The Title Says it All – “An Aerodynamic Fan Blade”

In Asahi Electrical Manufacturing Corp. vs. Reginald Joseph O. Chua, the Bureau of Legal Affairs (BLA) cancelled Chua’s certificate of industrial design. Among the grounds cited by the Bureau of Legal Affairs (BLA) in cancelling the registration was the fact that the design was dictated by technical or functional considerations. Section 113.2 of the Intellectual Property Code provides that industrial designs dictated by technical or functional considerations to obtain a technical result shall not be protected. Although not mentioned by the BLA in its decision, the title itself of the registration betrays it – An AERODYNAMIC Fan Blade. Chua shot himself in the foot when he called the fan blade AERODYNAMIC.

It’s Not Called “The Old Spaghetti House” for Nothing

Café de Coral Assets Ltd. (CDC) opposed the application of Albertito Guerero for “The Old Spaghetti House” based on the former’s “The Spaghetti House” trademark registration worldwide including the Philippines. While CDC was able to show that it had a prior registration in the Philippines, CDC and its predecessor-in-interest were actually not able to use the mark in the Philippines. CDC filed an affidavit of non-use on the basis that it is still looking for a suitable franchisee in the Philippines. The Bureau of Legal Affairs (BLA), however, considered this excuse to be unacceptable. Mr. Guerrero was thus able to show that he was the first one to have used “The Old Spaghetti House” mark in the Philippines, and was in fact the “OLDER” Spaghetti House. The decision of the BLA may be accessed here.

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).

INTA Leadership and 2017 Annual Meeting

Two of our Firm’s Partners, Andre Betita and Joseph Sarmiento, recently attended the INTA Leadership Meeting in Hollywood, Florida. Both partners actively participated in the Leadership Meeting in their respective Committees. Andre Betita is a member of the Enforcement Committee, while Joseph Sarmiento is a member of the Trademarks Practices Committee.  They also met with existing and prospective clients and correspondent firms. 
 
All of our Firm’s partners will be attending the 2017 INTA Annual Meeting at Barcelona. If you would like to set up a meeting with any of them, please do not hesitate to send us an e-mail at INTA@bccslaw.com.  

IPOPHL Revises Fee Structure

The Philippine Intellectual Property Office (IPOPHL) will increase its official fees effective 1 January 2017. To minimize costs in pursuing intellectual property rights protection before the IPOPHL, we recommend filing any applications that are in the pipeline before the end of the year. For more information on the revisions, you may click this link.

New Trademark Forms

The Philippine Trademark Office has issued new forms for trademark applications, declarations of use, renewals, etc. The old forms will only be accepted until December 2016. 

May the Power of Trade Names Compel You

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. 

FOINALLY!

After years of languishing in Congress without any progress, President Rodrigo Duterte breathes life to Freedom of Information (FOI) by issuing Executive Order No. 2, which mandates disclosure of information of all offices under the executive branch. 

FDA issues Product Recall Guidelines

The FDA recently issued Guidelines on Product Recall of health products, placing overall responsibility of conducting product recalls with the Market Authorization Holder (MAH).  In particular, MAHs are responsible for providing an appropriate product recall strategy and implementing the same.  The Guidelines also created a Product Recall Committee whose principal functions are to review “triggers” for product recall, issue recall resolutions and monitor recall implementation.

Contact Us

Betita Cabilao Casuela Sarmiento
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1215 Acacia Avenue
Madrigal Business Park, Ayala Alabang
Muntinlupa City 1780
Metro Manila, Philippines

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