ipl arts. 134 to 170

7/27/2019 IPL Arts. 134 to 170

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1Chapter 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 ofthe mark

b) Requisites for filing:i) Payment of feeii) W/in 30d after publication

(1) EXTENDIBLE(a) Grounds:

(i) Good cause(ii) Surcharge payment

(b) Who extends: Dir. Of LegalAffairs

(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 oppositionii) Hearing date

c) To whom given:i) Applicantii) Oppositoriii) 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 forfiling 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 aCertificate to the Owner/Assignee (137)

a) Register must be maintained by theOffice, containing:

i) Registered marks, numbered in orderof their registration, and

ii) All transactions with respect to eachmark.

iii) It must record changes ofaddress/service address

(1) Notice required - must be sentby Registered owner

b) Communications to registered owneri) Where sent: last recorded

address/last recorded address for

service

c) Mistakes, correctioni) 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 andnature 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 ofregistration, w/o charge.

ii) Made by applicant (143)(1) When correction allowed:

(a) Mistake in GF not involving achange that would require a

republication of the mark

(b) Through applicant's fault,(c) After payment of the

prescribed fee, and

3) Certificate of registrationa) Contents of registration:

i)

Reproduction of mark;ii) Its number;

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2Chapter 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 theapplication basis of the priority

claims;

vi) List of GS (goods, services) for whichregistration has been granted, plus

their classes;

vii) Other data as regulations mayprescribe from time to time.

b) To whom certificate of registrationissued:

i) Owner, orii) His assignee.

(1) Assignment must be recordedwith the office.

iii) In case of ownership change: writtenrequest 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 feec) Effect of certificate (138): prima facieevidence 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 yearsii) Declaration of actual use + evidence:

filed w/in 1 year from 5th anniversary

of registration date

(1) If not possible, must show validreasons for existence of

obstacles to use

(2) Effect of failure to file:markremoved from the register

4) Publication of registered marks (139)a) Format, period:

i) As fixed in regulationsii)

In the order of their registration

iii) With the particulars in 137

b) Inspection: (includes both certificates andother transactions)

i) Anyone may inspectii) 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 registrationsii) 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 caseswherein the originals would be

evidence

iv) To whom available: anyone whoAPPLIES and PAYS the fees for the

copies

5) Cancellation of application (140)a) Surrender for cancellation

i) Application by registrant, andii) Entry made in the records.b) Amendment or disclaimer of applicationi) How done:

(1) Application, and(2) Payment of the prescribed fee,

then

(3) Entry made in the records of theoffice

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 ofregistration, or

ii) On a certified copy, if it is LD (lost,destroyed)

II. RIGHTS CONFERRED (147)

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

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c) IS SC (identical or similar signs orcontainers)

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 similarb) Where:

i) It would indicate a connectionbetween those GS and the owner of

the mark, and

ii) Interests of said owner are likely tobe damaged by such use.

3) H/e, he can't prevent use for "purposes otherthan 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 theGS source.

III. RENEWAL

1) Length of renewal: 10 years2) How renewed:

a) File request, andb) Pay fee.

3) Requesta) Language: Filipino or Englishb) When filed:

i) W/in 6 months before expiration ofregistration, of

ii) W/in 6 months after, with paymentof 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;

e) If with a representative, his name andaddress;

f) Names of recorded GS for which renewalis requested and those for which renewal

is not requested, grouped according to

the Nice Classification and presented inthat 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 coveredby this act

IV. ASSIGNMENT AND TRANSFER OF

REGISTRATION (149)

1) Business ownership: Need not beaccompanied by the transfer of the business

using the mark.

2) When not allowed null and void): if liable tomislead 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; incase of assignments/transfers, they will be

provisionally recorded on payment of the

same fee (????). No effect against third

persons if not recorded.

V. LICENSING

1) What it must provide for (150): effectivequality 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 theretobut shall keep the contents confidential.

