Does an applicant need to appoint a representative to deal with the international application?

No. It is not mandatory to appoint a representative in the Philippines.

In what languages may an international application be filed?

The Philippines, as an office of origin, has designated the English language for the filing of international applications and any communications for transmittal to the International Bureau through the IPOPHL. All other documents required to be submitted directly to the IPOPHL by the applicant must also be in English.

What is the Office of Origin?

“Office of origin” is the intellectual property office of the contracting party, where the international application originates.

What is a Designated Contracting Party?

“Designated Contracting Party” is the country that is a party to the Madrid Protocol, which is designated in the international application.

A “designation” is done by ticking a box in the international trademark application form, of one or more contracting parties, where the applicant intends to apply for protection of the mark.

What is a Subsequent Designation?

“Subsequent Designation” means an extension of the geographical scope of protection after the mark has already been registered. A subsequent designation is made by indicating in the form the additional contracting parties in which protection is sought.

Can the Philippines be subsequently designated as contracting party?

Yes, but only for international registrations effected under the Madrid Protocol after the date of accession of the Philippines.

What happens after the international application has been submitted to the Intellectual Property Office of the Philippines (IPOPHL)?

The IPOPHL shall verify if the Philippines may be considered as the country of origin and the relevant particulars appearing in the international application correspond to the basic application or basic registration.

Where the international application meets the prescribed requirements, the IPOPHL shall so certify, indicating also the date of receipt of the international application, and shall forward the international application to the International Bureau.

Where the international application does not meet the prescribed requirements, the IPOPHL shall not forward it to the International Bureau, and shall inform the applicant accordingly.

What happens after the international application is forwarded to the International Bureau?

The International Bureau checks the international application for compliance with the formal requirements. If the application meets the requirements, the International Bureau records the mark in the International Register. It also informs the IPOPHL, notifies designated contracting parties, and sends a certificate of international registration to the holder of the mark or to the representative of record. The IPOPHL and the designated contracting parties then examine the mark and either protect it or refuse protection.

If the Madrid Protocol filing requirements have not been met, the International Bureau will notify both the IPOPHL and the international applicant. Responses to irregularity notices must be received by the International Bureau within the time period indicated in the irregularity notice. If the irregularities are corrected within the prescribed time, the International Bureau will register the mark.

If Philippines is a designated country, what is the procedure followed?

The IPOPHL shall undertake substantive examination of the mark in accordance with the Intellectual Property Code of the Philippines and the Trademark Regulations.

Will there be publication of the trademark?

Yes. The trademark shall be published for opposition purposes in the IPOPHL’s e-Gazette.

Is opposition available or allowed?

Yes. Opposition proceedings shall be governed by the provisions of the Intellectual Property Code of the Philippines, the Trademark Regulations, the Bureau of Legal Affairs Regulations, and the Uniform Rules on Appeal.

If the trademark subject of international registration designating the Philippines cannot be protected, what are the remedies available?

The holder of that international trademark registration shall enjoy the same remedies as if the trademark had been filed for registration directly with the IPOPHL.

Is there a time limit for refusing protection?

The Philippines’ refusal period is extended to 18 months.

What if there is no notification of refusal and the refusal time period has expired?

If there is no notification of refusal within the time limits, the trademark is considered protected in that contracting party for all the goods and/or services covered by the international registration and the holder of the international registration is automatically granted protection of its trademark in that country.

Will a notification be issued in case of opposition?

Yes. The IPOPHL shall notify the International Bureau of a provisional refusal based on an opposition. The refusal may be notified even after the expiry of the 18-month time limit.

Will the Intellectual Property Office of the Philippines issue a statement of grant of protection?

Yes. The IPOPHL will send to the International Bureau a statement of grant of protection in the Philippines before the eighteen (18)-month time limit.

If the provisional refusal has been either totally or partially withdrawn, the IPOPHL will send to the International Bureau either:

  1. A satement that the provisional refusal is withdrawn, and that protection of the trademark is granted in the Philippines for all the goods and services for which protection has been requested; or

 

  1. A statement that the provisional refusal is withdrawn, and that protection of the trademark 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.

What if the trademark was refused protection?

The IPOPHL shall send to the International Bureau a statement that there is total refusal of protection of the trademark.

Are Declarations of Actual Use filed for international registrations designating the Philippines?

Yes, all holders of international registration that designate the Philippines must file a Declaration of Actual Use (DAU) or Declaration of Non-Use (DNU) directly with the IPOPHL, observing the same filing requirements for DAU/DNU followed by marks filed directly under the Philippine law.

