INTER-PARTES PROCEEDINGS

Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after publication of the mark in the IPOPHL eGazette, file with the Bureau of Legal Affairs an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language.

1) Filing of Verified Notice of Opposition – within 30 days from publication date

2) Issuance of Notice to Answer by IPOPHL – within approximately 30 days from filing the Verified Opposition, which will require the filing of a  Verified Answer

3)  Filing of Verified Answer – within 30 days from date of receipt of the Notice to Answer

4) Referral to Mediation by IPOPHL – within 30 to 60 days from filing the Verified Answer, a Notice of Mediation shall be issued referring the case to mediation, and scheduling a mediation conference

5) Mediation Conference –   The parties are required to undergo mediation for purpose of discussing the possibility of entering into a compromise settlement. If mediation fails, mediation shall be terminated and the case shall be set for preliminary conference.

6) Preliminary Conference – The parties shall be required to present originals of documents attached to the Opposition/Answer for purpose of comparison, to stipulate on facts, limit the issues, and consider the possibility of a settlement. If no settlement is reached, the parties shall be required to submit Position Papers.

7) Submission of Position Papers – within 10 days from the termination of the Preliminary Conference

8) Issuance of Decision – within 6 months to 18 months from submission of Position Papers

Appeal Process: Decision may be appealed to the Director of the Bureau of Legal Affairs, which decision may then appealed the Director of the IPOPHL, the Court of Appeals and finally the Supreme Court.

A petition to cancel the registration of a mark under 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, as follows:

(a) Within five (5) years from the date of the registration of the mark;

(b) At any time –

(i) if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered,

(ii) if the registered mark has been abandoned;

(iii) if its registration was obtained fraudulently or contrary to the provisions of the IP Code;

(iv) 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.

(v) 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.

1) Filing of Verified Petition for Cancellation 

2) Issuance of Notice to Answer by IPOPHL – within approximately 30 days from filing the Verified Petition, which will require the filing of a  Verified Answer

3)  Filing of Verified Answer – within 30 days from date of receipt of the Notice to Answer

4) Referral to Mediation by IPOPHL – within 30 to 60 days from filing the Verified Answer, a Notice of Mediation shall be issued referring the case to mediation, and scheduling a mediation conference

5) Mediation Conference –   The parties are required to undergo mediation for purpose of discussing the possibility of entering into a compromise settlement. If mediation fails, mediation shall be terminated and the case shall be set for preliminary conference.

6) Preliminary Conference – The parties shall be required to present originals of documents attached to the Opposition/Answer for purpose of comparison, to stipulate on facts, limit the issues, and consider the possibility of a settlement. If no settlement is reached, the parties shall be required to submit Position Papers.

7) Submission of Position Papers – within 10 days from the termination of the Preliminary Conference

8) Issuance of Decision – within 6 months to 18 months from submission of Position Papers

Appeal Process: Decision may be appealed to the Director of the Bureau of Legal Affairs, which decision may then appealed the Director of the IPOPHL, the Court of Appeals and finally the Supreme Court.