Our Intellectual Property Group has experienced litigators who have extensive practice before administrative tribunals and regular courts, both trial and appellate. Unlike other law firms who refer their intellectual property cases to their general litigation department, all intellectual property litigation is handled by litigators belonging to our Intellectual Property Group. Our clients benefit not only from our Group’s very strong litigation practice but also from our intellectual property expertise. This is our Intellectual Property Group’s competitive edge with respect to other law firms.
We have a strong track record in trademark opposition, trademark and patent cancellation proceedings and intellectual property violation cases. Our Firm has proven itself capable of successfully representing local and international clients from different industries and sectors in administrative proceedings before the Bureau of Legal Affairs of the Intellectual Property Office. We represented the trademark owner whose mark was the first to be finally adjudged and declared by the Philippine Supreme Court as an internationally well-known mark. (Sehwani, Inc. and Benita’s Frites, Inc. vs. IN-N-OUT Burger, Inc., 536 SCRA 225 [2007]).
Opposition and Cancellation Proceedings for Trademarks and Patents
Trademark Opposition
Under the Philippine Intellectual Property Code (“IP Code”), an opposition to a published mark must be filed with the Bureau of Legal Affairs within thirty (30) days from its publication in the e-Gazette. However, an Opposer may file a request for extension of time to file a Notice of Opposition up to a maximum of one hundred twenty (120) days from the date of publication of the application.
Trademark Cancellation
Under the IP Code, a trademark registration may be cancelled: (a) if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of the IP Code, or if the registered mark 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 mark is used; or (b) if the registered owner of the mark without legitimate reason fails to use the mark within 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.
Patent Cancellation
Any interested person may, upon payment of the required fee, petition to cancel a patent or any claim thereof, or parts of the claim, on any of the following grounds:
- That what is claimed as the invention is not new or patentable;
- That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or
- That the patent is contrary to public order or morality.
Procedure Common to Trademark Opposition and Trademark and Patent Cancellation Proceedings
The Bureau of Legal Affairs (“BLA”) has amended its rules to make opposition and cancellation proceedings summary in nature.
The Notice of Opposition or Cancellation Petition must be accompanied with the affidavits of witnesses and the originals of the documents and other requirements. It is essential that the:
- Opposition or Petition must be verified and comply with all the formal requirements; and
- the prescribed fees are paid upon its filing.
Failure to verify the pleading, to comply with the other formal requirements or to pay the fee shall result in the dismissal of the opposition or cancellation petition. The verified Opposition or Petition, the duly marked affidavits of the witnesses, and the documents submitted, shall constitute the entire evidence for the Opposer or Petitioner.
Within three (3) working days from receipt of the Opposition or Petition, the BLA shall issue an order for the respondent to file a verified Answer together with the affidavits of its witnesses and its documentary evidence. The Respondent shall file its verified Answer within thirty (30) days from receipt of the Notice to Answer. Upon proper motion and payment of the applicable fee, the BLA may grant additional periods of thirty (30) days within which to file the Answer provided it shall not exceed one hundred twenty (120) days from receipt of the Notice to Answer. The verified Answer and the duly marked affidavits and documents submitted shall constitute the evidence for the Respondent.
The Opposer or Petitioner may file a Reply within a non-extendible period of ten (10) days from receipt of a copy of the Answer. On the other hand, the Respondent may file a Rejoinder also within ten (10) days from receipt of a copy of the Reply. In filing the Reply or Rejoinder, additional documents may be submitted and shall constitute the evidence for the party submitting the same.
In case the Respondent fails to file an Answer; or if the Answer is filed out of time, the case shall be decided on the basis of the Opposition or Petition, the affidavits of the witnesses and the documentary evidence submitted by the Opposer or Petitioner.
A Preliminary Conference shall be conducted within forty-five (45) days but not less than thirty (30) days from receipt of the last pleading for the following purposes:
- Submission of the case for mediation under applicable laws, rules and regulations on mediation;
- Possibility of an amicable settlement; and
- Clarification of issues.
The parties themselves are required to appear during the Preliminary Conference. The presence of a party during the Preliminary Conference may be dispensed with if said party is represented by counsel provided with a notarized power of attorney or the appropriate corporate authorization to make admissions and/or to accept and approve compromise proposals. A party who fails to attend the Preliminary Conference shall be deemed to have waived the right to submit position papers and draft decision.
Immediately after the termination of the Preliminary Conference, the Hearing Officer shall issue an order requiring the parties to submit their respective position papers and, if desired, draft decisions within a non-extendible period of ten (10) days from receipt of the said order. The position papers, and the draft decisions, if any, shall take up only those matters and issues covered or alleged in the Petition or Opposition and the Answer, the supporting evidence, and those determined during the Preliminary Conference. No new matters or issues shall be raised or included in the position papers, and draft decisions, if any. Any such new matters or issues shall be disregarded.
After the lapse of the reglementary period within which to file the position paper, the Hearing Officer shall order the case submitted for decision. Within forty (45) days from the date on which the case was submitted for decision, the BLA Director shall render the decision.
Intellectual Property Violations (IPVs)
The Bureau of Legal Affairs (“BLA”) of the IPO is likewise an alternative venue for the filing of complaints for the violations of intellectual property rights. Instead of filing a criminal or civil case with the trial courts, some intellectual property owners prefer to file an administrative case for violation of intellectual property rights with the BLA. The BLA has the power to adjudicate any case on the protection and enforcement of intellectual property rights provided that the required monetary amount of damages claimed is not less than Two Hundred Thousand Pesos (P200,000.00).
In 2001, the BLA began accepting administrative complaints involving violations of copyright, trademark and patent rights. The BLA is also empowered to issue provisional remedies, e.g., temporary restraining order (“TRO”), preliminary injunction and preliminary attachment.
Adding teeth to the BLA’s authority to hear and decide cases on intellectual property rights violations is its coercive and punitive powers. The Director of the BLA may impose administrative penalties which include the condemnation or seizure of products subject of the offense; forfeiture of paraphernalia and all real and personal properties used in the commission of the offense; cancellation or withholding of any permit, license, authority, or registration granted by the IPO; censure; the assessment of damages and other analogous penalties or sanctions.
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