Draft
Office Order No. _____
Series of 2013
RULES AND REGULATIONS ON GEOGRAPHICAL INDICATIONS
Whereas, Section 4 of Republic Act No. 8293 or the Intellectual Property Code
of the Philippines (“IP Code”) provides that geographical indication is an intellectual
property right;
Whereas, Section 9.1 of the IP Code states that one of the functions of the
Bureau of Trademarks is the search and examination of the applications for the
registration of geographic indications and the issuance of the certificates of registration;
Whereas, in order to pursue and facilitate the conferment of protection to
geographical indications, it is fundamental that a system of registration and framework
of rules be established and implemented by the Intellectual Property Office; and
Whereas, Section 7.1 (a) of the IP Code states that the Director General shall
manage and direct all functions and activities of the Office, including the promulgation
of rules and regulations to implement the objectives, policies, plans, programs, and
projects of the Office.
NOW, THEREFORE, in consonance with the foregoing and the policy of the
State to enhance the enforcement of the intellectual property rights in the Philippines,
the following rules and regulations on geographical indications are hereby promulgated:
Article I
Preliminaries
Rule 1. Title. -- These regulations shall be known and cited as the Rules and
Regulations on Geographical Indications.
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Rule 2. Definition of Terms. -- The following terms shall be defined as follows:
a) Geographical indication refers to indications which identify a good as
originating in a territory, region or locality, where a given quality, reputation, or
other characteristic of the good is essentially attributable to its geographical
origin and/or human factors;
b) Goods/Products refers to agricultural products, foodstuff, any products of
handicraft, or wines and spirits;
c) Registrar refers to the Registrar of Geographical Indications;
d) Register refers to the Register of Protected Geographical Indications;
e) Producer refers to any person who exploits or processes agricultural goods
and/or foodstuffs, makes or manufactures handicrafts, and/or exercises control
over the use of GI, standards of production and other product specifications;
f) Office refers to the Intellectual Property Office;
g) Bureau refers to the Bureau of Trademarks;
h) IP Code refers to Republic Act No. 8293, otherwise known as the Intellectual
Property Code of the Philippines;
i) Rules refers to the Rules and Regulations on Geographical Indications;
j) Code of Practice (CoP) is a document that contains information about the
Product/Goods, its specific characteristics and qualities, its area of production,
the guarantee system, and explains the link between the geographical
environment and the Products/Goods in question; and
k) IPOPHL E- Gazette refers to IPO’s own publication where all matters required
to be published under the IP Code shall be published.
Article II
Protection
Rule 3. Registration. -- The protection afforded under these Rules to any indication
constituting geographical indication shall be obtained through a valid registration and a
certificate issued to that effect by the Office, in accordance with the provisions of these
Rules.
Rule 4. Rights of GI Registrants. -- Persons with a duly registered geographical
indication shall have the right to prevent third parties from engaging in the following:
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a) use of any means in the designation or presentation of a good that indicates
or suggests that the good in question originates in a geographical area other
than the true place of origin in a manner which misleads the public as to the
geographical origin of the good;
b) any use of a geographical indications which, although literally true as to the
territory, region or locality in which the goods originate, falsely represents to
the public that the goods originate in another territory;
c) direct or indirect commercial use of a geographical indications in connection
with goods that are similar or comparable to the registered geographical
indications, or any use of the name that would exploit its reputation;
d) any use as a word of a geographical indications denoting a real geographical
place in a manner that conveys a false impression of origin, or use of the
name in translation or accompanied by expressions such as “style”, “type”,
“method”, “as produced in” or other similar qualifying terms;
e) any use of false or misleading information as to the origin, nature or essential
qualities of the product on its packaging, or in advertising material or
document relating to the product;
f) any packaging of the product in a container that is liable to convey a false
impression as to its origin; and
g) any other use similar or analogous to the above.
Article III
Registration Authority
Rule 5. GI Registrar. -- The Director of the Bureau of Trademarks shall act as the
Registrar of Geographical Indication (GI Registrar) who has the authority to examine
and register application of geographical indication, and implement the provisions of
these Regulations.
Rule 6. Functions of the GI Registrar. -- The Registrar shall keep and maintain a
register to be known as the Register of Protected Geographical Indications which shall:
a) contain all the recorded particulars as the Registrar deems appropriate; and
b) be open to the inspection of the public during business hours and subject to
certain reasonable conditions as the Registrar may prescribed.
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A certified true copy or extract of any entry in the Register shall be provided to any
person requiring the copy or extract, upon payment of the prescribed fee.
