B. What are the requirements of registration?

1. A request for registration.

2. The name and address of the applicant.

3. Applicant’s nationality or place of domicile or the name of a State in which the applicant has a real
and effective industrial or commercial establishment, if any.

4. Where applicant is a juridical entity, the law under which it is organized and existing.

5. The appointment of an agent or representative, if the applicant is not domiciled in the Philippines.

6. Claim of priority, if any.

7. Claim of color, if any.

8. Where the mark is a three-dimensional mark, a statement to that effect.

9. Reproduction of the mark and facsimiles thereof.

10. A Transliteration or translation of the mark or of some parts of the mark.

11. The names of the goods or services for which the registration is sought.

12. A signature by, or other self-identification of, the applicant or his representative.

C. The Process of Trademark Registration

1. Filing of Application.

Applications must be filed with the Bureau of Trademarks (BOT) of the Intellectual Property Office
(IPO). A duty officer is assigned to receive the request for registration. Once the application is submitted
to the duty officer, a formality examination takes place. In a formality examination, the duty officer
checks if the application complies with the following requirements needed for the grant of a filing date:

a) An express or implicit indication that the registration of a mark is sought;

b) The identity of the applicant;

c) Indications sufficient to contact the applicant or his representative, if any;

d) A reproduction of the mark whose registration is sought; and

e) The list of goods or services for which the registration is sought.

The Duty officer then issues an order of payment to the applicant An Application Number is issued after
payment of the filing fee.

2. Search

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The Application undergoes a search process. Through search, it will be known whether the trademark
applied for has similar or identical marks.

3. Substantive Examination

An examiner will be assigned to assess the registrability of the application pursuant to the rules.

The examiner communicates with the applicants through mail. When all requirements are complied with,
the mark is allowed, otherwise, the application is rejected.

4. Publication for Purposes of Opposition.

After allowance by the examiner, the application is published in the IPO Gazette to give chance to those
who might be damaged by the registration of the mark to oppose said registration.

5. Registration

Upon certification by the Director of the Bureau of Legal Affairs that no notice of opposition, whether or
not verified and whether or not by means of the original copy, has been filed within thirty (30) days from
the date of release for circulation of the IPO Gazette publishing the application for opposition, and upon
payment of the required fee, the office shall issue the certificate of registration. The issuance of the
certificate of registration shall be published in the IPO Gazette and shall be entered on the records of the
Office.

SECTION 5. Schedule of Trademark-related Fees. — The fees

provided in this Section shall apply to trademarks, service marks, tradenames
and marked or stamped containers.

SCHEDULE OF TRADEMARK-RELATED FEES

Reference
Type of Fee Big Small
Code
1. PRE-EXAMINATION
501 1.1 Filing Fee (per class) 2160.00 1080.00
502 1.2 Claim for Convention Priority (per class) 1,500.00 750.00
503 1.3 Claim of color, claim of distinctiveness (per class) 500.00 250.00
504 1.4 Request for Priority Examination 5,200.00 2,600.00
2. EXAMINATION
2.1 Request for -
505 2.1.1 Extension of time to file any response (1-60 days) 600.00 300.00
506 2.1.2 Use of an old drawing. 500.00 250.00
2.1.3 Divisional Application
507 2.1.3.1 Basic 500.00 250.00
508 2.1.3.2 1st extension 500.00 250.00
509 2.1.3.3 2nd extension 500.00 250.00
510 2.1.4 Revival of Abandoned Application (Without fault of Office) 1,000.00 500.00
2.1.5 Suspension of Action
511 2.1.5.1 By Examiner 800.00 400.00
2.1.5.2 By Director
512 2.1.5.2.1 First 1,000.00 500.00
513 2.1.5.2.2 Second 3,200.00 1,600.00

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 514 2.1.6 Conversion of application from Home Registration 2,000.00 1,000.00
to "intent to use"
515 2.1.7 Amendment fee (to correct formalities, etc.) 700.00 350.00
516 2.1.8 To question correctness of Examiner's action 500.00 250.00
3. REGISTRATION
3.1 Issuance of
517 3.1.1 Original/New/Replacement/Renewal of Certificate of Registration 1,000.00 500.00

plus publication fee

518 3.1.2 Transfer Certificate of Registration 500.00 250.00

3.2 Petition/Request for - Big Small

519 3.2.1 Amendment 700.00 350.00
plus publication fee
520 3.2.2 Correction (Without fault of Office) 1,000.00 500.00
plus publication fee
521 3.2.3 Voluntary Surrender/Abandonment 500.00 250.00
plus publication fee
522 3.2.4 Voluntary Cancellation 500.00 250.00
plus publication fee
523 3.2.5 Voluntary Disclaimer 500.00 250.00
plus publication fee
524 3.2.6 Division of Registration 1,000.00 500.00
525 4. RENEWAL OF REGISTRATION 5,500.00 2,750.00
Per Class
5. FILING OF DECLARATION OF ACTUAL USE
5.1 Filed and registered under RA 8293 (per class)
526 5.1.1 Within 3 years from filing date 1,600.00 800.00
527 5.1.1 Within 1 year from 5th year anniversary 2,000.00 1,000.00
5.2 Filed Under RA 166 (per class)
528 5.2.1 Within 3 years from December 2, 1998 1,600.00 800.00

