PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Maria Patricia Cruz and Kyle Gino Salazar, Villaraza & Angangco
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 peti - tion 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 materi - ally 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 infor - mation. 5.7 Combining Revocation/Cancellation and Infringement A cancellation action and an infringement action are independent proceedings. A pending can - cellation case is not a prejudicial question for an infringement action but a defendant is pro - hibited from filing a cancellation 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 reg -
istered, will not ripen into ownership nor confer rights on the registrant. The main remedy is to oppose the application or cancel the registration based on bad faith. It can also be raised in an infringement or unfair com - petition case with a plea to cancel the fraudulent registration. Nonetheless, during examination of an applica - tion, the examiner can require the applicant 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 examiner 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 exami - nation of their own application pending the filing and resolution of an opposition or cancellation case against the fraudulent cited mark. 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions Trade Mark Assignment 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 authen - ticated or apostilled. To ensure enforceability against third parties, the assignment must be recorded with the BOT. Trade mark rights may pass to heirs through succession. For enforceability, the transfer as evidenced by supporting documents should
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