What will you do if a company is using your trademark? What if this company has fraudulently registered your trademark in his own name? The remedy to this problem is to have that company’s trademark cancelled.
Section 1511.1 of the Intellectual Property Code of the Philippines (“IP Code”) provides:
“151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows:
(a) Within five (5) years from the date of the registration of the mark under this Act.
(b) At any time, 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 this Act, 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. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. (n)
(c) At any time, 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.” (Emphasis supplied)
The Regulations on Inter Partes Proceedings govern petitions for cancellation. It is summary in nature and has recently been amended on July 2016.
The proceedings are initiated by the filing of the verified petition for cancellation. The verified petition for cancellation 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. Non-compliance with the foregoing formal requirements will result in the outright dismissal of the petition without prejudice.
Kindly note that the amended regulations expressly provide that the documents submitted with the petition shall constitute the entire evidence for the petitioner.
Thereafter, the IPO will issue a Notice to Answer requiring the respondent to file its answer to the petition 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 petitioner. 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.
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, the affidavits of the witnesses and the documentary evidence submitted by the petitioner.
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.
If the petitioner is successful, the trademark registration will be cancelled by the IPO.
This is how to cancel a trademark in the Philippines.
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