PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
The main remedy is to oppose the application or can - cel the registration based on bad faith. It can also be raised in an infringement or unfair competition case with a plea to cancel the fraudulent registration. Nonetheless, during examination, the applicant can be required to explain or submit favourable evidence if there is reason to doubt the veracity of any element, including ownership or origin of the mark. If the exam - iner is not satisfied with the applicant’s response, they can refuse the application. If the fraudulent mark was discovered because it was cited against the real owner of the mark, the owner can request the suspension of the examination of their own application pending the filing and resolution of an opposition or cancellation case against the fraudulent cited mark. The IPOPHL recognises the transfer only of pending trade mark applications and registered trade marks in the Philippines. The assignment must be in writing, signed by both parties, duly notarised and, if executed abroad, duly authenticated or apostilled. To ensure enforceability against third parties, the assignment must be recorded with the BOT. Trade mark rights may pass to heirs through succes - sion. For enforceability, the transfer as evidenced by supporting documents should be recorded with the BOT. A partial trade mark assignment involving the transfer of specific rights or interests in a trade mark is allowed. Copyright Assignment Copyright can be transferred, either entirely or par - tially, through a written agreement. Within the terms of the assignment, the assignee gains the same rights and legal remedies as the origi - nal copyright holder. However, granting certain rights does not equate to a full transfer of copyright. While 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark Assignment
the assignee obtains ownership of the rights granted, the original copyright owner retains any unassigned rights. To ensure proper documentation and to notify third parties, the assignment may be recorded with the BCRR. In the event of the copyright holder’s death, the heirs inherit both the moral and economic rights associated with the work, and may apply for the recordation of the transfer by succession. 6.2 Licensing Requirements or Restrictions Based on the Revised Voluntary Licensing Rules, IP rights transfers that do not involve the transfer of sys - tematic knowledge are not considered “transfer tech - nology arrangements” (TTAs) that must comply with Sections 87 (prohibited clauses) and 88 (mandatory provisions) of the IP Code for enforceability. There - fore, simple trade mark and copyright licences should not need to comply with the requirements for TTAs. Nonetheless, IPOPHL practice still requires that TLAs comply with Sections 87 and 88 of the IP Code to obtain the necessary clearance from the Documenta - tion, Information and Technology Transfer Bureau prior to recordal with the BOT. A trade mark licence involving a registered mark or an application therefor should be in writing, duly signed, notarised and, if appropriate, authenticated or apos - tilled. To be valid, it must provide for effective control by the licensor of the quality of goods and services of the licensee in connection with which the mark is used. It must be recorded with the BOT to affect third parties. Similarly, a copyright licence must be in writing. How - ever, recordal with the BCRR is merely optional and not mandatory for validity or enforceability, nor to affect third parties. In the Philippines, trade mark and copyright licences can be structured for extended periods, subject to the actual terms of protection granted by law. There is no express legal prohibition against creating per - petual licences. Parties are typically free to set the terms of the licence, whether exclusive, non-exclusive
398 CHAMBERS.COM
Powered by FlippingBook