III.

INTELLECTUAL PROPERTY RIGHTS

a. STATE POLICIES 1. Section 13, Article 14 of the 1987 Constitution The State shall regulate the acquisition, ownership, use, and disposition of property and its increments. 2. Section 2, Republic Act No. 8293 (IP Code of the Phil.)

The law declared the trademark as a visible sign, thus barring the possibility of audible (or sensory functions aside from the visual) signs being considered as trademark. COLLECTIVE MARK any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark; [Sec. 121.2] TRADE NAME the name or designation identifying or distinguishing an enterprise; also known as business identifier The right to the mark is separate and distinct from the business using such mark. [Sec. 149.1] The right of registration belongs to the owner of the mark. Trade Name Separate Existence Has an existence distinct Attached to the natural or from the existence of the juridical person who does proprietor or the juridical business and produces the person doing business and goods for services. producing the goods or the services offered by such person or enterprise. Purpose Distinguishes ones goods Distinguishes ones business from the sea of similar entity from the rest of the goods industry Registration Must be registered in order No need to register in order to secure protection for to secure protection for them them Transferability May be transferred with or Change of ownership of without transfer of the trade name must be made business. with transfer of enterprise or part thereof. [Sec. 165.4] Examples The Nike swoosh or the Nike or Coca-Cola (the check mark looking logo latter is also an example of the trade name used as a trade mark. Trademark Right which protects the interests of producers in their marks and in the goodwill earned. Goodwill Reputation and public confidence that a business venture has earned through a period of creditable dealings. Trademark

The State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments, and ensures market access for our products. It shall protect and secure the exclusive rights of scientists, inventors, artists and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such periods as provided in this Act. The use of intellectual property bears a social function. To this end, the State shall promote the diffusion of knowledge and information for the promotion of national development and progress and the common good. It is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright, to liberalize the registration on the transfer of technology, and to enhance the enforcement of intellectual property rights in the Philippines. b. TRADEMARK AND SERVICE MARKS 1. Definition

TRADEMARK a distinctive mark of authenticity through which the merchandise of a particular producer or manufacturer may be distinguished from that of others, and its sole function is to designate distinctively the origin of the products to which it is attached; It is any word, name, symbol or device adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured and sold by others. MARK any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods [Sec. 121.1]

Trademark Designed to identify the user or origin.

Label Merely names what is within the container or package; may or may not be trademark.

For the requirement of actual use in commerce in the Philippines before one may register a trademark, trade name and service mark under the law pertains to the territorial jurisdiction of the Philippines and is not only confined to a certain region, province, city or barangay. (McDonalds v. McJoy Fastfood Corp.) Registration is not necessary to file a case for unfair competition or false designation. Duration of Trademark Ten (10) years subject to indefinite renewal for periods of 10 years each. Importance of acquiring a right The marks that are duly registered are protected by law as intellectual properties and cannot be appropriated by others without violating the due process clause. Section 123. Registrability. 123.1. A mark cannot be registered if it: (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; (c) 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; (d) 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; (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be wellknown internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark;

In practice, a word, a name or a phrase, coupled with indicators of business organization, such as Inc., Corp. or Co. will NOT be registered as trademarks or service marks. Names that cannot be used as trade names A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties. Any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful. 2. Nature and Function of Trademark a) Source-indicating function -- To indicate origin or ownership of the goods to which they are attached; b) Guarantee Function -- To guarantee the standard of quality of the goods; c) Advertisement function -To advertise the goods they symbolize d) Economic function -- They play in a vast marketplace of competing goods all seeking to attract purchasers. Trademarks serve as an essential means of distinguishing the products of one manufacturer or dealer from those of others. 3. Registrability of Trademark

Functions of a trademark

How Marks are Acquired The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. [Sec. 122] Registration is necessary before one can file an action for infringement. Prior use in the Philippines is not required before registration. However, there must be actual use after registration.

(f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use; (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify; (i) 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; (j) 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; (k) 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; (l) Consists of color alone, unless defined by a given form; (m) Is contrary to public order or morality. Section 123.2 As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicants goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. Section 123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to registration.

