TRADEMARK CLASS 37: Construction and Repair Services

In the Philippines, the Intellectual Property Office of the Philippines (IPOPHL) organizes trademark applications under the Nice Classification (NCL), which is an international system dividing goods and services into 45 different classes. The aim is to separate businesses by category, preventing confusion when marks are used in unrelated industries.

Class 37 is particularly broad and covers:

• Construction services such as building roads, bridges, dams, and transmission lines.
• Specialized trade work including services of painters, plumbers, electricians, heating installers, and roofers.
• Auxiliary services like inspections of construction plans.
• Repair and restoration services intended to return objects to their original condition without altering their physical or chemical properties (e.g., restoring historic buildings).
• Shipbuilding services.
• Rental of tools or building equipment.
• Maintenance services designed to preserve objects in their original state.

💡 Examples of Philippine Class 37 trademarks include marks for pest control companies, roofing services, and HVAC installers. For instance, “READY ROOFER” (roofing services) and “MR. SPEEDY” (installation services) are illustrative of valid Class 37 registrations.

When NOT to Use Class 37

Applicants should avoid Class 37 if their services fall under:

• Storage or transportation (Class 39 – shipping and travel services).
• Treatment of materials, such as dyeing or chemical processing (Class 40).

Coordinated Classes

Businesses sometimes need to file in related classes if their services overlap. For Class 37, related classes may include:

• Class 36 – insurance (e.g., construction warranties).
• Class 38 – telecommunications.
• Class 39 – shipping.
• Class 40 – material treatment.
• Class 41 – training (e.g., safety courses for construction workers).
• Class 42 – engineering and technology services.

However, applicants must be cautious: each class requires separate fees, and over-filing without necessity can be costly.

Filing Evidence (Specimens) for Class 37

Unlike goods, where a label is affixed to a product, service marks require different proof of use. Acceptable evidence in the Philippines includes:

• Advertisements and brochures showing the mark in use.
• Billboards or flyers promoting the service.
• Photographs of service establishments where the mark is displayed.
• Websites or social media screenshots showing the service being offered in the Philippines.
• Receipts, contracts, or invoices that clearly link the mark to the service.

Unacceptable evidence includes:

• News clippings or press releases (considered mere publicity).
• Letterhead with only a company name but no description of services.

Use Requirement: Declaration of Actual Use (DAU)

In the Philippines, a Declaration of Actual Use (DAU) must be filed:

1. Within 3 years of the filing date (with a possible 6-month extension).
2. On the 5th anniversary of the registration.
3. Upon renewal, and every 5 years thereafter.

Failure to comply leads to automatic cancellation of the mark. This is stricter than some other jurisdictions and ensures that marks are only kept on the register if genuinely used in commerce.

Real-World Example (Case Law)

In Kolin Electronics vs. Kolin Philippines International (G.R. No. 228165, IPOPHL and Supreme Court, 2017), IPOPHL refused registration of the “KOLIN” mark for construction and repair-related goods/services because it was confusingly similar to an existing registered mark in a different but related class. This illustrates that even if businesses file under different classes, likelihood of confusion remains a ground for rejection or opposition.

Opposition and Cancellation in Class 37

After publication in the IPOPHL E-Gazette, third parties can oppose registration within 30 days (extendable once by 45 days). Grounds may include similarity to an existing mark, descriptiveness, or deceptive nature.

Similarly, a registered Class 37 mark can be cancelled if:

• It becomes generic (e.g., a common term for construction services).
• It is abandoned (no DAU filed).
• It was obtained fraudulently.

✅ Key Takeaway: When applying for a Class 37 mark in the Philippines, businesses must:

1. Correctly identify services under construction, repair, or maintenance.
2. Submit acceptable specimens showing actual use in the Philippines.
3. Timely file Declarations of Actual Use to maintain rights.
4. Be prepared for possible opposition, especially if their mark resembles well-known or existing trademarks.

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