Chapter 3: Registration Disputes

CHAPTER 3: REGISTRATION DISPUTES

1) Opposition (134) a) Who may file: any person who believes he would be damaged by the registration of the mark b) Requisites for filing: i) Payment of fee ii) W/in 30d after publication (1) EXTENDIBLE (a) Grounds: (i) Good cause (ii) Surcharge payment (b) Who extends: Dir. Of Legal Affairs (c) Duty: (i) Notify applicant (ii) Fix maximum period 2) Notice and Hearing (135) a) When notice given: upon filing of opposition b) Contents: i) Notice of filing opposition ii) Hearing date c) To whom given: i) Applicant ii) Oppositor iii) Others with RTI (right, title, interest in mark)

CHAPTER 4: CERTIFICATE OF REGISTRATION I. ISSUANCE

1) Issuance of certificate (136) a) When: i) Either-(1) After expiration of period for filing opposition, or (2) Denial of opposition by the Dir. Of Legal Affairs, and ii) Payment of the required fee. b) Publication requirement: [sic] upon issuance, notice thereof making reference to the publication of the application shall be ublished in the IP Gazette 2) Registration of Mark and Issuance of a Certificate to the Owner/Assignee (137)

Register must be maintained by the Office, containing: i) Registered marks, numbered in order of their registration, and ii) All transactions with respect to each mark. iii) It must record changes of address/service address (1) Notice required - must be sent by Registered owner b) Communications to registered owner i) Where sent: last recorded address/last recorded address for service c) Mistakes, correction i) Made by the office (142) (1) To what applicable: (a) Material mistakes in the registration, (b) Through the Office's fault, (c) Clearly disclosed by the records of the Office (2) What done by the office: (a) Issue a certificate stating the mistake, (i) Stating the fact and nature of the mistake, w/o charge; (ii) Record it; (iii) Print a copy and attach it to each printed copy of the registration (it will have the same effect as the original certificate); or (b) A new certificate of registration, w/o charge. ii) Made by applicant (143) (1) When correction allowed: (a) Mistake in GF not involving a change that would require a republication of the mark (b) Through applicant's fault, (c) After payment of the prescribed fee, and 3) Certificate of registration a) Contents of registration: i) Reproduction of mark; ii) Its number;

a)

KIM G. ESPINA

Chapter 4: Certificate of Registration

iii) Registered owner's name, address (and address for service w/in country, if his address is outside the country); iv) Dates - application, registration; v) WON priority is claimed, and the NDC (number, date, country) of the application basis of the priority claims; vi) List of GS (goods, services) for which registration has been granted, plus their classes; vii) Other data as regulations may prescribe from time to time. b) To whom certificate of registration issued: i) Owner, or ii) His assignee. (1) Assignment must be recorded with the office. iii) In case of ownership change: written request must be made before issue of new certificate, effective for the unexpired part of the original period. (1) Signed by (a) Owner or rep, and (b) NEw owner or rep, and (2) Payment of the prescribed fee c) Effect of certificate (138): prima facie evidence of i) Registration validity, ii) Registrant's ownership of the mark, iii) His exclusive right to use it with respect to GS and those related thereto as specified in the certificate. d) Duration (145) i) Period: 10 years ii) Declaration of actual use + evidence: filed w/in 1 year from 5th anniversary of registration date (1) If not possible, must show valid reasons for existence of obstacles to use (2) Effect of failure to file:mark removed from the register 4) Publication of registered marks (139) a) Format, period: i) As fixed in regulations ii) In the order of their registration iii) With the particulars in 137