Non-Registrable Marks A mark cannot be registered if it is: a) immoral, deceptive or scandalous matter b) flag or coat of arms c) name of a particular living individual or portrait of a deceased President of the Philippines d) Is identical with a registered mark as to: (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; e) similar to, or translation of, internationally known mark, registered or not as to same goods f) similar to, or translation of, internationally known mark, when registered, as to all goods g) misleading as to the nature, quality, characteristics or geographical origin of the goods or services; h) generic i) descriptive j) 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; k) Shapes l) Color m) contrary to public order or morality If by mistake or error, a mark or trade name which is prohibited by law to be registered is registered, the registration is INVALID and gives the registrant no protection. Falsely suggesting connection Actual claim of connection is NOT necessary. The law disallows false suggestion to a person, an institution or a belief Identical with registered mark One reason why traders want to have their trademarks registered is that they want to use it exclusively. Identity of a Mark alone is not trademark infringement Colorable imitation of a registered mark The law disallows use of marks that resembles a registered mark if such is likely to deceive or cause a confusion.

Kinds/classification of words: a) COMMON WORDS 1) generic never capable of registration Xeroxseems to be generic, since it is found in the dictionary as a verb 2) descriptive there is immediate association not registrable except when there is secondary meaning, or used with other words 3) suggestive requires imagination/deduction b) FANCIFUL/COINED -- e.g. Kodak c) ARBITRARY -- e.g. Apple Computer Name denoting geographical location GEN. RULE: Cant be used when: a) It induces public to believe that it is manufactured in a place where it is not really manufactured there, e.g. Champagne is a sparkling wine from a particular city in France; no other wine can be called Champagne. b) If that place is known for the goods, you cant register, e.g. Batangas is known for its coffee EXPN: If that place is not particularly known for products of that kind. e.g. Baguio Oil, Seattles Best GENERIC MARKS They are commonly used as the name or description of a kind of goods, such as Lite for beer or Chocolate Fudge for chocolate soda drink. DESCRIPTIVE MARKS They convey characteristics, functions, qualities, or ingredients of a product to one who has never seen it or does not know it exists such as Arthricare for arthritis medication. FANCIFUL OR ARBITRARY MARKS It bears no logical relation to the actual characteristics of the product it represents. It is highly distinctive and valid. WELL-KNOWN MARK A mark which a competent authority of the Philippines has designated to be well-known internationally and in the Philippines. It does not require that the well-known mark be used in commerce in the Philippines, but only that it be well-known in the Philippines.

What if the well-known mark is not registered in the Philippines? It is still entitled to protection even without registration of such trade name in the Philippines under the Paris Convention as well as Sec. 37 of R.A. 8293 What if the well-known mark is known in the Philippines? Then, the prohibition to use that mark by another extends to nonrelated goods or services. The Philippines is obligated to assure nationals of countries of the Paris Convention that they are afforded an effective protection against violation of their IPR in the Philippines in the same way that their own countries are obligated to accord similar protection to Philippine nationals. Thus, a trade name of a national of a State is a party to the Paris Convention, whether or not the trade name forms part of a trademark is protected without the obligation of filing or registration. Who has the power to determine whether a trademark is well-known or not? It lies in the competent authority of a country of the registration or use. It is either the: a) Registering authority if it has the power to decide, or b) The courts of the country in question if he issue comes before the courts Factors to be considered a) That the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the Member State; b) That the mark is well-known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or c) That the mark is well-known by the public at large in the Member State.

4.

Dominancy Test vs. Holistic Test

Test to determine confusing similarity between marks In infringement cases in the Philippines, particularly in ascertaining whether one trademark is confusingly similar to or is a colorable imitation of another, no set rules can be deduced. Each case must be decided on its own merits. DOMINANCY TEST Focuses on the similarity of the main, essential, dominant, or prevalent features of a mark. HOLISTIC/TOTALITY TEST Mandates that the entirety of the marks on question must be considered in determining confusing similarity.

Identical with or confusingly similar with well-known marks The law disallows use of a mark that is identical with or is confusingly similar with a well-known mark even if such wellknown mark is not registered in the Philippines.