5.3 Registered under RA 166 and expiring after June 3, 2004 (per class)

529 5.3.1 Within 1 year from 5th year anniversary 2,000.00 1,000.0
0
530 5.3.2 Within 1 year from 10th year anniversary 4,000.00 2,000.0
0
531 5.3.3 Within 1 year from 15th year anniversary 5,500.00 2,750.0
0
532 5.4 Use of mark by a related company 1,600.00 800.0
0
533 5.5 Single extension of time to file Declaration of Use 3,200.00 1,600.0
0
534 6. ANY OTHER PETITION/MOTION/REQUEST not required by the Office 600.00 300.00
or not specified under this section

Additional Information

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TIPS ON CHOOSING YOUR BRAND

I. The Development of a Brand Name

A. What’s in a name?

There is great value to be gained from a strong brand name. The right name clears the way for market
acceptance. Thus, the development of the right brand name is very crucial to the success of a product and
the business. (www.ashtonbg.com, 2001). If managed properly, a new brand name can become one of a
company’s most valuable and vital assets.

Businessmen believe that opportunity knocks only once. Thus, with a name, nothing can be left to
chance. There must be a conscious effort to develop a brand that is both differentiating and
trademarkable. Likewise, the business owner must ensure that the brand name is successful in both its
product introduction and its management over time.

B. “What is the Right Name?”, that is the question.

A brand name is right when it effectively performs two important functions:

1. The name gives recognizability to the new product.

2. The name lends a positive, relevant meaning to the new product. (“User-Friendly Marketing
Research, Dr. Ned Roberto, 1996, p.116) Of the two, the latter function is more important because it
embodies the essence of brand name as the product’s “identity” or its “core indicator”. (Roberto, 1996,
p.116)

Other considerations in choosing the right name are:

1. The name must be hard to imitate, especially once it has been established.

2. A name which is a mere product descriptor, especially of what the product does, should be avoided.
A name which denotes what the product does reflects poor understanding of what a brand really entails.
The brand name must not describe the product; it should distinguish it. (Roberto, 1996, p. 116)

3. The third consideration is important in countries where the language is ideographic and based on
Chinese characters. The ideographic character of the language must be considered when developing and
promoting a brand name. A study (Schmitt and Pan, 1994) suggested that the consideration must include
at least four linguistic aspects:

How the consumers in the countries regard a written name.

A name is like a work of art. This implies that in developing a brand name, the attention must be on
creating “distinct writings” for the name. It is the name’s calligraphic strokes that count in making it both
memorable and rich in imagery. (Roberto, 1996, p. 116)

Consider the characters composing the name as “sign symbols”.

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Characters are inherently meaningful, even up to their smaller units. Thus, it is important to make sure
that there are no negative meanings in: (1) the whole name, (2) each of its component characters, and (3)
the character’s smaller units.

Beware of the different homonyms the pronunciations of the name’s characters carry.

The spoken name may have homonyms with undesirable meanings. The right name for a brand must
sound good to consumers or at least have no negative sound associations.

The tonal character of the names as pronounced.

Cantonese and Mandarin are tonal so that a name with the same phonetic pronunciation will have
different meanings depending on how it is pronounced, for example, with a falling, rising or flat tone.
This suggests that the right brand name has no or minimal “tonal confusions”.(Roberto, 1996, p. 116)

C. 4 Basic Types of Names, Their Advantages and Drawbacks

An important element in the development of a brand name that should be discussed in greater detail is
what type of name would best suit the entity in question.

1. Neologisms

A neologism, or new word, is a word that is created. Examples of neologisms are Pepsi and Xerox.

Advantages of Neologisms:

a) The distinctive nature of new words would mean fewer trademark difficulties. “Extremely inventive
products and companies that represent new ideas can make their names almost synonymous with the
industry itself.” (www.ashtonadams.com, 2001) Companies like Kleenex and Xerox practically invented
their own product class.

b) Most neologisms can be understood and recognized in different languages, thus neologisms are
considered to be globally friendly.

