Foreign trademark owners who claim the 6-months priority filing date in another jurisdiction need not submit the certified copy of their earlier application for their Philippine application. The Intellectual Property Office of the Philippines issued Office Order No. 13-061 and Office Order No. 13-06 directing the local trademark examiner to first verify the online trademark database cited by the trademark owner in the application. The examiner will only require the submission of the certified copy of the foreign priority application (and its English translation, if necessary) if there is no online database.
The Office Orders also allow the publication of the trademark application if the only requirement left to be submitted is the certificate of registration from the foreign jurisdiction. The examiner is now tasked again to verify online whether the foreign application had been registered and, thereafter, issue the notice of allowance for the counterpart local application.
If the foreign application is still pending after verification or if there is no online trademark database, the examiner will nonetheless issue the notice of allowance so that the local application can be published for opposition. The applicant, in the notice of allowance, will be required to submit a copy of the foreign registration within six (6) months from mailing date of the notice. An extension of one year can be taken by the applicant if the foreign registration is still being processed.
Failure to request this extension after the lapse of the six-month period will result in waiver of the claim to the right of priority. The application can still be revived within three months after this waiver but the convention priority will no longer be applied.
The foreign online trademark database must contain the enumeration of goods and services which should be translated to English, if written in another language. However, the IPOPHL will not require the Philippine application as allowed to conform to the list of goods and services in the foreign registration if the examiner deems that these are already covered by the foreign application that serves as basis for the convention priority.
(November 19, 2013)