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VII. CANCELLATION OF REGISTRATION

1) Who initiates petition: any person whobelieves 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, orb) Any time, if the mark

i) Becomes the generic name for theG/S/portion thereof for which it has

been registered, or

(1) What must be subject of petitionfor 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 hasbecome 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, oriii) Registration was obtained:

(1) Fraudulently, or(2) Contrary to the provisions of this

act, or

iv) Is being used by/with the permissionof 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/olegitimate 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 fromthe form in which it is

registered, when it does not

alter the marks distinctivecharacter

(c) Use in connection withone/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, orb) 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 withthe 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 theregistration of the mark

ii) Requisites for filing:(1) Payment of fee(2) W/in 30d after publication

(a) EXTENDIBLE(i) Grounds:

1. Good cause2. Surcharge payment

(ii) Who extends: Dir. OfLegal Affairs

(iii) Duty:1. Notify applicant2. 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

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(2) Oppositor(3) Others with RTI (right, title,

interest in mark)

6) Cancellation of registration, effects (154)a) BLA orders cancellation of registrationb) Rights conferred by registration terminate

when the judgment becomesfinal

c) Notice must be published in the IPOGazette

VIII. VIOLATIONS; REMEDIES

1) Who may suea) 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 andadministrative sanctions (for 155

infringement, 168 unfair competition, and

169.1 false descriptions)

a) 2 to 5 yearsb) 50 to 200k

3)

Prohibited actsa) 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 preparatorysteps to carry it out (actual sale

NOT NEEDED)

(3) In what matter: Likely to causeCMD (confusion, mistake,

deception)

(a) Requirement: Defendantmust have knowledge that it

is likely to cause CMD

(b) What constitutes notice:presumed if

(i) Mark is accompanied bythe words Registered

Mark

(ii) Or , or(iii) Defendant o/w had

actual notice of theregistration. (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 declarationi) 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 injuredthereby

iii) For what: damages sustained inconsequence 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 natureii) 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 misleadthe public

iv) Change of ownership: must be madewith 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 ofregistration)

(3) 155 (infringement)(4) 166(5) 167

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d) Admission of goods bearing infringingmarks/trade names in any PH

customshouse (166)

i) Any person entitled to the benefits ofthis act may require that his and his

products information be stored inthe 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 inducethe 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 infringingmaterial)

(3) 161 (rectification of register)f) False descriptions/declarations of origin

(169)

i) Including: adsii) 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 whobelieves that he or she is or is likely

to be damaged by such act

4)

Limitations on actions for infringement

a) Not applicable to those using the mark ingood faith before the filing/priority date

i) However, in his case, the right to usemust be transferred together with

the business or the part of it which

uses the markb) 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 itwould 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 theaction

b) Injunctionc) Damages

i) Who may recover: owner of aregistered markii) Amount:

(1) Reasonable profit which thecomplainant wouldve made had

the defendant not infringed his

rights, or

(2) The profit the defendant actuallymade out of the infringement, or

(3) If (ii) cant be ascertained withreasonable 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 thecourts 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

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ii) In what manner: as to avoid anyharm 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 registeredmarks (161)

a) Right to registrationb) Cancellation (whole/part), if properc) 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 asuit, action, proceeding involving a

registered mark

ii) Contents:(1) N/A of litigants(2) Registration number/sb) After judgment is entered/appeal taken

i) When: w/in 1 month afterIX. COLLECTIVE MARKS

1) What rules apply: 122-164 and 1662) Specific rules:

a) The application musti) State that a collective mark is being

registered, and

ii) Be accompanied by the agreementgoverning its use, if any exists. The

director shall be notified of changes

to this agreement.

b) Additional grounds for cancellationi) Only registered owner uses the markii) He uses/permits use in contravention

of the use agreement, or

iii) He uses/permits use in a mannerliable to deceive the public/trade

circles as to any characteristics

(including origin) of the G/S

c) IT CANNOT BE SUBJECT OF A LICENSECONTRACT!

ipl arts. 134 to 170

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