Leo Singson joins BCCSLAW

We are pleased to announce that Leonardo Singson has joined our firm as Of Counsel for Special Corporate Transactions, Regulatory Compliance, and Immigration. Mr. Singson was formerly a Partner in the Corporate and Special Projects Department of Villaraza and Angangco. He obtained his law degree from the University of the Philippines.

COVID-19 corporate report submission guidelines

The Securities and Exchange Commission has issued a summary of guidelines on the filing of reports and other documents during the enhanced community quarantine that has been imposed over Luzon and other regions in the Philippines due to the COVID-19 pandemic. A copy of the issuance can be downloaded here: SEC COVID guidelines

Cancelled Events

Due to concerns relating to COVID-19, some conferences that we intended to attend, including the ICANN Community Forum in Cancun, the ASEAN IPA meeting in Jakarta, and the INTA annual meeting in Singapore, have been cancelled or postponed. Please visit our events calendar for updates on our attendance during upcoming conferences.

Beneficial Owner of the Corporation: He Who Shall Be Named

Beginning 31 July 2019, all General Information Sheet (GIS) due for submission by corporations shall include a Beneficial Ownership Declaration in the form prescribed by SEC Memorandum Circular No. 15-2019.

Corporations are now required to disclose in the Declaration the beneficial owner/s of their corporate shareholders. Previously, corporations were only required to disclose their direct shareholders regardless of whether or not these consisted of natural or corporate persons.

A “beneficial owner” is defined under the SEC Circular as the NATURAL PERSON/S who ultimately own/s or control/s, or exercise/s ultimate effective control over the corporation. 

The Circular also provides for categories of beneficial owners arranged in order of priority for determining the beneficial owners of corporations.  At the top of the list are the beneficial owners who directly and/or indirectly own at least twenty-five percent (25%) of the shares in the corporation. For corporations with multiple layers of corporate shareholders, this will entail tracing both the direct and indirect ownership of shares.  If the beneficial owners cannot be determined based on the first category, the next category will apply and so forth. 

Only after exhausting all the categories can the members of the board of directors or trustees be declared as the beneficial owners of the corporation.

Non-compliance with the beneficial ownership disclosure rules will expose not only the reporting corporation but also the directors or trustees to liability.

INTA Committee Membership

We are pleased to announce that the partners of our firm have been appointed to various committees of the International Trademark Association (INTA). Their committee memberships are as follows:

Andre Betita– Famous and Well-Known Marks

John Cabilao– Right of Publicity

Pericles Casuela– Data Protection

Joseph Sarmiento– Designs

Their appointments are effective beginning January 1, 2020, and will conclude on December 31, 2021.

Registration of Data Processing Systems (NPC Circular 17-01)

The National Privacy Commission recently issued NPC Circular 17-01 on the registration of data processing systems and notifications regarding automated decision-making.

Under the Circular, covered Personal Information Controllers and Personal Information Processors should complete Phase 1 of the process for the registration of data processing systems by September 9, 2017 and Phase 2 by March 8, 2018.

A copy of the circular can be downloaded here.

Seminars

Oops!

Our webmaster made a mistake and thought that we were serious about conducting seminars. It’s a bad idea, don’t you think? We bill you for practical advice that we will then give away for free in a seminar? Not fair.

We value our relationship with you and we do our best to keep our tools sharp, through actual experience, to help you traverse the complexities of the issues on which you come to us for advice. 

Thanks to the following (of course, among other things), you continue to regard us as your trusted advisor:

  • Our local trademark registration practice is growing at an amazing pace.  We now handle a portfolio of more than 2,200 trademarks, as shown in the records of the Philippine Intellectual Property Office. http://www.wipo.int/branddb/ph/en/
  • Privacy law is not an academic matter for us. We are regularly consulted to address real-life situations and have dealt with the regulators.
  • Like our trademark registration practice, our patent registration and litigation practice is also growing. More than 70 multinational patent holders in the pharmaceutical, biosciences, automotive, manufacturing, equipment testing and gaming industries have entrusted the protection of their innovations to our firm.
  • We embrace and enjoy the convenience of online commerce, online media and online financial transactions. That is why we are comfortable acting for the major players on the planet, including the biggest one, on matters ranging from intellectual property to licensing, privacy, e-commerce and telecommunications. We walk the talk and do our best to be like them. As a matter of fact, this site was designed, created, coded and continues to be managed by one of our firm’s founding partners.
  • Telecommunications- read about us in the papers when the next huge deal rolls out.
  • We have friends- intelligent ones.  We keep a network of correspondents worldwide with whom we have developed a strong sense of community, professionalism and competence.  That ensures that you get the correct advice from competent counsel overseas. 

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. 

Andre is my Valentino…

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”. 

Wine Not?

A local company applied for the mark “Champagne Bubbly” for non-wine goods – specifically, for perfume and other bath and personal care products. This encountered an opposition primarily hinged on “champagne” being supposedly only used for sparkling wine wholly produced from Champagne, France.
 
 
The Intellectual Property Office (IPO) took the contrary position and maintained that “Champagne Bubbly” is eligible for registration. While it is a fact that “champagne” is a controlled appellation of origin, wine is unrelated to and cannot in any way be confused with the products on which Applicant intends to use the contested mark. The decision discussed the basics of trademarks laws: that trademark laws were born out of the need to point out the origin and ownership of goods. The IPO mentioned that without a doubt, the Champagne region is known for its wine and not for perfume and other bath and personal care products. Ergo, there can be no confusion as to origin. 
 
Should the IPO have considered dilution? 
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Contact Us

Betita Cabilao Casuela Sarmiento
Suite 1104, Page One Building
1215 Acacia Avenue
Madrigal Business Park, Ayala Alabang
Muntinlupa City 1780
Metro Manila, Philippines

Tel No. +63 2 8555 1750
Email: info@bccslaw.com