In more detail

Scope

The Madrid Regulations and the Philippine Madrid Regulations of 2024 apply to all international applications filed under the Madrid Protocol where the IPOPHL is the office of origin and IRs where the Philippines is a designated contracting party.

Applicability of the Trademark Regulations of 2023 to IRs

The relevant provisions of the Trademark Regulations of 2023 are adopted, including the requirement of having a local agent for any submission before the IPOPHL, as well as adoption and use of online systems in the IPOPHL transactions.¹ International applications must be filed through the Madrid online filing system, and other subsequent submissions involving IRs must be filed through the IPOPHL's online system.²

Rules on IRs designating the Philippines as contracting party

Recording of license contracts in the International Register

For license contracts recorded in the International Register in respect of an IR, in order for license contracts to be enforceable, the license contract must be reviewed upon the payment of applicable fees, and a certificate of compliance must be issued in accordance with both the Trademark Regulations of 2023 and the IPOPHL's Rules and Regulations on Voluntary Licensing.³

Collective and certification marks

Under the Circular, the rules on an IR designating the Philippines involving a collective mark also apply to certification marks. Accordingly, when an IR designating the Philippines is a collective mark or a certification mark, a copy of the agreement governing the use of such collective mark or the copy of the standards set by the certifier governing the use of the certification mark, as the case may be, must be submitted by the holder of the IR to the IPOPHL within two months from the date of international registration with the International Bureau.⁴

Replacement

Where the holder of an IR files a request for replacement (replacing a national trademark with an IR) with the IPOPHL, and the IPOPHL has taken note of the IR and notified the International Bureau of the same, the IPOPHL must maintain in its register the replaced national registration if the IR remains validly registered.⁵

For partial replacements, the IPOPHL must only maintain the national registration with respect to the goods or services that are covered by the IR, if the IR remains validly registered.⁶

Transformation of an IR

Where an IR designating the Philippines is canceled at the request of the office of origin⁷ for all or some of the goods and services, the IR may be transformed into a national application for the goods or services canceled by the holder within three months from the date of cancellation of the IR.⁸

Declaration of Actual Use (DAU)

If subsequent designations where the period to file the third-year DAU from subsequent designation or the fifth-year DAU from the statement of grant of protection or renewal of registration will overlap with the period to file the renewal DAU (to be filed within one year from the date of renewal), one DAU may be submitted within the overlapping period.⁹ The DAU must specifically state that the compliance is for the overlapping declarations, but the DAU fees must correspond to the two overlapping DAUs.¹⁰

If the deadline to file the third-year or fifth-year DAU is before the commencement, or after the one-year period to submit the renewal DAU, then the required DAU, as appropriate, must be filed.¹¹ A renewal DAU must still be submitted within the prescribed deadline.¹²

Once the IR is renewed with the International Bureau, the period to file the fifth-year DAU and the renewal DAU will now be enforced.¹³

DAUs related to national registrations subject of replacement/transformation

Where the IPOPHL has taken note of an IR replacement and notified the International Bureau, the IR holder must file a DAU in accordance with the Circular. The replaced national registration will be maintained in the IPOPHL's register without needing to file a separate DAU for the national registration.¹⁴

For partial replacement, the IPOPHL will only maintain the national registration for the goods or services that are covered by the IR to which a DAU has been filed and accepted. The registrant must file a separate DAU for the national registration that is not subject to replacement.¹⁵

Where the application or registration results from a transformation and the DAU was filed before the transformation of the IR, such DAU filed will be considered for the national application or registration resulting from the transformed IR.¹⁶ For partial transformation, the DAU previously filed for the IR will be considered as the DAU for the national application or registration resulting from the request for partial transformation.¹⁷

If the DAU has not been filed before transformation of the IR into a national application or registration, the DAU must be filed following the dates prescribed under the Circular and the Trademark Regulations of 2023, regardless of the date of transformation. The date of transformation does not operate to extend the filing date of the DAU. For partial transformation, separate DAUs for the IR and the resulting national application or registration must be filed within the period prescribed under the Circular and the Trademark Regulations of 2023.¹⁸

Renewal of IR

Renewal of IRs must be made with the International Bureau following the Madrid Protocol and Madrid Regulations. 
The Circular will take effect on 25 July 2024.¹⁹

Recommended action

Clients are advised to take note of the IPO's  updated procedures and requirements for international registrations under the Madrid Protocol, including trademark prosecution and maintenance, particularly the updated rules on the submission of DAUs.

Please feel free to reach out to Quisumbing Torres' Intellectual Property, Data and Technology Practice Group for assistance and  further information on the Circular.

1 Rule 4, Circular.

2 Id.

3 Rule 19, Circular. The old rules were silent regarding the of payment of applicable fees and the application of the IPOPHL's Rules and Regulations on Voluntary Licensing.

4 Rule 20, Circular.

5 Rule 21, paragraph 3, Circular.

6 Rule 21, paragraph 4, Circular.

7 hIn accordance with Article 6(4) of the Madrid Protocol.tps

8 Rule 22, Circular. Under the old rules, in such cases, an application for registration for the same mark must be filed with the IPOPHL (within three months from the date of the cancellation of the IR) for goods and services covered by the list of goods and services contained in the IR.

9 Rule 23, paragraph 4, Circular.

10 Rule 23, paragraph 4, Circular.

11 Rule 23, paragraph 5, Circular.

12 Id.

13 Rule 23, paragraph 6, Circular.

14 Rule 24, paragraph 1, Circular.

15 Rule 24, paragraph 2, Circular.

16 Rule 24, paragraph 3, Circular.

17 Id.

18 Rule 24, par. 4, Circular.

19 Rule 25, Circular.

* * * * *

Please contact QTInfoDesk@quisumbingtorres.com for inquiries.

VISIT QUISUMBING TORRES SITE