27th Mar 2018
Blood, sweat and tears. All these you invested so your brand can establish its niche in the market. After years of hard work, your brand is now popular. You now have a regular clientele who patronize your products bearing your trademark. Then one day, you realize that your sales declined. You wonder why. Upon investigation, you discovered that a store is selling products bearing your trademark without your consent. You also see another store selling products with a logo almost similar to your trademark. Worse, these stores are selling their products at lower prices! No wonder you lost your customers to these stores. What do you do?
This is a common scenario whereby businesses fall prey to copycats or infringers who piggy back on the goodwill and popularity of others. Instead of spending time, effort and money to develop a brand, some prefer to just copy these trademarks and unduly ride on the fame of these brands. This is of course illegal. The act of any person who shall, without the consent of the owner of a registered trademark, use in commerce, reproduce, counterfeit, copy or imitate a registered trademark or a dominant feature thereof is tantamount to trademark infringement. This holds true regardless of whether there is actual sale of the goods or services bearing the infringing mark.
One of the remedies of the registered trademark owner is to file an administrative complaint for trademark infringement against the third party. Such procedure is governed by the Rules & Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights (“Rules on IPV Cases”) as amended by Office Order No. 12, series of 2002, Office Order No. 186, series of 2010 and IPOPHL Memorandum Circular No. 17-012, series of 2017.
This proceeding is initiated by filing a verified Complaint with the Bureau of Legal Affairs of the Philippine Intellectual Property Office (“BLA”) within four (4) years from the date of commission of the violation, or if the date be unknown, from the date of discovery of the violation. The BLA will have original jurisdiction over the case if the total damages claimed are NOT less than P200,000.00.
The Respondent shall be required to file his Answer within ten (10) days from receipt of the summons issued by the BLA.
Upon joinder of the issues, the pre-trial conference shall be set. Before such conference, the parties will be required to submit a pre-trial brief containing a brief statement of the parties’ claims and defenses, suggestions for simplification of issues, list of documents with appropriate markings to be submitted as evidences, statement of stipulation of facts and openness to possibility of amicable settlement, limitation on the number of witnesses and other matters which may aid in the prompt disposition of the case. Failure on the part of the complainant to submit the Pre-Trial brief on time or to appear at pre-trial shall be cause for dismissal of the case with prejudice. On the other hand, a similar failure on the part of the Respondent shall cause the declaration of the Respondent as in default and thereby allow the Complainant to present his evidence ex parte.
After pre-trial, the Hearing Officer shall set the case for successive and continuous hearing for the reception of the evidence in chief. The presentation of evidence shall be completed in two (2) years whereby the Complainant shall have eight (8) months to present and offer evidence. Within ten (10) days after the Complainant has finished his presentation of evidence or lapse of the 8 month period, whichever comes first, the Complainant shall file a formal offer of evidence to which the Respondent may file his comment/objection thereto within ten (10) days from receipt., The same shall be resolved by the Hearing Officer within fifteen (15) days from receipt of the comment/objection.
Thereafter, the Respondent shall have eight (8) months to present and offer his evidence. Within ten (10) days after the Respondent has finished his presentation of evidence or lapse of the 8 month period, whichever comes first, the Respondent shall file a formal offer of evidence to which the Complainant may file his comment/objection thereto within ten (10) days from receipt., The same shall be resolved by the Hearing Officer within fifteen (15) days from receipt of the comment/objection.
Subsequently, the parties shall be given two (2) months each for rebuttal and sur-rebuttal evidence, without extension.
In order to expedite trial, judicial affidavits shall be used, in lieu of direct testimony.
Upon termination of the period for reception evidence, the case shall be decided by the BLA within thirty (30) calendar days from submission. The BLA may require the submission of a memorandum.
This is how to file a trademark infringement case with the Philippine Intellectual Property Office.
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 firstname.lastname@example.org .
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