Article IV
Registration
Rule 7. Applicants. -- Applications for registration of geographical indications may be
made only by the following:
a) natural or juridical person directly involved in the extraction, production or
manufacture of the product or products covered by the geographical
indications;
b) individuals or organizations producing the goods or engaged in the trade of
products bearing geographical indications; or
c) government agency or local government units having jurisdiction over the
geographical origin of the goods.
Rule 8. Additional Qualifications for Non-Filipino Applicants. -- The applicant
who is neither a Filipino citizen, a domestic corporation nor a cooperative/association,
and intends to apply for registration of a geographical indication of a foreign country
must also have any of the following qualifications:
a) a citizen of a country which is a party to an international convention or
agreement concerning the protection of geographical indications, to which
Philippines is also a party; or
b) domiciled or has a real and effective industrial or commercial establishment
in the Philippines or in a country which is a party to an international
convention or agreement concerning the protection of geographical
indications, to which Philippines is also a party.
Rule 9. Form of Applications. -- The application for the registration of the
geographical indications shall be in the prescribed form, may be in Filipino or in English
and shall be filed before the GI Registrar, containing the following details:
a) a request for registration;
b) name, address and nationality of the applicant;
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c) name of the State of which the applicant is a national or where he/it has
domicile, and the name of the State in which the applicant has a real and
effective industrial or commercial establishment;
d) where the applicant is a juridical entity, the law under which it is organized
and existing;
e) name of the geographical indications sought to be registered;
f) name of the good/s covered by the geographical indications;
g) description of the specific and significant characteristics and quality of the
goods which may be attributed to its place of origin, and differentiates it from
other goods of the same category;
h) description of the geographical environment, including territorial limitations
or boundaries and natural and human factors which as a whole affects the
quality and characteristics of the goods;
i) description of the production, method of extraction and other processes used
in relation to the goods embodied in a Code of Practice duly formulated and
adopted by the producers;
j)
k)
one or more reproduction of the geographical indications, as may be
prescribed; and
other details that may be required by the Registrar, as the case maybe.
Rule 10. Certification from Foreign Bodies. – Foreign applicants shall also submit
within a reasonable period of time as may be determined by the Office, a proof issued
by competent agency of the government or any private certifying entity, showing that
the subject of the application is a registered or protected geographical indication.
Rule 11. Filing Date. -- The filing date of an application shall be the date on which the
GI Registrar received the following:
a) a fully accomplished application form, containing all the details prescribed
under this Rules;
b) the identity of the applicant;
c) indications sufficient to contact the applicant or his representative, if any;
d) reproduction of the geographical indications whose registration is sought;
and
e) name of good(s)/product(s) covered by the geographical indications
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Rule 12. Fee Required vis-à-vis Filing Date. -- No filing date shall be accorded
until the required fee is paid.
Article V
Examination
Rule 13. Examination; Deficiencies. -- The Registrar shall conduct an examination
of the application in accordance with Rules 7, 8, 9, 10, 11 and 12. Should there be any
deficiency in the application, the applicant shall be notified by the GI Registrar to
remedy the same, and if deemed necessary, shall be requested to submit additional
information or documents within two (2) months from mailing date of the notice. The
two (2) month period may be extended upon written request and upon payment of the
required fee but in no case shall the total period exceed four (4) months from the
mailing date of the GI Registrar’s notice.
In case the deficiencies are not remedied or if the applicant fails to submit the additional
information or documents within the prescribed period, the application shall be
considered withdrawn without prejudice to the right of the applicant to re-file the same
subject to the requirements set forth above.
Rule 14. Validation. -- The GI Registrar may also validate the relevant technical
information and other data in the application with the relevant private certifying entity
or concerned government agency, as the case may be.
Article VI
Homonymous Geographical Indications
Rule 15. Protection for Homonymous GIs. -- In the case of homonymous
geographical indications for wines and spirits, protection shall be accorded to each
indication.
Rule 16. Differentiation of Homonymous GIs. -- The GI Registrar, in cases of bona
fide concurrent use of homonymous geographical indications, shall determine the
practical conditions under which the homonymous geographical indications in question
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will be differentiated from each other, taking into account the need to ensure equitable
treatment of the producers concerned and that the public are not misled.