Drawbacks

a) One problem with neologisms is that they have no meaning when they were first introduced. This
means that a company must invest more in the advertisement of its name

b) Most of the time, neologism does not speak of the product’s key benefit, thus missing the
opportunity to position the product using its name.

c) Neologisms might encounter difficulties in spelling and pronunciation, when first introduced. Most
of the now famous neologisms were mispronounced when they were first introduced, a typical problem
when introducing new words.

2. Current Usage Words

Contrary to Neologisms, Current Usage Words are words that already have meaning in our language. The
names People and Sprint are current usage names. “All send messages about the product or company to
which they are affixed. All possess an element of description, but trigger something more in the minds of

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their market.” (www.ashtonadams.com, 2001) This names are descriptive enough to inform but can
distinctively evoke positive images in the mind of the consumer. The name Polo refers to clothing but
also suggests sophistication and good taste.

Drawbacks

The problem with Current usage words is that their being too descriptive will proscribethem to be legally
owned and registered. For example, the word cola is not protectablebecause it describes an entire product
class, beverages from the Kola nut.Current usage words can also pose problems in their translation to
otherlanguages. Thus, one must make certain that the messages conveyed by these words areall positive.

3. The Hybrid

Hybrids are combinations of current usage words or recognizable syllables. Like current usage words,
hybrids can send the right messages with the name. Moreover, one may actually be able to communicate
better with hybrids since the combination of words can highlight several attributes of the product. The
probability of legal problems is also less since hybrids are not likely to be the same as other regular
words. Like neologisms, hybrids must be pronounceable and memorable. Like current usage words, they
too must convey positive messages. (www.ashtonadams.com, 2001)

4. The Acronym

Acronyms are collection of letters that send out a targeted message. Most acronyms have technical
backgrounds. Examples of such are ATM (Automated Teller Machine), GE (General Electric) and IBM
(International Business Machines). Acronyms like neologisms are advantageous because there are less
legal problems in their registration. The problem, however, is that initially these acronyms mean nothing
and may leave the customers’ minds blank. Nevertheless, companies like AT&T which took the risk with
acronyms made it big.

II. What is a Design/Design mark?

A. What Can You See?

Design mark is a brand’s graphical representation. It supplies the visual component of a brand
(www.ashtonbg.com, 20001) and tts power is measured by its ability to elevate brand recognition and
magnify brand imagery. When designing a visual identity, it is important to understand the essence and
the core message of a brand.The challenge is to create a design that can distinctly and clearly
communicate the brand’s key message. The design must be powerful yet simple in form.

B. Elements Of Design

1. Illustration

Before, the logo development process begins with rough sketches. Today, with the new technology, clip
arts and digital illustrations took the place of sketches in logo development.

2. Typography

The process of assigning of fonts and typefaces is called typography. Fonts can convey a myriad of
emotions. It is therefore important to choose the right fonts to clearly convey the brand’s message.

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3. Layout

Lay-outing is the bringing together of the first two elements (the icons and illustrations) to create a
holistic appearance.. A good layout would make all the elements complement each other to powerfully
convey the brand’s message.

4. Color

Finally, color gives the finishing touches to the design. Different colors and their combinations convey
different emotions, moods and meanings. It is therefore a matter of choosing the right colors to
complement the story that would make the brand design successful.

GUIDE TO TRADEMARK REGISTRATION

A. What may be registered?

All marks that are capable of distinguishing goods or services are registrable. Exceptions to this rule are:

Absolute Proscriptions

Where the mark:

1. Consists of immoral, deceptive or scandalous matter.

2. Consists of the flag or coat of arms or other insignia of the Philippines, or of any foreign nation , or
any simulation thereof.

3. Consists exclusively of signs that are generic for the goods and service that they seek to identify.

4. Mark/s contrary to public order or morality.

Relative Proscriptions

Where the mark:

1. Consists of a name, portrait or signature identifying a particular living individual except by his
written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the
life of his widow, if any, except by written consent of the widow.

2. Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing
or priority date, in respect of (i) the same goods or services, or (ii) closely related goods or services, or
(iii) if it nearly resembles such a mark as to be likely to deceive or cause confusion.

3. Is identical with or confusingly similar to an internationally well-known mark.

4. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical
origin of the goods or services.

5. Consists exclusively of signs or of indications that have become customary or usual to designate the
goods or services in everyday language or in bona fide and established trade practice.

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6. Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality,
quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of
the services, or other characteristics of the goods or services.

7. Consists of shapes that may be necessitated by technical factors or by the nature of the goods
themselves or factors that affect their intrinsic value.

8. Consists of colors alone, unless defined by a given form.

9. Is contrary to public order or morality.

Source: http://www.ipophil.gov.ph/