b) Inspection: (includes both certificates and other transactions) i) Anyone may inspect ii) Anyone may obtain copies, at his own expense c) Copies as evidence (141) i) What covered: (1) RBPD copies (records, books, papers, drawings) belonging to the office relating to marks, and (2) Copies of registrations ii) Requirement for use as evidence: (1) Authentication - seal of the office (2) Certification - by the DAFHRDSB (Director of Admin, Financial, and HR Devt Service Bureau), or in his name by an authorized EE iii) Allowed use: evidence in cases wherein the originals would be evidence iv) To whom available: anyone who APPLIES and PAYS the fees for the copies 5) Cancellation of application (140) a) Surrender for cancellation i) Application by registrant, and ii) Entry made in the records. b) Amendment or disclaimer of application i) How done: (1) Application, and (2) Payment of the prescribed fee, then (3) Entry made in the records of the office ii) Limit on AD: (1) Must not materially alter the character of the mark c) Recording of cancellation, amendment, disclaimer: i) Must be made on the certificate of registration, or ii) On a certified copy, if it is LD (lost, destroyed)

II. RIGHTS CONFERRED (14 7)

1) To prevent third parties from using it a) Those w/o owner's consent, b) In the course of trade,

KIM G. ESPINA

Chapter 4: Certificate of Registration

IS SC (identical or similar signs or containers) d) For GS IS (identical, similar) to the mark, e) Where such use would result in a likelihood of confusion. 2) For owners of well-known marks (123.1e) registered in the PH a) To: GS not similar b) Where: i) It would indicate a connection between those GS and the owner of the mark, and ii) Interests of said owner are likely to be damaged by such use. 3) H/e, he can't prevent use for "purposes other than those for which the mark is used" (WOW HELPFUL) a) Such as: bona fide use of i) Names, ii) Addresses, iii) Pseudonyms, iv) Geographical names, v) Exact indications of KQQDOPS GS (kind, quality, quantity, destination, origin, production time, supply) of goods, services b) Used for i) Mere identification or information, and ii) Cannot mislead the public as to the GS source.

c)

e) If with a representative, his name and address; f) Names of recorded GS for which renewal is requested and those for which renewal is not requested, grouped according to the Nice Classification and presented in that order; g) Signature of the right holder/rep. 5) Refusal to renew a) Notice must be sent, stating the refusal + reasons 6) Applicants domiciled elsewhere: still covered by this act

IV. ASSIGNMENT AND TRANSFER OF REGISTRATION (149)

1) Business ownership: Need not be accompanied by the transfer of the business using the mark. 2) When not allowed null and void): if liable to mislead the public as to the SPCS (source, process, characteristics, suitability for purpose) of the GS 3) Form: a) In writing, b) Signed by the contracting parties. c) In case of mergers/other forms of succession: may be made by any document supporting the transfer 4) Recording: done after payment of the fee; in case of assignments/transfers, they will be provisionally recorded on payment of the same fee (????). No effect against third persons if not recorded.

III. RENEWAL
1) Length of renewal: 10 years 2) How renewed: a) File request, and b) Pay fee. 3) Request a) Language: Filipino or English b) When filed: i) W/in 6 months before expiration of registration, of ii) W/in 6 months after, with payment of an additional fee 4) Indications required: a) That renewal is sought; b) Registrant/successor's name, address; c) Registration number; d) Filing date of original application;

V. LICENSING
1) What it must provide for (150): effective quality control by the licensor of the quality of G/S of the licensee in connection with which the mark is used a) Effect if not effectively carried out: contract not valid 2) Requirements for validity against 3p: recording with the Office a) The office will publish a reference thereto but shall keep the contents confidential.

