And that is enough explanation to thwart an opposition (IPC No. 14-2011-00402) filed by Valentino S.P.A. according to the Bureau of Legal Affairs of the Intellectual Property Office. Valentino S.P.A., the owner of the VALENTINO mark, opposed an application for the mark “Andre Valentino”. According to the applicant, “Andre” was the name she used when she began her business and “Valentino” commemorates the day she began her business, I.e., Valentines Day. Never mind the fact that the mark completely appropriates the element “VALENTINO”. Assuming that the applicant came up with the mark in good faith, surely consumer confusion should be given more consideration becasue of the use of the name “VALENTINO”.
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).
The Bureau of Legal Affairs (BLA) has recently issued decisions that sustained oppositions on the basis of trade names or corporate names.
In the case of Aura Hotels and Resorts vs. Racher SNV Inc.
, the BLA sustained an opposition filed by Aura Hotels for the Racher’s trademark application for AURA covering hotels and restaurant services. In the case of MUHLE GMBH & CO. KG vs. Rishi N. Mirani
for the latter’s trademark application for MUHLE GLASSHUTE, the BLA sustained the opposition of MUHLE GMBH on the basis that its trade name had the word “MUHLE”, even if MUHLE GMBH was not able to prove that its mark was well known in the Philippines.
In both of these cases, it has to be noted that the applicants applied for the marks in question covering goods/services that are being offered or distributed by the opposers.
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.
The Intellectual Property Office has released the amendments to the Implementing Rules and Regulations on Inter Partes Proceedings (IPOPHL Memorandum Circular No. 16-007). The amendments took effect on 29 July 2016.
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.