PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Maria Patricia Cruz and Kyle Gino Salazar, Villaraza & Angangco
The registrant may also voluntarily cancel their own trade mark registration by filing a verified petition with the Bureau of Trademarks (BOT). No specific grounds must be raised. Opponents in opposition or cancellation pro - ceedings, including foreign parties, must be represented by a licensed attorney. The estimated government fee for opposition is USD400, with attorney fees estimated to be around USD15,000. For copyright, the certificate may be cancelled by the BCRR Director upon a written request by an interested party and payment of a fee equiva - lent to the application fee, based on the follow - ing grounds: • a final court decision; • a final order from the Bureau of Legal Affairs (BLA) in a copyright infringement case; or • a recordation of assignment or transfer of copyright. 5.4 Opposition or Revocation/ Cancellation Procedure Both opposition and cancellation proceedings are administrative and are brought before the BLA. However, in any action involving a regis - tered mark, including civil or criminal infringe - ment actions before the courts, the relevant adjudication body also has jurisdiction to deter - mine the right of registration, order the cancella - tion of a registration, and rectify the Trademarks 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 proceeds 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 termi- nation of the hearings, but the case shall be deemed submitted for decision upon the lapse of the period provided. The BLA Adjudication Officer generally issues a decision within 20 cal - endar days, and no motion for reconsideration shall be allowed. Partial Revocation/Cancellation 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 avail - able only where specific goods/services and/or classes are problematic while the rest are unaf - fected 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 registrability 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 submit an appeal brief within two months from the filing of the Notice. Decisions of a BLA Adjudication Officer in an opposition/cancellation case may be appealed to the Director of Legal Affairs by filing an Appeal Memorandum within 15 days from receipt, extendible by 15 additional days. No motion for reconsideration of the decision of the Director is allowed. The decision of the Director of Trademarks and Director of Legal Affairs may be appealed to the
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