16th Apr 2013
If someone is seeking to register a trademark that may be confusingly similar to your trademark, you may file an opposition to such trademark within 30 days during its publication in the IPO e-gazette. Marks are published in the website www.ipophil.gov.ph.
The Regulations on Inter Partes Proceedings govern petitions for opposition filed with the Philippine Intellectual Property Office (IPO).
The first step is to file the verified notice of opposition. Such 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. Copies of documents may be submitted subject to the presentation of the original or certified true copies during preliminary conference.
The verified notice of opposition with the evidences of the opposer must be filed within thirty (30) days from the publication of the mark opposed. 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..
Thereafter, the IPO will issue a Notice to Answer requiring the respondent to file his answer to the opposition within thirty (30) days from receipt of the said Notice to Answer. The formal requirements mandated for oppositions equally apply to the respondent’s Answer. The respondent may also request for a thirty (30) day extension and a second thirty (30) day extension which in total should not exceed ninety (90) days from the publication of the mark.
If 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. Furthermore, the case will also be referred to mediation. The IPO has a high success rate in mediation. It is always advised that the parties come to the negotiating table with open minds. There may be certain facets of the trademark which could be revised or amended. If the mediation is a success, a compromise agreement is executed.
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. Said decision may either grant the opposition which shall deny the registration of the mark or deny the opposition. In which case, the opposed mark will be allowed and shall mature to registration.
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.
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