Dominancy Test Focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception, and thus infringement. If the competing trademark contains the main, essential or dominant features of another and confusion or deception is likely to result, infringement takes place.

Holistic/Totality Test Entails a consideration of the entirety of the marks as applied to products, including the labels and packaging, in determining confusing similarity. The discerning eye of the observer must focus not only on the predominant words but also on other features appearing on both labels in order that the observer may draw his conclusion whether one is confusingly similar to the other. likelihood of confusion is more manifest when holistic test is applied taking into consideration the packaging and the marks Relies on visual comparison only.

5.

Identical or Related Goods and Confusion of Business

a) Confusion of goods or services

Confusion of Marks or Trade names

Exists when an otherwise prudent purchaser is induced to purchase one product or service in the belief that he is purchasing another, in which case defendants goods are then bought as the plaintiffs reputation Confusingly similar marks are used on the same kinds of goods or services. b) Confusion of business or of origin Exists when the goods of the parties are different but the defendants product can be reasonably though mistakenly be assumed to originate from the plaintiff, thus deceiving the public into believing that there is some connection between the plaintiff and defendant which in fact does not exist. confusingly similar marks are employed in different or non-competing goods or services COLORABLE IMITATION It is that which denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such resemblance to the original as to deceive ordinary purchaser giving such attention as a purchaser usually gives, as to cause him to purchase the one supposing it to be the other. Such similarity in form, content, words, sound, meaning, special arrangement or general appearance of the mark or trade name with that of the other mark or trade name in their overall presentation or in their essential, substantive or distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article. IDEM SONANS RULE The trademarks used on identical or related goods may be confusingly similar if they have similar sound or pronunciation. Similarity of sound or pronunciation and spelling may be sufficient to make two marks confusingly similar when applied to merchandise of the same descriptive properties. Example: Salonpas and Lionpas both for medical plaster. Likelihood of confusion or mistake is greater when identical or closely similar marks are used on noncompeting but related and common household items because they are purchased by ordinary purchasers who usually know them by their names or trademarks.

Exact duplication or imitation is not necessary; nor is it necessary that the infringing label should suggest an effort to imitate. Given more consideration are the: 1. Aural 2. Visual impressions created by the marks on the buyers of goods, And giving little weight to factors like: 1. Prices 2. Quality 3. Sales outlets 4. Market segments The question is whether the use of the marks involved is likely to cause confusion or mistake in the mind of the public or deceive purchasers. This test is incorporated in the IP Code and is controlling.

NOTE: The SC on several occasions used both tests in their decisions. Thus, the use of one does not preclude the use of the other.

Aural effects of the words and letters contained in the marks should be considered in determining the issue of confusing similarity. Example: NANNY is confusingly similar to NAN. NAN being the prevalent feature. (Societe Des Produits Nestle v. Depositary)

6.

Registration Process

Process of the filing of an application for registration of the mark [Sec 124.1] The application for the registration of the mark shall be in Filipino or in English and shall contain the following: a) request for registration; b) applicants name and address; c) State of which the applicant is a national or where he has domicile; and in which he has a real and effective industrial or commercial establishment, if any; d) where the applicant is a juridical entity, the law under which it is organized and existing; e) appointment of an agent or representative, if the applicant is not domiciled in the Philippines; f) where the applicant claims the priority of an earlier application, an indication of: i. State where the earlier application was filed, ii. date of earlier application iii. if available, the application number of the earlier application; g) Where the applicant claims color as a distinctive feature of the mark, a statement to that effect as well as the name or names of the color(s) claimed and an indication of the principal parts of the mark which are in that color; h) where the mark is 3D, a statement to that effect; i) reproduction(s) of the mark; j) transliteration or translation of the mark or of some parts of the mark, as prescribed in the Regulations; k) names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; and l) signature by, or other self-identification of, the applicant or his representative Who may be the applicant? a) Natural or b) Juridical person Rule in case of more than 1 applicant All of them should be named as applicant but anyone may sign the applicant for and in behalf of all the applicants. The applicant may file and prosecute the application through an attorney or other person authorized to practice such matters by the Office

