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.