PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
5.4 Opposition or Revocation/Cancellation Procedure Both opposition and cancellation proceedings are administrative and are brought before the BLA. How - ever, in any action involving a registered mark, includ - ing civil or criminal infringement actions before the courts, the relevant adjudication body also has juris - diction to determine the right of registration, order the cancellation of a registration, and rectify the Trade - marks Register. Opposition/Cancellation Procedure Both opposition and cancellation cases begin with the filing of a verified initiatory pleading and supporting evidence. If the pleadings are complete, the BLA will issue a Notice to Answer. If answered, the case pro - ceeds to mandatory mediation for a period of 60 days. If mediation fails, the case returns to adjudication, where hearings are held. The parties’ position papers must be submitted within ten days from termination of the hearings, but the case shall be deemed sub - mitted for decision upon the lapse of the period pro - vided. The BLA Adjudication Officer generally issues a decision within 20 calendar days, and no motion for Where the ground for cancellation is that the mark has become generic, a petition can be filed to cancel the registration for specific goods or services. Partial cancellation is generally available only where specific goods/services and/or classes are problematic while the rest are unaffected by the alleged infirmity. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Decisions of a trade mark examiner relating to the reg - istrability of a mark may be appealed to the Director of Trademarks by filing a notice of appeal within two months from the mailing date of the Notice of Refusal, extendible by two months. The applicant must then submit an appeal brief within two months from the filing of the Notice. reconsideration shall be allowed. Partial Revocation/Cancellation Decisions of a BLA Adjudication Officer in an opposi - tion/cancellation case may be appealed to the Direc - tor of Legal Affairs by filing an Appeal Memorandum within 15 days from receipt, extendible by 15 days.
No motion for reconsideration of the decision of the Director is allowed. The decision of the Director of Trademarks and Direc - tor of Legal Affairs may be appealed to the ODG by filing an Appeal Memorandum within 30 days from notice, extendible by 15 days. The decision of the ODG may be appealed to the Court of Appeals by filing a petition for review under Rule 43 of the Rules of Court within 15 days from notice. The decision of the Court of Appeals may be appealed to the Supreme Court through a petition for review on certiorari under Rule 45 of the Rules of Court within 15 days from notice. 5.6 Amendment in Revocation/Cancellation Proceedings Trade mark registrations can be amended as part of a settlement agreement reached during mediation. However, changes should not materially alter the essential characteristics or identity of the mark, nor broaden the coverage of the mark beyond its original scope. The amended mark may be republished for the public’s information. 5.7 Combining Revocation/Cancellation and Infringement A cancellation action and an infringement action are independent proceedings. A pending cancellation case is not a prejudicial question for an infringement action but a defendant is prohibited from filing a can - cellation case if there is a pending infringement case. The defendant may instead raise the registration’s invalidity as a defence and plead for its cancellation in the infringement case. The adjudication body han - dling the infringement case also has jurisdiction to determine the validity of the registration of all parties involved in the action. 5.8 Measures to Address Fraud Applications filed with fraudulent intent will not be granted registration and, if erroneously registered, will not ripen into ownership nor confer rights on the registrant.
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