TRADEMARK OPPOSITION AND CANCELLATION
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 thirty (30) days from the publication of the trademark application in the Official Gazette. This deadline may be extended only once for a period of forty-five (45) days. If the last day of filing falls on a Saturday, Sunday, holiday, non-working day, or on a day when the office or the bureau is closed for business the filing must be done the next succeeding working day. Any extension of period shall be reckoned from the original due date.
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?
Yes, 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 to a trademark belonging to another with an earlier filing or priority date used on the same or related goods, or nearly resembles such trademark as to be likely to deceive or cause confusion.
- The trademark is identical or confusingly similar to a trademark that is well-known internationally and in the Philippines.
- The trademark 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 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.
- The trademark 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 will mislead the public, particularly as to the nature, quality, characteristics, or geographical origin of the goods or services.
- The trademark 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.
- The trademark 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.
- The trademark 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.
- The trademark consists of color alone, unless defined by a given form.
What are the formal requirements of a Verified Notice of Opposition?
The Verified Notice of Opposition must be in writing, verified, and accompanied by a certification of non-forum shopping. It must be accompanied by the affidavits of witnesses, documentary and object evidence, duly marked, starting from exhibit “A,” and other supporting documents mentioned, together with the translation in English. The Notice of Opposition must also be accompanied by the power of attorney or other proof of authority indicating the authority of the counsel or representative to sign the pleadings, verification, certification of non-forum shopping, to represent the party to the case, and such other relevant delegations. The power of attorney or authority may already include attendance to mediation conferences and negotiate and enter into compromise agreements on behalf of the party. It must be signed by the duly authorized officer/representative of the opposer, notarized, and legalized at the nearest Philippine Embassy and/or Consulate, with the accompanying proof of authority. Supporting documents must be originals or certified true copies.
Who has original jurisdiction in an opposition proceeding?
The Bureau of Legal Affairs (BLA) of the Intellectual Property Office of the Philippines (IPOPHL) has the original jurisdiction in opposition cases.
What is the quantum of evidence required?
Opposition, as an administrative proceeding, requires substantial evidence, or such amount of relevant evidence which a reasonable mind might accept as adequate to justify a conclusion.
What is the period to file a Verified Answer to a Verified Notice of Opposition?
The Verified Answer must be filed within thirty (30) days from the respondent’s receipt of the Notice to Answer. Respondent is entitled to one extension for a period of forty-five (45) days. If the last day of filing falls on a Saturday, Sunday, holiday, non-working day, or on a day when the office or the bureau is closed for business the filing must be done the next succeeding working day. Any extension of period shall be reckoned from the original due date.
Is the decision of the Bureau of Legal Affairs in an opposition proceeding appealable?
Yes. The decision of the Adjudication Officer of the BLA is appealable within fifteen (15) days to the Director of the BLA. The period to file appeal may be extended only once for another fifteen (15) days upon motion of the party concerned which must state meritorious grounds.
The decision of the Director of the BLA may be appealed by within thirty (30) days to the Office of the Director General (ODG) of the IPOPHL.
The decision of the ODG may be appealed to the Court of Appeals within fifteen (15) days from notice of judgment.
The decision of the Court of Appeals may be appealed to the Supreme Court of the Philippines, whose decision is final.
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 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 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 three (3) years or longer.
- The 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 five (5) years from the date of registration. Otherwise, the Petition 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. It must be accompanied by the affidavits of witnesses, documentary and object evidence, duly marked, starting from exhibit “A,” and other supporting documents mentioned, together with the translation in English. The Notice of Opposition must also be accompanied by the power of attorney or other proof of authority indicating the authority of the counsel or representative to sign the pleadings, verification, certification of non-forum shopping, to represent the party to the case, and such other relevant delegations. The power of attorney or authority may already include attendance to mediation conferences and negotiate and enter into compromise agreements on behalf of the party. It must be signed by the duly authorized officer/representative of the opposer, notarized, and legalized at the nearest Philippine Embassy and/or Consulate, with the accompanying proof of authority. Supporting documents must be originals or certified true copies.
Who has original jurisdiction to hear a Petition for Cancellation case?
The BLA 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 Adjudication Officer of the Bureau of Legal Affairs (BLA) is appealable within fifteen (15) days to the Director of the BLA, IPOPHL.
The decision of the Director of the BLA may be appealed by either party within thirty (30) days to the Office of the Director General (ODG), IPOPHL.
The decision of the ODG may be appealed to the Court of Appeals within fifteen (15) days from receipt of decision.
The 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?
No. Damages are not awarded to any party in opposition or cancellation 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 IPOPHL’s Mediation Office in order to explore the possibility of an amicable settlement. The parties may also avail of arbitration proceedings.