Article VII
Refusal of the Application
Rule 17. Non-Registrable Indications. -- The following shall not be registered as
geographical indications and shall be automatically refused:
a) those which are contrary to laws and regulations, public order, public policy
or morality;
b) geographical indications of foreign country which are not or have ceased to
be protected in their country or territory of origin;
c) those which mislead or deceive the public as to the characteristic, nature,
quality, place of origin, production process of the good and/or its use;
d) those which consist exclusively of a generic or customary name of the
products or goods;
e) those which do not fall within the prescribed definition of geographical
indications; and
f) those which nearly resemble or are identical with an earlier filed or registered
geographical indication in respect of the same goods or closely related goods
as to cause confusion.
Rule 18. Order of Refusal. -- Upon proper notification, an Order of Refusal shall be
issued by the GI Registrar to the applicant who may appeal the same to the Director
General in accordance with the Uniform Rules on Appeal.
Article VIII
Publication
Rule 19. Publication. -- Where the GI Registrar finds that the requirements prescribed
by these Rules are satisfied, it shall, upon payment of the prescribed fee, forthwith
cause the application to be published in the IPOPHL E-Gazette. The publication shall
include the following:
a) application number
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b) information on the identity and address of the applicant
c) filing date
d) relevant geographical indication
e) all the details set forth under paragraphs f, g, h, and i of Rule 9
f) other matter(s) which are deemed necessary by the GI Registrar
Article IX
Third-Party Observation
Rule 20. Notice of Third Party Observation. -- Within one (1) month from the
publication of the application of the geographical indication, any person may file before
the Registrar a Notice of Third Party Observation with regard to the registrability of the
geographical indications. Within one (1) month from receipt of the Registrar of such
Notice, a verified and written observation, including supporting documents must also be
submitted, without need of any notification from the Registrar. A copy of the
observation shall be furnished to the applicant who may comment on it within one (1)
month from mailing of the communication. The observation will be taken into
consideration by the Registrar in determining the registrability of, and grant of
protection to geographical indications.
Article X
Registration
Rule 21. Finality of Decision; Registration. -- If no Third Party Observation is filed
within the prescribed period or verification by the concerned government agency or
relevant private certifying entity furnished no reason why such application should not be
given due course, the geographical indications shall be granted protection on the day
immediately after the last day of publication and entered in the Register of Protected
Geographical Indications. In case there is a Third Party Observation, the protection shall
be reckoned from the finality of the decision that the geographical indication is entitled
to registration and protection.
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Article XI
Revocation of Registration
Rule 22. Revocation of Registration. -- The Registrar shall revoke the registration,
upon verified petition of any interested person or entity that protection on geographical
indication is no longer warranted based on any of the following grounds:
a) that the conditions for protection specified under Rule 2 (a) have not been
fulfilled;
b) that there is a change in the geographical origin and/or human factors which
are determinative of the reputation, quality or characteristics of the goods
bearing a geographical indications and such change results to the
disqualification;
c) that based on the ruling or decision of the court or tribunal, the producer
referred to Rule 2 (e) has no effective control over the use of GI, standards
of production and other product specifications; or
d) that the registration of the geographical indications was obtained through
false statements and documents during the course of the application.
Rule 23. Notice of Verified Petition. -- The GI Registrar shall notify and furnish a
copy of the verified petition to the concerned registrant of the geographical indications
who may comment on it within one (1) month from mailing of the communication.
Rule 24. Appeal. -- Any party who is aggrieved by a decision of the GI Registrar may
appeal to the Director General in accordance with the Uniform Rules on Appeal.
Article XII
Special Provisions Vis-a-vis Trademark
Rule 25. GI Application vis-à-vis Established Marks. -- Nothing in these Rules
shall prevent continued or similar use in the Philippines of a particular geographical
indication of another country in connection with goods or services by any national or
domiciliary of the Philippines who has used said geographical indication in a continuous
manner with regard to the same or related goods or services in the Philippines either-
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a) for at least ten years before April 15, 1994;
b) in good faith before April 15, 1994;
c) where the trademark has been applied for or registered in good faith, or
where rights to a trademark have been acquired through use in good
faith either –
i.
before the effectivity of these Regulations; or
ii. before the geographical indication is protected in its country of origin
These Rules shall not prejudice the registrability or the validity of the registration of the
trademark, or the right to use the trademark, on the basis that such trademark is
identical with or similar to a geographical indication.
Article XIII Final Provisions
Rule 26. Separability Clause. If any provision of these Rules or the application of
such provision to any circumstances is held invalid, the remainder of the Rules shall not
be affected thereby.
Rule 27. Effectivity. These Rules shall take effect after fifteen days following its
publication in a newspaper of general circulation.
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