Test on confusion of goods or services a) Dominancy Test b) Holistic or Totality Test Other Factors to be considered: a) The class of purchasers b) The nature and cost of articles c) Conditions under which they are purchased Test on confusion of business or origin Whether the non-competing articles may be classified under two different classes because they are deemed not to possess the same descriptive properties. When goods are related, confusion of origin is likely to arise. Goods are related when: a) Belong to the same class or have same descriptive properties b) Possess the same physical attributes or essential characteristics with reference to form, composition, texture or quality. c) Serve the same purpose or are sold in groceries or flow through the same channel of trade. General Rule: Where the product on which a mark is used is identical or similar with that of another is entirely unrelated to the product of the latter, the use by the junior user may unlikely cause confusion or mistake as to the source or origin of the product. Exception: Where the mark is considered well known by competent authority of the Philippines, the use on unrelated good or service would indicate a connection between those goods or services in which case the junior user cannot register the mark on the entirely unrelated good. RELATED GOODS DOCTRINE When goods are so related that the public may be, or is actually, deceived and misled that they come from the same maker or manufacturer, trademark infringement occurs.

Rule in case the applicant is not domiciled in the Philippines a) he shall designate by a written document filed in the Office b) the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark c) Such notices or services may be served upon the person so designated by leaving a copy thereof at the address specified in the last designation filed d) If the person so designated cannot be found at the address given in the last designation, such notice or process may be served upon the Director Rule if the applicant dies, becomes insane, or incapacitated The legally appointed executor, administrator, guardian, conservator or representative of the applicant may prosecute the application in behalf of the heirs and successors-ininterest of the applicant. Section 124.2 The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director. Section 124.3 One (1) application may relate to several goods and/or services, whether they belong to one (1) class or to several classes of the Nice Classification. Section 124.4 If during the examination of the application, the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt. (Sec. 5, R. A. No. 166a) Section 125. Representation; Address for Service. If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he shall designate by a written document filed in the office, the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark. Such notices or services may be served upon the person so designated by leaving a copy thereof at the address specified in the last designation filed. If the person so designated cannot be found at the address given in the last designation, such notice or process may be served upon the Director.

Section 126. Disclaimers. The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicants or owners rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicants or owners right on another application of later date if the disclaimed matter became distinctive of the applicants or owners goods, business or services. Purpose of the disclaimers To make of record that a significant element of a composite mark is not being exclusively appropriated apart from the composite. The composite portions which must be disclaimed a) Generic term b) Descriptive term in a composite mark c) A matter which does not function as a trademark, service mark or a trade name. Sec. 127. Filing Date. 127.1. Requirements The filing date of an application shall be the date on which the Office received the following indications and elements in English or Filipino: a) c) request for a Philippine registration of mark; indications sufficient to contact the applicant or his representative, if any b) identity of the applicant;

d) reproduction of the mark whose registration is sought; e) list of the goods or services for which the registration is sought No filing date until the required fee is paid.

127.2 No filing date shall be accorded until the required fee is paid. Sec. 128. Single Registration for Goods and/or Services. Where goods and/or services belonging to several classes of the Nice Classification have been included in one (1) application, such an application shall result in one registration.

Sec. 129. Division of Application. Any application referring to several goods or services, hereafter referred to as the "initial application," may be divided by the applicant into two (2) or more applications, hereafter referred to as the "divisional applications," by distributing among the latter the goods or services referred to in the initial application. The divisional applications shall preserve the filing date of the initial application or the benefit of the right of priority. Sec. 130. Signature and Other Means of Self-Identification. 130.1. Where a signature is required, the Office shall accept: (a) A hand-written signature; or (b) The use of other forms of signature, such as a printed or stamped signature, or the use of a seal, instead of a hand-written signature: Provided, That where a seal is used, it should be accompanied by an indication in letters of the name of the signatory. 130.2. The Office shall accept communications to it by telecopier, or by electronic means subject to the conditions or requirements that will be prescribed by the Regulations. When communications are made by telefacsimile, the reproduction of the signature, or the reproduction of the seal together with, where required, the indication in letters of the name of the natural person whose seal is used, appears. The original communications must be received by the Office within thirty (30) days from date of receipt of the telefacsimile. 130.3. No attestation, notarization, authentication, legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs, will be required, except, where the signature concerns the surrender of a registration. Sec. 131. Priority Right. 131.1. An application for registration of a mark filed in the Philippines by a person referred to in Section 3, and who previously duly filed an application for registration of the same mark in one of those countries, shall be considered as filed as of the day the application was first filed in the foreign country.