What are the deadlines to file a Declaration of Actual Use or Declaration of Non-Use?

  1. Within three (3) years from the date of the international registration or the date of the recordal of the subsequent designation of the Philippines, subject to a single extension of six (6) months. The use of the trademark in the Philippines must commence within the said period;
  2. Within one (1) year from the fifth (5th) anniversary of the date of the statement of grant of protection of the trademark;
  3. Within one (1) year from the fifth (5th) anniversary of the date of each renewal of the registration of the trademark; and
  4. Within one (1) year from the date of renewal of registration of the mark.

 

If the DAU/DNU is not submitted within the prescribed periods, the IPOPHL shall remove the mark from the Register and notify the International Bureau accordingly.

What is the duration of an international registration?

An international registration lasts for ten (10) years from the date of registration, and may be renewed for periods of ten (10) years at its expiration by paying a renewal fee to the International Bureau.

If the Philippine basic application or registration that forms the basis of the international registration is abandoned, cancelled or expires, will the international registration be cancelled?

Yes, if the Philippine trademark application or registration is abandoned, cancelled or expires for the first five (5) years from the date of the international registration, the international registration will also be cancelled.

The same applies if there is a final decision of rejection, revocation, cancellation, or invalidation, or ordering the withdrawal, of the basic mark after the expiry of the five (5)-year period provided that the following actions:

  1. An appeal against a decision refusing the effects of the basic application,
  2. An action requesting the withdrawal of the basic application or the revocation, cancellation or invalidation of the registration resulting from the basic application or of the basic registration, or
  3. An opposition to the basic application

had begun before the expiry of the said period.

After the five (5)-year period has ended, the international registration becomes independent of the basic trademark application or registration.

What is transformation?

Transformation is the process whereby an application for registration of a trademark is made with the IPOPHL, where the international registration designating the Philippines is cancelled at the request of the office of origin because of the basic mark ceasing effect. The transformation may be for all or some of the goods and services listed in the international registration.

How is application resulting from transformation made?

The application is made to the IPOPHL, within three (3) months from the date of cancellation of the international registration, by the holder of the international registration at the date of its cancellation, covering goods and services listed in the cancelled international registration.

What are the requirements for transformation?

The application should include:

  1. A statement that the application is made by way of transformation;
  2. The international registration number of the cancelled international registration;
  3. The date of the said international registration, or the date of recording of the subsequent designation, as appropriate;
  4. The date of recording of the cancellation of the international registration; and
  5. Where applicable, the date of any priority claimed in the international application and recorded in the International Register.

What is a replacement?

A mark that is the subject of a national registration in the Philippines is deemed to be replaced by an international registration of the same trademark with the following conditions:

  1. Both the Philippine registration and the international registration must be in the name of the same holder;
  2. The protection of the international registration extends to the Philippines;
  3. All the goods and services listed in the Philippine registration are also listed in the international registration in respect to the Philippines;
  4. The extension of the international registration to the Philippines (which may be a subsequent designation) takes effect after the date of the Philippine registration.

What is the rule on international application for collective marks designating the Philippines as a contracting party?

Where an international registration designating the Philippines is a collective mark, a copy of the agreement governing the use of the collective mark shall be submitted directly by the holder of the international registration to the IPOPHL within two (2) 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.

How is the international registration renewed?

The holder has three (3) options:

  1. Send a communication indicating the international registration number and the relevant designated contracting parties for which the renewal is made with payment of the renewal fees; or
  2. Use form MM11 with payment of the renewal fees; or
  3. Renew on-line with payment of the renewal fees.

How many times can the holder renew an international registration?

An international registration can be renewed indefinitely.

Does the holder of an international registration (or his representative) receive a notice prior to the expiry date of the international registration?

Yes. Six (6) months before the expiry date, the International Bureau sends an unofficial notice to remind the holder and his representative, if any, of the exact date of expiry. If, however, the holder or his representative does not receive said notice, this does not constitute an excuse for failure to comply with any time limit for payment of the fees due.

Suites 2004 & 2005, 88 Corporate Center Valero corner Sedeño Streets, Salcedo Village, Makati City 1227, Philippines   Telephone: +632 8896197  Facsimile: +632 8896132
© Copyright 2013 Federis & Associates Intellectual Property Firm. All rights reserved. Home | Site Map | Disclaimer | A PaperStreet Web Design