20th Feb 2017

Appeal concept.

If you have lost in a trademark opposition or cancellation case (classified as inter partes proceedings) with the Philippine Intellectual Property Office, do not lose hope.  The losing party has remedies under the law for the appeal of his case.

 

Appeal to the Director of the Bureau of Legal Affairs

 

A party wishing to appeal a decision of the Hearing Officer in an inter partes case can file an appeal to the Director of the Bureau of Legal Affairs of the Intellectual Property Office within ten (10) days from receipt of the Decision.

 

After receipt of the appeal, the Director shall issue an order for the adverse party to file a Comment within a non-extendible period of ten (10) days from receipt of the order.

 

Under the Rules, the Director is mandated to decide the appeal within thirty (30) days from the lapse of the period for filing the Comment.

 

This stage takes roughly 4 to 8 months.

 

 

Appeal to the Director General

 

If a party is unsatisfied with the decision of the Director, he may appeal to the Director General of the Intellectual Property Office within thirty (30) days from receipt of the decision.

 

Only a single extension of fifteen (15) days is allowed for an appeal to the Director General.

 

During this stage, an Appeal Memorandum must be filed by the Appellant together with the payment of the applicable appeal fees.

 

If the Appeal Memorandum is filed on time and complies with the jurisdictional and formal requirements, the Director General shall order the Appellee to file his Comment to the appeal within thirty (30) days from receipt of the copy of the order.

 

After the Appellee has filed his Comment, the Director General shall order both parties to submit their respective Memoranda within fifteen (15) days from receipt of the copy of the order.

 

At any time, the Director General or upon proper motion, may call a clarificatory hearing or conference.

 

The case will be deemed submitted for decision upon the filing of the Memoranda.

 

The decision or order of the Director General shall be final and executory fifteen (15) days after receipt of a copy thereof of the party unless timely appealed to the Court of Appeals.

 

This stage takes roughly 6 months to 1 year.

 

 

Appeal to the Court of Appeals

 

The losing party may appeal the decision of the Director General of the Intellectual Property Office by filing a Petition for Review under Rule 43 of the Rules of Court with the Court of Appeals. 

 

The appeal is taken within fifteen (15) days from receipt of the order of the Director General by filing a verified petition for review with the Court of Appeals and service thereof made on the Respondent and the Intellectual Property Office. Upon proper motion and the payment of the full amount of the docket fee, the Court of Appeals may grant an additional period of fifteen (15) days within which to file the petition for review. No further extension shall be granted except for the most compelling reason and in no case to exceed fifteen (15) days.

 

The Court of Appeals may require the Respondent to file a Comment within ten (10) days from notice.

 

Upon the lapse of such period and if the Court of Appeals finds prima facie that the IPO may have committed errors of fact or law, it will give due course to the petition.

 

Within fifteen (15) days from notice that the petition has been given due course, the Court of Appeals may require the Intellectual Property Office to transmit the original or a legible certified true copy of the entire record of the proceeding under review. The record to be transmitted may be abridged by agreement of all parties to the proceeding. The Court of Appeals may require or permit subsequent correction of or addition to the record.

 

Furthermore, the Court of Appeals may set the case for oral argument, preliminary conference or require the parties to submit Memoranda within a period of fifteen (15) days from notice. The case shall be deemed submitted for decision upon the filing of the last pleading or memorandum.

 

If the decision is unfavorable, a party may file a motion for reconsideration with the Court of Appeals within fifteen (15) days from receipt of the decision.

 

It must be emphasized that the appeal shall NOT stay the award or order of the Director General unless the Court of Appeals has issued a restraining order.

 

This stage takes roughly 8 months to 2 years.

 

 

Appeal to the Supreme Court

 

The losing party may appeal the decision of the Court of Appeals by filing a verified petition for review on certiorari with the Supreme Courtunder Rule 45 of the Rules of Court.  The petition can only raise questions of law and NOT facts.

 

The verified petition for review on certiorari must be filed within fifteen (15) days from receipt of the denial of the motion for reconsideration. If the petition is given due course, the Supreme Court may require the elevation of the complete record of the case or specified parts thereof within fifteen (15) days from notice.

 

For purposes of determining whether the petition should be dismissed or denied, the Supreme Court may require or allow the filing of such pleadings, briefs, memoranda or documents as it may deem necessary within such periods and under such conditions as it may consider appropriate.

 

If the decision of the Supreme Court is unfavorable, the losing party may file a motion for reconsideration within fifteen (15) days from receipt of the decision.  If the motion is denied, the decision becomes final.

 

This stage takes roughly 2 years to 4 years.

 

Please note that the timelines provided are mere estimates.  It is highly possible that the periods may be longer as they are dependent on many factors such as actions of the opposing party, motions and pleadings filed, complexity of the case, schedule of hearings, actions of the justices and the like.

 

This is how to appeal trademark cancellation and opposition cases in the Philippines

 

Nicolas & De Vega Law Offices is a full-service law firm in the Philippines.  You may visit us at the 16th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, 1605 Pasig City, Metro Manila, Philippines.  You may also call us at +632 4706126, +632 4706130, +632 4016392 or e-mail us at info@ndvlaw.com .

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