FREQUENTLY ASKED QUESTIONS ON LITIGATION AND ENFORCEMENT
What are Inter Partes cases?
Inter Partes cases refer to the following intellectual property-related cases or proceedings:
(a) Oppositions to applications for the registration of trademark or service mark;
(b)Petitions to cancel the registrations of trademarks or service marks;
(c) Petitions to cancel invention patents, utility model registrations, industrial design registrations, or any claim or parts of a claim, and registrations of topography or layout design of integrated circuits based on Rule 402, paragraphs (a) and (b) of the Layout Design (Topography) of Integrated Circuits Regulations (Office Order No 19, s. 2002) and
(d) Petitions for Compulsory Licensing
Can a foreign national or corporation sue in Inter Partes cases?
Yes. Any foreign national or juridical person whether or not engaged in business in the Philippines may bring a petition for opposition, cancellation or compulsory licensing provided that the country of which he or it is a national, domiciled, or has real and effective industrial establishment is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law.
Who has jurisdiction over Inter Partes cases?
The Bureau of Legal Affairs of the Intellectual Property Office has original jurisdiction over Inter Partes cases.
What are the filing requirements for an opposition case or a petition to cancel?
The opposition or petition must be in writing, verified and accompanied by a certification of non-forum shopping, and in due form. The opposition or petition must indicate the following:
(a) Names and addresses of the petitioner or oppose and the other parties, including the respondent;
(b) The assigned application number and the filing date of the trademark application opposed, or the registration number, the name of the registrant, and the date of the registration of the trademark, patent, utility model, industrial design or layout design sought to be cancelled; and
(c) Ultimate facts constituting the opposer’s or petitioner’s cause or causes of actions and the relief sought
Affidavits of witnesses, documentary or object evidence and other supporting documents must be submitted together with the opposition and petition.
Who may file an opposition or petition for cancellation?
Any natural or juridical person, who believes that he/she or it would be damaged by the registration of a mark, or the continued registration of a trademark, patent, utility model, industrial design or layout design may file a written notice of opposition to a trademark application or a petition to cancel, as may be applicable.
What is the period to file opposition?
The verified notice of opposition must be filed within thirty (30) days from the date of the publication of the trademark application in the E-Gazette. Three (3) motions for extension of time based on meritorious grounds of thirty (30) days each may be filed to move the filing deadline. However, in no case shall the filing of the opposition exceed one hundred and twenty (120) days from the date of publication.
If the last day for filing of the opposition or motion for extension falls on a Saturday, Sunday, holiday or non-working day, or when the IPO is closed for business, the filing of the opposition may be done the next working day.
When should a Petition for Cancellation of a Trademark be filed?
A Petition for Cancellation may be filed at any time if the registered mark becomes generic for the goods or services or if it has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of the IP Code, or if the registered mark is being used by, or with the permission of, the registrant as to misrepresent the source of the goods or the services on or in connection with which the mark is used.
A Petition for Cancellation may also be filed 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.
Otherwise, the Petition for Cancellation must be filed within five (5) years from the date of registration.
When should the Answer to the opposition or petition for cancellation be filed?
The respondent to an opposition or petition for cancellation case must file a Verified Answer within 30 days from receipt of a copy of the Notice to Answer. The respondent may file three (3) motions of thirty (30) days each to move the filing deadline based on meritorious grounds. In no case however, should the filing of the Verified Answer be done beyond one hundred and twenty (120) days from the respondent’s receipt of the Notice to Answer.
What is the effect of failure to file the Verified Answer or if it is filed out of time?
If the Verified Answer is not filed or if one is filed out of time, the respondent will be declared in default and the Petition for Cancellation or Opposition will be decided based on petitioner’s or opposer’s evidence only.
The following shall also be considered as failure to file the Verified Answer:
(a) The answer is not verified; and/ or the verification lacks proof of authority of the signatory therein if signed by a representative or counsel;
(b) The verification and/or proof of authority to sign the verification, if one or both executed abroad, lacks proof of authentication by the appropriate Philippine diplomatic or consular office; and
(c) The respondent fails to comply with the Bureau’s order to cure defects such as:
i. Non-payment of filing fees;
ii. Failure to attach the originals of the verification, Special Power of Attorney of representatives who signed the pleadings, the verification and the certification of non-forum shopping; the proof of authority to issue or execute the Special Power of Attorney; and
iii. Proof of authentication by the appropriate Philippine diplomatic or consular office, for the foregoing documents executed abroad.
Is mediation mandatory?
All Inter Partes cases is required to be referred to the Alternative Dispute Resolution Office or Mediation Office. Attendance at the first mediation hearing is mandatory.
What is the quantum of evidence required in Inter Partes cases?
Inter Partes cases are administrative proceedings, hence, the quantum of evidence required is substantial evidence. The Bureau of Legal Affairs decides cases on the basis of the pleadings, the records and the evidence submitted, and if appropriate, on matters which may be taken up by judicial notice.
Is the decision of the Hearing/ Adjudication Officer of the Bureau of Legal Affairs appealable?
The decision of the Adjudication or Hearing Officer of the Bureau of Legal Affairs may be appealed to Director of the Bureau of Legal Affairs within ten (10) days from the receipt of the decision.
The Decision of the Director of the Bureau of Legal Affairs may be appealed to the Director General of the Intellectual Property Office within thirty (30) days. The decision of the Director General of the Intellectual Property Office may be appealed further to the Court of Appeals and the decision of the Court of Appeals may be appealed, in turn, to the Supreme Court.
Are damages, legal costs and fees awarded in decisions in Inter Partes cases?
There are no monetary awards for damages, legal costs and fees in decisions in Inter Partes cases.