Author: Andre Betita

DAU Upon Renewal is Now Required

The Philippine Intellectual Property Office recently issued the amended Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2017. One of the new the requirements of the amended regulation is the filing of a declaration of use within 1 year from the date of renewal of a trademark. The requirement applies to all renewal applications due on or after 1 January 2017, even if the mark has been renewed prior to the effectivity of the new regulation on 1 August 2017. The requirement applies to International Registrations designating the Philippines. 

Exceptions to the IPOPHL Increase in Fees

Increased official fees will take effect on 1 January 2017, subject to the following exceptions:
 
(1) All Statements of Account (SOAs) issued in 2016 based on the old rates may be paid within the period of validity of the SOA even if the actual payment is made in 2017, provided the SOA remains valid on the date of payment;
 
(2) Where an extension of time to pay was granted in 2016 and the new due date falls in 2017, such payment will be based on the old fee structure and any SOA to be issued pursuant to such extension will be based on the old rates;
 
(3) Payments that are due on days when IPOPHL is closed (from 24 December 2016 to 2 January 2017) will be accepted on 3-6 January 2017, and any SOA issued or to be issued will follow the old fee structure.

IPOPHL to Amend IP Code

The Philippine Trademark Office is in the process of drafting amendments to the Intellectual Property Code of the Philippines. Our Firm’s partner, Joseph Sarmiento, is working closely with the International Trademarks Association (INTA) through his INTA Committee to implement much needed changes to make Philippine trademarks practices in tune with the times.

Among the amendments that will be proposed is the deletion of the requirement that an application that claims priority from a foreign registration should be registered in the country of origin first. This has been the bane of foreign applicants as this requirement is an unusual requirement that does not conform with the Paris Convention. Further, as Philippine trademark applications are now examined with relative dispatch (within a month or 2 from filing), a trademark application that claims priority from a foreign application is at a disadvantage as it will have to wait for the priority application to mature to registration first (which can take years in some countries).

Amended Inter Partes Rules: The Salient Points

Here are some of the salient points of the amended rules on Inter Partes  Proceedings.

1. The period to file a notice of opposition and answer has been extended from 90 days to 120 days, restoring the original period under the previous Inter Partes rules.

2. For opposition documents executed abroad, authentication may be secured after filing of the opposition case provided that the execution of the opposition documents is prior to such filing and that proof of authentication is submitted prior to the issuance of default order or conduct of preliminary conference.  Notably, there appears to be no similar provision in respect of authentication of answers.  Thus, it apppears that authentication of answers must still be done before their filing.

2. The Hearing/Adjudication Officers is now authorized to issue and sign decisions and final orders.  Previously, this authority was reserved only to the Director of Bureau of Legal Affairs and the Committee of Three (in petitions to cancel patents).

3. The decisions or final orders in Inter Partes cases must now be issued within 60 days from the date the case is deemed submitted for resolution.

4. The appeal to decisions or final orders issued by Hearing/Adjudication Officers must be filed with the Director of the Bureau of Legal Affairs prior to the appeal with the Director General of the IPO.  This adds another layer to the appeals process.  

May the real John Lloyd please stand up?

An applicant trying to appropriate the mark “JOHN LLOYD” was successfully opposed by John Lloyd Cruz himself. The Bureau of Legal Affairs rightfully sustained the opposition filed by the real John Lloyd as the mark consists of the name of a living individual. While the applicant did not include the family name “Cruz”, The BLA held that the prohibition of the law does not require that the full name be used. It is enough that the name used clearly refers to such individual. In this case, “JOHN LLOYD” identifies a specific living individual who is so well known that a connection between the applicant and the real John Lloyd would be assumed. 

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