Having your trademark or service mark registered with the Intellectual Property Office of the Philippines (IPOPHL) is the only way by which one can own such a mark and prevent others from using an identical or similar mark especially with respect to identical or similar goods or services without the owner’s consent.
Same goes with patent. An inventor can have the exclusive right to prevent others without his authorization from using, selling, importing his invention which can be a product or a process only if the inventor is able to secure a patent from the Bureau of Patents.
But registering a trademark or securing a patent, especially the latter, can be difficult for someone who does not have sufficient knowledge of intellectual property laws and rights. And so businesses especially hire the services of agents or lawyers to do the work for them.
Enforcing one’s IP rights, including filing cases for trademark or patent infringement, would of course require getting the services of a qualified IP law practitioner.
Fortunately, the next time someone wants to engage the services of an agent or an attorney to assist either in having a trademark or patent registered with the IPOPHL or in enforcing one’s IP right, it will have to be an agent or lawyer who is recognized to provide such services.
The IPOPHL had recently introduced a formal recognition system for trademark agents and attorneys in a bid to ensure the credibility and competence of individuals providing IP-related services.
Registration with the said office will authorize representatives to transact or conduct business with the IPOPHL on behalf of applicants for registration of trademark or maintenance of a registered trademark or those involving applications for patent, utility models, or industrial designs.
According to IPOPHL director general Rowel Barba, this will strengthen the IP profession as it sets the standards that make for satisfactory and quality IP services and deter fraudulent activities.
This system of registration, the office explained, aims to recognize professionals who have the necessary knowledge and capabilities in IP creation, protection and commercialization, as well as enhance the IP system in the country.
A recognized trademark or patent agent is a title granted to non-lawyers while a recognized trademark or patent attorney is one that will be given to individuals qualified to practice law in the country. The recognition is mandatory for non-lawyers in order to appear before the IPOPHL and its bureaus on behalf of trademark or patent applicants or owners while it is voluntary for lawyers and is not a requirement for appearing as an applicant, agent, attorney, representative before the said agency.
But of course, getting the services of a recognized trademark or patent attorney can guarantee that said lawyer has the necessary IP know-how and capability.
Pursuant to the Intellectual Property Code and as clarified by the Supreme Court in an earlier ruling, the IPOPHL director general has the power to promulgate rules and regulations for the recognition of attorneys, agents, or other persons representing applicants or other parties before it.
According to a circular issued by IPOPhl, recognized trademark agents shall be able to conduct trademark search, properly classify goods and services based on the Nice Classification, filing and process trademark applications whether in the country or other countries under the Madrid Protocol, comply with maintenance requirements such as the filing of declaration of actual use and renewals which is necessary to maintain ownership of a trademark, among others.
On the other hand, recognized trademark attorneys will be able to conduct those activities and services that recognized agents can do and at the same time file, prosecute and defend inter partes cases (opposition to a trademark application and cancellation of trademark registration) and IP violations before the Bureau of Legal Affairs, those involving appeals or motions for reconsideration or petition for review with the Bureau of Trademarks and others.
But applicants for their own trademark can still represent themselves and are not covered by these new rules.
A register of recognized trademark representatives shall be created and these representatives will be assigned a recognition identification code which they will have to indicate in all their filings with the IPOPHL.
But to be a recognized representative, one must not only be member of them Bar in good standing in the case of lawyers and must possess the minimum educational qualification, they must also undergo training under the Trademark Representative Admission Course administered by the IP Academy or any national or international trainings on trademark and pass a qualifying examination.
Exemptions are available for those who have been in the field of trademark practice for at least 20 years. Meanwhile, recognition is valid for three years from date of publication in the IPOPHL website renewable every three years.
Another circular of the IPOPHL provides for the recognition of patent agents and lawyers for purposes of transacting or conducting business with the agency on behalf of an applicant or registrant of a patent, utility model, or industrial design application or registration. Just like in the case of trademark representatives, recognition if mandatory for patent agents who are not lawyers and optional for patent attorneys.
Recognized patent agents can do patent, UM, or industrial design searches, filings, applications and maintenance, while recognized patent attorneys can do what agents do and also file, prosecute and defend cancellation cases before the BLA, infringement cases also before the said bureau, file appeals, motions for reconsideration, or petition for review, among others.
Similarly, recognized patent representatives must meet the qualifications, including the educational and training requirements and must pass the qualifying examination.
The Patent Representatives Recognition Board may register an applicant without undergoing the training and examination requirements if said applicant is a patent agent qualifying examination passer from 2014 and earlier.
The term of recognition for patent representatives is also three years from publication renewable after every three years.
Practitioners must comply with the recognition requirements within 24 months from March 2024.
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