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To Chow Is To Eat

The Bureau of Legal Affairs of the Intellectual Property Office, in its Decision No. 2016-109, explained that although the word “CHOW” was originally considered as descriptive, the doctrine of secondary meaning applies as evidence shows that the CHOW mark has been used by and closely associated with Nestle for animal food in the Philippines. Hence, if some other party will appropriate the word “CHOW” for its marks covering animal food products, it is highly likely that consumers will be misled to believe that the goods came from the same source. 
As explained by The Supreme Court in the earlier case of Philippine Nut Industry, Inc. vs. Standard Brands Incorporated (G.R. No. L-23035), this doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market; might nevertheless have been used so long and so exclusively by one producer with reference to his article that in that trade and to that branch of the purchasing public, the word or phrase has come to mean that the article was his product.  This doctrine is found in Sec. 4 (f), Chapter II-A of the Trade-Mark Law and subsequently adopted in Section 123.2 of the IP Code of the Philippines. 

Advertising Services in Class 35

It has recently been the policy of the Intellectual Property Office (IPO) to issue office actions against trademark applications/registrations covering Class 35 clarifying whether the applicant or registrant is an advertising agency. The IPO has apparently taken the position that advertising in Class 35 is limited to advertising for others, such as an advertising agency. This sudden change in policy has resulted in the issuance of office actions even on existing registrations during the renewal process or when declarations of use are filed.  If one is not an advertising agency, the IPO will require the deletion of “advertising services” from the specification of services in Class 35. If you have similar issues, do not hesitate to contact us. 

Proposed Amendments to Inter Partes Rules

The Intellectual Property of the Philippines has issued its proposed revisions to the rules governinig inter partes cases. Most of the proposed changes appear to be beneficial to foreign trademark owners, as follows:
1. Under current inter partes regulations, the maximum deadline to file an opposition is 90 days from the time the mark being opposed is published. In the proposed revision, an additional 30 days is given on “compelling grounds”. 
2. As Philippine inter pares rules require authentication of notarised opposition documents (e.g., notice of opposition, affidavit of witnesses, power of attorney) before the Philippine consulate, the proposed revisions now appear to allow the submission of mere notarised documents as the “authentication may be secured after the filing of the case provided that the execution of the documents aforementioned are done prior to such filing and provided further, that the authentication must be submitted before the issuance of the order of default or conduct of the preliminary conference under Section 13 of this Rule.” This will give foreign opposers more time to obtain the authentication of the required documents.
The proposed revisions, however, add another layer in the appeals process. Under current regulations, it is the Director of the Bureau of Legal Affairs that issues decisions in inter partes cases, and then the decision is appealable to the Director General of the Philippine Intellectual Property Office. The proposed revision will give the hearing/adjudication officers the authority to issue the decisions. Their decisions may then be appealed to the Director of the Bureau of Legal Affairs. The decision of the Bureau of Legal Affairs may then subsequently be appealed to the Director General.