KIM G. ESPINA

Chapter 4: Certificate of Registration

VII. CANCELLATION OF REGISTRATION

1) Who initiates petition: any person who believes that he is or will be damaged by the registration of a mark under this act (actual or prospective damage) 2) Period w/in which to initiate petition: a) 5y from registration, or b) Any time, if the mark i) Becomes the generic name for the G/S/portion thereof for which it has been registered, or (1) What must be subject of petition for cancellation: If it becomes the generic name for only some of the G/S, then a petition to cancel registration for such G/S may be filed. (2) Test in determining WON it has become a generic name: the marks primary significance fo the relevant public, not just the fact that its being used to identify a unique G/S ii) Has been abandoned, or iii) Registration was obtained: (1) Fraudulently, or (2) Contrary to the provisions of this act, or iv) Is being used by/with the permission of the registrant as to misrepresent the G/S or in connection with w/c the mark is used v) Failure of the registered owner, w/o legitimate reason, to use the mark/cause it to be used in the PH by virtue of a license for an uninterrupted period of 3 years or longer. (1) When non-use excused: (152) (a) Caused by circs arising independently of the trademark-owners will (except: lack of $$$) (b) Use in a form different from the form in which it is registered, when it does not alter the marks distinctive character

(c) Use in connection with one/more of the G/S belonging to the same class (in this case, it is considered use for all other G/S in that same class) (d) Use by a related company, in such a manner as to not deceive the public + controlled with respect to the NQ (nature and quality) of the G/S 3) Where to initiate petition: a) Court, or b) Administrative agency. 4) Effects of initiating petition: a) Filing in either ^ precludes the other from taking cognizance of the case. b) The earlier filing of petition to cancel with the Bureau of Legal Affairs - not a prejudicial question before an action to enforce rights may be decided 5) Requirements of petition; notice and hearing: same as 134-5 a) Petition for cancellation (134) i) Who may file: any person who believes he would be damaged by the registration of the mark ii) Requisites for filing: (1) Payment of fee (2) W/in 30d after publication (a) EXTENDIBLE (i) Grounds: 1. Good cause 2. Surcharge payment (ii) Who extends: Dir. Of Legal Affairs (iii) Duty: 1. Notify applicant 2. Fix maximum period b) Notice and Hearing (135) i) When notice given: upon filing of opposition ii) Contents: (1) Notice of filing opposition (2) Hearing date iii) To whom given: (1) Applicant

KIM G. ESPINA

Chapter 4: Certificate of Registration

(2) Oppositor (3) Others with RTI (right, title, interest in mark) 6) Cancellation of registration, effects (154) a) BLA orders cancellation of registration b) Rights conferred by registration terminate when the judgment becomes final c) Notice must be published in the IPO Gazette

VIII. VIOLATIONS; RE MEDIES

1) Who may sue a) A person with reciprocity rights, WON the mark is registered and WON he is licensed to do business in the PH (160) i) What actions allowed: for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description 2) Penal clause independent of civil and administrative sanctions (for 155 infringement, 168 unfair competition, and 169.1 false descriptions) a) 2 to 5 years b) 50 to 200k 3) Prohibited acts a) Infringement (155) any of the ff acts done w/o the mark owners consent: i) Use in commerce of any RCCCI (reproduction, counterfeit, copy, colorable imitation) (1) What: (a) Mark (b) Same container (c) Dominant feature (2) When: sale or other preparatory steps to carry it out (actual sale NOT NEEDED) (3) In what matter: Likely to cause CMD (confusion, mistake, deception) (a) Requirement: Defendant must have knowledge that it is likely to cause CMD (b) What constitutes notice: presumed if

(i) Mark is accompanied by the words Registered Mark (ii) Or , or (iii) Defendant o/w had actual notice of the registration. (158) ii) Same, but for use in LSPPWRA (labels, signs, prints, packages, wrappers, receptacles, ads) to be used in connection with selling the G/S b) False/fraudulent declaration i) Who may be sued anyone procuring a registration through FFD orally or in writing or by any other false means ii) Who may sue: any person injured thereby iii) For what: damages sustained in consequence thereof. (162) c) Use of trade names (165) i) What not allowed as trade/business names: (1) V. public order/morals, or (2) Those liable to deceive trade circles/the public as to the enterprises nature ii) Is registration required for protection? NO. iii) What acts deemed unlawful: (1) Subsequent use, whether as a trade name, mark, or collective mark, or (2) Any such use likely to mislead the public iv) Change of ownership: must be made with a transfer of the business. Registration requirements apply. v) The ff provisions also apply: (1) 153 (petition for cancellation notice and hearing requirements) (2) 154 (effects of cancellation of registration) (3) 155 (infringement) (4) 166 (5) 167

