Can one oppose a trademark application in the Philippines?
Yes, an opposition proceeding is available against a trademark application in the Philippines.
When is the deadline to file an opposition?
A Verified Notice of Opposition must be filed within 30 days from the publication of the trademark application in the Official Gazette. This deadline may be extended twice for 30 days each but in no case should the period exceed 90 days from the date of publication.
Who may file an opposition?
Any party that will be damaged by the registration of a trademark may file an opposition.
Is an opposition proceeding available against international registrations?
Applications filed through the Madrid system designating the Philippines are also subject to opposition proceedings.
What are the usual grounds for an opposition?
The usual grounds for an opposition are as follows:
- The trademark sought to be registered is identical or nearly resembles a trademark belonging to another with an earlier filing or priority date used on the same or related goods.
- The trademark sought to be registered is identical or confusingly similar to an internationally well-known trademark, which is also well-known in the Philippines.
- The trademark application consists of immoral, deceptive or scandalous matter, or may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
- The trademark application consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof;
- Consists of a name, portrait or signature identifying a particular living individual or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow;
- The trademark sought to be registered will mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;
- Consists exclusively of signs that are generic for the goods or services that they seek to identify; or that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice;
- Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services;
- Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;
- Consists of color alone, unless defined by a given form.
What are the formal requirements of a Notice of Opposition?
The Notice of Opposition must be in writing, verified and accompanied by a certification of non-forum shopping. Supporting documents must be originals or certified true copies. Those documents that are not written in English must be accompanied by English translations.
Who has original jurisdiction in an opposition proceeding?
The Bureau of Legal Affairs of the Intellectual Property Office of the Philippines has the original jurisdiction in opposition cases.
What is the quantum of evidence required?
Opposition, as an administrative proceeding, requires substantial evidence.
What is the period to file a Verified Answer to a Verified Notice of Opposition?
The Verified Answer must be filed within 30 days from Respondent’s receipt of the Notice to Answer. Respondent is entitled to 2 extensions of time of 30 days each. The total period, however, must not exceed 90 days from the Respondent’s receipt of the Notice to Answer.
Is the decision of the Bureau of Legal Affairs on an opposition proceeding appealable?
Yes. The decision of the Bureau of Legal Affairs may be appealed by either party to the Office of the Director General (ODG) of the Intellectual Property Office. The decision of the Director General may be appealed to the Court of Appeals. The decision of the Court of Appeals may finally be appealed to the Supreme Court of the Philippines.
Can a registered trademark be cancelled?
Yes, a petition to cancel a registered trademark may be filed.
Who can file a Petition for Cancellation?
Any person who believes that he is or will be damaged by the registration of the trademark may file the petition for cancellation.
What are the grounds for cancelling a trademark registration?
Some of the grounds for cancelling a trademark registration are as follows:
- The registered trademark has become the generic name for the goods or services, or a portion thereof;
- The trademark has been abandoned;
- The trademark was obtained fraudulently or contrary to the provisions of the Intellectual Property Code;
- The trademark is being used by, or with the permission of the registrant so as to misrepresent the source of the goods or services on or in connection with which the trademark is used;
- The registered owner of the trademark without legitimate reason fails to use the mark in the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of 3 years or longer;
- The registered trademark is confusingly similar to another trademark or trade name owned by the person who claims to be damaged and who has superior rights thereto.
What are the deadlines for filing a Petition for Cancellation of a registered trademark?
If the Petition to Cancel a trademark is based on the ground of confusing similarity, the Petition must be filed within 5 years from the date of registration. Otherwise, the Petition to Cancel may be filed at any time.
What are the formal requirements of a Petition for Cancellation?
The Petition must be in writing, verified and accompanied by a certification of non-forum shopping. All documentary exhibits must be originals or certified true copies and those documents not in the English language must be accompanied by English translations.
Who has original jurisdiction to hear a Petition for Cancellation case?
The Bureau of Legal Affairs of the Intellectual Property Office has the original jurisdiction to hear Petition for Cancellation cases.
Is the Decision of the Bureau of Legal Affairs on a Petition for Cancellation appealable?
Yes. The decision of the Bureau of Legal Affairs may be appealed by either party to the Office of the Director General (ODG). A decision of the Director General may be further appealed to the Court of Appeals. And a decision of the Court of Appeals may finally be appealed to the Supreme Court of the Philippines.
Are damages and legal costs awarded in opposition and cancellation cases?
Damages are not awarded to any party in an opposition or cancellations cases. The winning party may not recover legal costs and fees from the losing party.
Can the parties avail of alternative modes of dispute resolution?
Yes, parties are requested to mediate their disputes before the Intellectual Property Office’s Mediation Office in order to explore the possibility of an amicable settlement. The parties may also avail of arbitration proceedings.