Any person who believes that he will be damaged by the registration of a mark may oppose a trademark application.
Current regulations require that a trademark application be opposed within 30 days from its publication, subject to 3 extensions of 30 days each. The request for extension has to be filed before the expiration of the 30-day period. This rule applies to all marks, including marks filed via the Madrid Protocol.
Philippine regulations require that all documents and pieces of evidence be submitted at the time of the filing of the notice of opposition. The notice of opposition, supporting affidavit, and power of attorney have to be notarized. If these are executed outside of the Philippines, these will require legalization before the Philippine consulate. If the supporting documents and pieces of evidence are not in English, there should be an English translation.
The usual grounds for opposition are:
- the mark is identical or confusingly similar to a trademark belonging to the opposer with an earlier filing or priority date;
- the mark is identical or confusingly similar to an internationally well-known trademark.
In determining whether a mark is well known, the following criteria or any combination thereof may be taken into account:
- the duration, extent and geographical area of any use of the mark, in particular, the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
- the market share, in the Philippines and in other countries, of the goods and/or services to which the mark applies;
- the degree of the inherent or acquired distinction of the mark;
- the quality-image or reputation acquired by the mark;
- the extent to which the mark has been registered in the world;
- the exclusivity of registration attained by the mark in the world;
- the extent to which the mark has been used in the world;
- the exclusivity of use attained by the mark in the world;
- the commercial value attributed to the mark in the world;
- the record of successful protection of the rights in the mark;
- the outcome of litigations dealing with the issue of whether the mark is a well-known mark; and
- the presence or absence of identical or similar marks validly registered for or used on identical or similar goods or services and owned by persons other than the person claiming that his mark is a well-known.
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