KIM G. ESPINA

Chapter 4: Certificate of Registration

d) Admission of goods bearing infringing marks/trade names in any PH customshouse (166) i) Any person entitled to the benefits of this act may require that his and his products information be stored in the BOC. e) Unfair competition (168) i) What is unfair competition: passing off products/services which the public has already associated with another as ones own (GOODWILL!), WON a registered mark is being used, through deception or any other means contrary to good faith ii) What covered: (1) Giving ones goods the appearance that would likely deceive the buyer into believing it was made by another manufacturer/dealer, any subsequent vendor or agent with a similar purpose; (2) Using means calculated to induce the false belief that one is offering G/S already associated with another; or (3) False statements in the course of trade/calculated to discredit another. iii) Remedies: (1) 156 (impounding, injunction, damages) (2) 157 (destruction of infringing material) (3) 161 (rectification of register) f) False descriptions/declarations of origin (169) i) Including: ads ii) What liable for: (1) Damages, injunction (156, 157) (2) Prohibited from being imported into the PH and entering customshouses iii) Who may sue: any person who believes that he or she is or is likely to be damaged by such act 4) Limitations on actions for infringement

Not applicable to those using the mark in good faith before the filing/priority date i) However, in his case, the right to use must be transferred together with the business or the part of it which uses the mark b) For innocent infringers engaged solely in printing the marks the right owner can only sue for injunction c) For infringements by innocent infringers (publishers/distributors) in printed/electronic periodicals action limited to injunctions against future printing i) However, this cant be done if it would delay the periodicals delivery/transmission as it is customarily done and not due to any methods adopted to evade this provision 5) Remedies (156) a) Impounding documents evidencing sale i) When: during the pendency of the action b) Injunction c) Damages i) Who may recover: owner of a registered mark ii) Amount: (1) Reasonable profit which the complainant wouldve made had the defendant not infringed his rights, or (2) The profit the defendant actually made out of the infringement, or (3) If (ii) cant be ascertained with reasonable certainty, then a reasonable percentage based upon (a) Defendants gross sales, or (b) Value of the services in question. (4) Or double the damages (at the courts discretion), in case there is actual intent to (a) Mislead the public, or (b) Defraud the complainant. d) Destruction of infringing material (157) i) When: after violation established

a)

KIM G. ESPINA

Chapter 4: Certificate of Registration

In what manner: as to avoid any harm to the rights holder iii) What destroyed: LSPPWRA (labels, signs, prints, packages, wrappers, receptacles, ads) bearing the mark, including all plates, molds, etc. (1) For counterfeit goods, simple removal of the marks will not be sufficient for the release of goods into the channels of commerce, except in exceptional circumstances. 6) Court actions in cases involving registered marks (161) a) Right to registration b) Cancellation (whole/part), if proper c) Rectify register (actions certified by court to the director, who shall make the appropriate record entries) 7) Notices by clerks of court (164) a) After the filing of the action i) When: w/in 1 month after filing a suit, action, proceeding involving a registered mark ii) Contents: (1) N/A of litigants (2) Registration number/s b) After judgment is entered/appeal taken i) When: w/in 1 month after

ii)

c)

IT CANNOT BE SUBJECT OF A LICENSE CONTRACT!

IX. COLLECTIVE MARKS

1) What rules apply: 122-164 and 166 2) Specific rules: a) The application must i) State that a collective mark is being registered, and ii) Be accompanied by the agreement governing its use, if any exists. The director shall be notified of changes to this agreement. b) Additional grounds for cancellation i) Only registered owner uses the mark ii) He uses/permits use in contravention of the use agreement, or iii) He uses/permits use in a manner liable to deceive the public/trade circles as to any characteristics (including origin) of the G/S

KIM G. ESPINA