13th Feb 2015
A party may file an opposition to a Philippine trademark within a period of thirty (30) days from the date of publication of the mark in the e-gazette of the Philippine Intellectual Property Office (IPO). The e-gazette may be viewed at www.ipophil.gov.ph .
The proceedings are initiated by the filing of the verified notice of opposition. The verified notice of opposition must be filed together with the notarized affidavits of the witnesses, Special Power of Attorney, requisite corporate authorization such as the Corporate Secretary’s Certificate, and the originals or certified true copies of the supporting documents. The affidavits, power of attorney, secretary’s certificate and verification, if executed by a person not in the Philippines, must be duly authenticated by the Philippine embassy or consulate in the country where the documents were executed. For purposes of filing an opposition, however, the authentication may be secured after the filing of the case provided that the execution of such documents are done PRIOR to such filing. Moreover, the authenticated documents must be submitted BEFORE the issuance of the order of default or conduct of the preliminary conference.
Non-compliance with the foregoing formal requirements will result in the outright dismissal of the opposition without prejudice. The verified notice of opposition with the aforementioned evidence of the opposer must be filed within thirty (30) days from the release of the publication of the rival mark. Upon payment of prescribed fees, the opposer may file a first motion for extension requesting additional thirty (30) days within which to submit the opposition. A second motion for extension of another thirty (30) days is allowed. Finally, a third motion for extension of thirty (30) days is permitted on compelling grounds provided that in no case will the filing of the opposition exceed one hundred twenty (120) days from the date of the publication of the mark.
Kindly note that the amended regulations expressly provide that the documents submitted with the opposition shall constitute the entire evidence for the opposer.
Thereafter, the IPO will issue a Notice to Answer requiring the respondent to file its answer to the opposition within thirty (30) days from receipt of the said Notice to Answer. The answer must also be verified and accompanied by the evidence of the respondent together with the duly marked affidavits of witnesses and other documents serving copies thereof upon the opposer. The affidavits, power of attorney, secretary’s certificate and verification, if executed by a person not in the Philippines, must be duly authenticated by the Philippine embassy or consulate in the country where the documents were executed. Upon payment of prescribed fees, the respondent may file a first motion for extension requesting additional thirty (30) days within which to submit the Answer. A second motion for extension of another thirty (30) days is allowed. Finally, a third motion for extension of thirty (30) days is permitted provided that in no case will the filing of the Answer exceed one hundred twenty (120) days from the receipt of the copy of the Notice to Answer.
The verified answer and the duly marked affidavits and documents submitted shall constitute the evidence for the respondent. The same formal requirements as to certified and original copies, notarization and authentication will apply to the Answer.
It must be emphasized that 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 petition or opposition, the affidavits of the witnesses and the documentary evidence submitted by the opposer.
Thereafter, the case will be referred to Alternative Dispute Resolution (“ADR”). If the case is not resolved through ADR, the case will be raffled to a Hearing Officer who will issue an Order setting the case for preliminary conference.
A preliminary conference shall be conducted for purposes of facilitating the resolution of the case through stipulations, clarifications, simplification of issues and the submission and/or presentation of the original or certified true copies of the evidences, if necessary.
After termination of the preliminary conference, the IPO shall issue an order in open court requiring the parties to submit their respective position paper within ten (10) days.
Upon lapse of the period to file the position papers, the case will be deemed submitted for decision. Under the new Rules, the Hearing Officer should issue a decision within sixty (60) days from the date the case is deemed submitted for decision.
This is how to lodge a trademark opposition in the Philippines.
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