In the Philippines, there is an agency responsible for handling registrations to secure Intellectual Property rights – the Intellectual Property Office (IPO). This agency makes sure that you own your creations with the right to advertise and sell them under Philippine Laws.
For entrepreneurs, these intellectual creations are part of the secret formula behind successful businesses to effectively allow you to have control over its commercialization. The Intellectual Properties (IPs) go beyond business names for it actually refers to any creation such as a product, patent, copyright, trademark, lay-out design, industrial design, form of literature or artistic work to name a few. However, allow me to focus more on securing the trademarks rather than copyrights, industrial designs for your ease of understanding.
Trademarks come in different forms: one word, logo, symbol, sign or even a combination of any of the mentioned forms. When you use it properly, your trademark becomes one of the viable assets in your business. It is the goal of a trademark to protect your business and have the ability to take legal actions against anyone who uses your product name, or logo without your permission.
Let it be clear that there is an IPO golden rule of “first to file.” Allow me to quote the IPO that under “Section 123.1 of the IP Code, which took effect on January 1, 1998, a mark is not registrable if it is identical to a mark with an earlier filing or priority date in respect of the same goods or services, or closely related goods or services, or closely related goods or services, or it is nearly resembles such as mark as to be likely to deceive or cause confusion.”
Having said this, the succeeding information on how to secure your trademark is governed with such rule.
Here are the 9 steps that you can take to successfully register your trademark.
Filing for a trademark is different from applying a business permit, wherein you can get the permit within a couple of days. Your trademark application will roughly last for around 6 to 18 months from submission of intent, getting published and acquiring the certification.
Keep in mind that your trademark is to be rendered in black and white. However, if your trademark is colored, make sure to include the Pantone colors. The rendered design should be digitized for a clear assessment. Now, what are these Pantone colors? If you’d ask someone to digitally render your trademark, you will be given color swatches to pick your desired color. Let’s say color red. There are different tints of red but the true tone of this primary color is Pantone 19-1664 (as depicted in the photo).
Let me quote the IPO with what a trademark should not bear since chances are, you’d be including some in the generation of your mark. According to the IPO Rules & Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Container, a mark cannot be allowed to register if the mark:
According to the IPO website, the Nice Classification is a system used for classifying goods and services for the purpose of registering trademarks.
Determining the Nice Classification is a tricky part, especially if this is your first time to register your trademark. For starters, keep in mind that you need to include the goods or services you intend to put a mark on.
For your reference, the most recent version (9th version) of the Nice Classification includes 45 classes of goods and services. Classes 1-34 include goods, while classes 35-45 include services. To give you an idea on what your trademark may look like, what Nice Classification it falls under, here are some registered marks for your review:
7290- PHILAM LIFE AN AIA GROUP COMPANY
Reproduction of the mark where the mark is represented in standard characters: PHILAM LIFE AN AIA GROUP COMPANY
Name and address of the applicant: The Philippine American Life and General Insurance Company (PHILAM LIFE) 18/F Net Lima Bldg., 5th Avenue Corner 26th Street, Bonifacio Global City, Taguig City, Metro Manila (PH)
The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) and the list of goods and services classified according thereto: Insurance (36)
505112 – EVERY DAY! WIFI
Reproduction of the mark where the mark is represented in standard characters: EVERY DAY! WIFI
Name and address of the applicant: Philippine Seven Corporation 7th Floor, The Columbia Tower, Ortigas Avenue, Mandaluyong City, Metro Manila (PH)
The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) and the list of goods and services classified according thereto: Providing multiple user wireless access to the Internet (38)
13549– EMPERADOR GOLD RESERVE BRANDY
Reproduction of the mark where the mark is represented in standard characters: EMPERADOR GOLD RESERVE BRANDY
Name and address of the applicant: Emperador Distillers, Inc. 7/F 1880 Eastwood Ave., Bldg., Eastwood City Cyberpark, Bagumbayan Quezon City, Metro Manila (PH)
The International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification) and the list of goods and services classified according thereto: Alcoholic beverages (except beers), brandy, spirits (beverages), and distilled beverages (33)
Fill up the Trademark Application Form with the classes that can describe your goods or services.
The fee is usually at P1, 080, should your asset is less than 100 million pesos. If your trademark’s logo is colored, you have to pay an additional P250 per class color, then an additional Two Hundred Fifty Pesos (P250.00) must be paid on top of each class. It must also be remembered that an additional one percent (1%) is included in the fee as legal research fund for the government fees paid to the IPO.
The wait will take you 12 to 18 months from filing date, since the IPO needs to do their search for similar markings. They will assign you a Trademark Examiner will double check your trademark. It is important to keep track of your examiner’s message regarding trademark revisions. You are given 2 months from the mailing date to respond to the notice. Failure to respond will lead to abandonment of your application.
It will take about 12 to 18 months from filing date for you to receive a Notice of Allowance from the IPO. The expenses include a fee of P2, 121 for the publication and issuance. Keep in mind that this government fee is intended for small entities. All you have to do is pay for the fee within 2 months from the mailing date. Paying beyond the given time-frame will result to abandonment of your registration.
Congratulations! You are on your way from having your trademark approved. The process will begin by posting your trademark in the IPO e-gazette where it will remain for public viewing within 30 days. The duration of the publication is intended for any complaints on the trademark. Keep in mind that the publication time will take 6 to 8 months from the Notice of Allowance.
Should there be opposed parties during the publication period, your application is to be acknowledged as duly registered and now bears the Certificate of Registration that you will be receiving in 3 to 5 months.
There will be another publication at the IPO Phil eGazette before your trademark will be registered in the official records. Keep in mind that your certification is valid for 10 years before you need to file for renewal. Once you have the exclusive rights to use your business trade name and logo, the long wait of 18 to 24 months is worth your time.
After going through the tips and steps on how to file your trademark, you may have noticed that it requires tedious work on your part. Did you know that you can seek the services of Philippine-based agencies to take care of everything for you?
Allow me to walk you through the advantages and disadvantages:
Expensive rates (price basis from vOffice Philippines) for startup entrepreneurs.
The decision to go through the Trademark registration on your own or hire a third-party service depends on you. The rates shared with you does not include digital rendering of your logo, as well as other government fees.
I hope that after giving you the steps on hos to secure your Trademark with the IPO, you will be able to see that once your goods or services mislead your customers or no matter how brilliant your name is, without proper documentation you go back to square one.
I will catch you again next time for another eye-opener on how you can see the expansion of your business and other tips on how to reach that dream. Till then!
*See related article: #MentoringMonday session with Attorney Paul Gaba on Protecting your Logos and Trademarks.