131.2. No registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant. 131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law. 131.4. In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority. Sec. 132. Application Number and Filing Date. 132.1. The Office shall examine whether the application satisfies the requirements for the grant of a filing date as provided in Section 127 and Regulations relating thereto. If the application does not satisfy the filing requirements, the Office shall notify the applicant who shall within a period fixed by the Regulations complete or correct the application as required, otherwise, the application shall be considered withdrawn. 132.2 Once an application meets the filing requirements of Section 127, it shall be numbered in the sequential order, and the applicant shall be informed of the application number and the filing date of the application will be deemed to have been abandoned.

Sec. 133. Examination and Publication. 133.1. Once the application meets the filing requirements of Section 127, the Office shall examine whether the application meets the requirements of Section 124 and the mark as defined in Section 121 is registrable under Section 123. 133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall, upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner. 133.3. If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four (4) months in which to reply or amend his application, which shall then be re-examined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner. 133.4. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, upon good cause shown and the payment of the required fee. 133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations. Sec. 134. Opposition. Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English,

if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of such extension. The Regulations shall fix the maximum period of time within which to file the opposition. Sec. 135. Notice and Hearing. Upon the filing of an opposition, the Office shall serve notice of the filing on the applicant, and of the date of the hearing thereof upon the applicant and the oppositor and all other persons having any right, title or interest in the mark covered by the application, as appear of record in the Office. Sec. 136. Issuance and Publication of Certificate. When the period for filing the opposition has expired, or when the Director of Legal Affairs shall have denied the opposition, the Office upon payment of the required fee, shall issue the certificate of registration. Upon issuance of a certificate of registration, notice thereof making reference to the publication of the application shall be published in the IPO Gazette. Sec. 137. Registration of Mark and Issuance of a Certificate to the Owner or his Assignee. 137.1. The Office shall maintain a Register in which shall be registered marks, numbered in the order of their registration, and all transactions in respect of each mark, required to be recorded by virtue of this law. 137.2. The registration of a mark s hall include a reproduction of the mark and shall mention: its number; the name and address of the registered owner and, if the registered owners address is outside the country, his address for service within the country; the dates of application and registration; if priority is claimed, an indication of this fact, and the number, date and country of the application, basis of the priority claims; the list of goods or services in respect of which registration has been granted, with the indication of the corresponding class or classes; and such other data as the Regulations may prescribe from time to time.

137.3. A certificate of registration of a mark may be issued to the assignee of the applicant: Provided, That the assignment is recorded in the Office. In case of a change of ownership, the Office shall at the written request signed by the owner, or his representative, or by the new owner, or his representative and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period. 137.4. The Office shall record any change of address, or address for service, which shall be notified to it by the registered owner. 137.5. In the absence of any provision to the contrary in this Act, communications to be made to the registered owner by virtue of this Act shall be sent to him at his last recorded address and, at the same, at his last recorded address for service. Sec. 138. Certificates of Registration. A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the registrants ownership of the mark, and of the registrants exclusive right to use the same in connection with the goods or services and those that are related thereto specified in the certificate. Sec. 139. Publication of Registered Marks; Inspection of Register 139.1. The Office shall publish, in the form and within the period fixed by the Regulations, the mark registered, in the order of their registration, reproducing all the particulars referred to in Subsection 137.2. 139.2. Marks registered at the Office may be inspected free of charge and any person may obtain copies thereof at his own expense. This provision shall also be applicable to transactions recorded in respect of any registered mark.

7. 8. 9. 10.

Inter Partes Cases Infringement Unfair Competition Remedies