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 was executed. 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 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 provided that in no case will the filing of the opposition exceed ninety (90) days from the date of the publication of the mark..
It bears great emphasis 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 was executed. Upon payment of prescribed fees, the respondent may file a 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 provided that in no case will the filing of the answer exceed ninety (90) days from the date of 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.
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.
The IPO will issue within ten (10) days from the receipt of the answer, an order setting the conduct of preliminary conference. The case will also be referred to mediation. If no amicable settlement is reached, the IPO will proceed with the 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 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. The hearing officer shall order the case submitted for decisions upon lapse of the period to file the position papers. The director of the Bureau of Legal Affairs shall thereafter render his decision.
This is how to lodge a trademark opposition in the Philippines.
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