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? 

FAQ on the NPC Rules of Procedure

Who may file a complaint?

1. The person claiming to be the subject of the privacy breach/violation;
2. His or her authorized representative; or
3. the National Privacy Commission (NPC), on its own initiative
(Sec. 3, NPC Rules)
 
Can someone not personally affected, and likewise not an authorized representative, file a complaint?

No. However, he or she may opt for either of the following:
1. Request for an advisory opinion; or
2. Inform the NPC on the data privacy concern
(Sec. 3, NPC Rules)
 
Will filing a complaint or requesting an advisory opinion require the payment of fees?
 
Yes. Otherwise, it will not be entertained. (Sec. 5, NPC Rules)
 
Is the rule on filing fees absolute?
 
No. The following instances are the exceptions to the rule on filing fees:
1. The complainant is the government, or any agency or instrumentality thereof, including government-owned and controlled corporations (excluding, however, GOCCS incorporated under the Corporation Code);
2. The complainant is an indigent or pauper litigant under the Rules of Court, i.e. one who has no money or property sufficient and available for food, shelter, and basic necessities for himself and his family (Sec. 21, Rule 3, Rules of Court); or one whose gross income and that of his immediate family do not exceed an amount double the monthly minimum wage of an employee (Sec. 19, Rule 141, Rules of Court) and do not own real property with fair market value exceeding PhP 300,000.00.
3. NPC waives the requirement for good cause shown.
 
Where should the complaint be filed?
 
The complaint can be filed with any office of the NPC (Sec. 7, NPC Rules). Note that the Rules are permissive as to which office the same can be filed and does not limit the filing of the same to the
office located in the same locality/region as that of the residence of the complainant. Note, also, that while “any office” is mentioned, at present, the NPC has only one existing office, located in Quezon City. Nonetheless, electronic filing is allowed via e-mail to complaints@privacy.gov.ph, with a copy furnished to all other parties to the complaint (Sec. 8, NPC Rules).
 
What shall be the form and contents of the complaint?
 
It shall be in writing, verified and under oath, or contained in a sworn affidavit. The Efficient Use of Paper Rule must be complied with. In addition, the following shall be included:
 
* a brief narration of the material facts;
* supporting documents (original or certified true copy) and testimonial evidence;
* specific violation of the Data Privacy Act or related issuances;
* particular acts or omissions amounting to the alleged data privacy violations; and
* any and all correspondence with the respondent on the matter complained of, including a statement of the action taken by the latter to address
the matter, if any. 
(Sec. 10, NPC Rules)
 
What will happen next upon filing the complaint?
 
The case will be assigned by the NPC to an investigating officer for evaluation. Said officer will then recommend any of the following:
1. outright dismissal,
2. referral to the respondent for comment,
3. further monitoring,
4. that the complaint be treated as a request for an advisory opinion, or
5. indorsement to the proper government agency.
(Sec. 11, NPC Rules)
 
If the allegations are deemed to be sufficient, the investigating officer shall issue an Order to Confer for Discovery within 10 days from receipt of said Order. Whatever is agreed upon during such conference shall then be reduced into a Discovery Conference Report to be submitted to the NPC within five days from conclusion of the conference. (Sec. 13, NPC Rules)
 
Thereafter, the respondent/s will be directed, via an Order, to submit a Comment to the Complaint within 10 days from receipt of said Order. (Sec. 15, NPC Rules)
 
If the investigating officer deems it necessary, he or she may then require the complainant to file a Reply within 10 days, and the respondent, a Rejoinder, also within 10 days. (Sec. 15, NPC Rules)
 
The investigating officer will then proceed to investigate the circumstances surrounding the alleged privacy violation (Sec. 16, NPC Rules) and, thereafter, submit a fact-finding report, with corresponding recommendations, to the Office of the Commissioner (Sec. 18, NPC Rules).
 
The NPC will review the evidence presented, together with the fact-finding report. It may either:
1. promulgate a Decision; or
2. order the conduct of a clarificatory hearing.
 
The Decision may include enforcement orders. (Sec. 21 & 22, NPC Rules)
 
Is the Decision of the NPC appealable?
 
Yes. The party adversely affected may file an appeal within 15 days from receipt of a copy of the Decision. Otherwise, the same will become final and executory. (Sec. 30, NPC Rules)

Alienation of Aliens

SEC-OGC Opinion No. 16-29 cites Section 2 of the Anti-Dummy Law in clarifying that management positions – such as that of a President or Vice President – may not be held by aliens. Likewise, SEC-OGC Opinion No. 16-02 cites the same provision of law in saying that an alien national cannot act as President/Chairman of the Board.
 
But, is an alien likewise prohibited from acting as the Chairman of the Board only and not holding another position concurrently? Based on SEC-OGC Opinion No. 07-07, it appears that chairmanship can be so vested. Thus: “for as long as the association is not engaged in nationalized activity, a non-Philippine national may serve as a member of its board of trustees or be the chairman of the board… On the other hand, if the association engages in partly nationalized activities, foreign nationals may sit in the board in proportion to their allowable membership therein. In the same vein, an alien national may assume the post of the Chairman of the board whose act shall be limited to that of a presiding officer during board meetings.” 

Latest rankings in!

The firm was recognized again in the 2017 ranking tables of the World Trademark Review (WTR), Legal500 and Chambers and Partners.

According to WTR, “(e)lite boutique Betita Cabilao Casuela Sarmiento wins praise from foreign counsel the world over: ‘All the partners are responsive, dedicated, reliable and prompt in their advice. Working with them, you feel as if you you’re their only client.’ The four-partner team has secured favourable results for household-name brands in a string of high-stakes cases, and prides itself on its uniquely personalised approach to both contentious and non-contentious matters. Managing partner Andre Philippe Betita is a regular in the Supreme Court, but also deftly handles filing and prosecution issues before IPOPHL; having helped to draft the country’s IP Code, he knows every line of the statute inside out. Pericles Jose Conrado Casuela is a go-to practitioner for licensing matters and IP-rich M&A negotiations.” Andre and Pericles are ranked as tier 2 recommended experts by WTR. The full publication can be viewed here.

The firm is ranked as a second-tier recommended firm by Legal 500, which describes the firm: “Betita Cabilao Casuela Sarmiento’s practice handles licensing, transactions, litigation and enforcement relating to trade marks. Name partners Andre Betita, Pericles Casuela, Joseph Sarmiento and John Paul Cabilao are active practitioners.” The full publication can be viewed here.

The firm’s Andre Betita is ranked in band 3 of the leading Intellectual Property lawyers in the Philippines in Chambers and Partners’ 2017 Asia-Pacific guide. The full publication can be viewed here.

The rankings complement the firm’s milestone achievement of building a portfolio of more than 2,000 trademarks filed and registered with the Philippine Intellectual Property Office within the fifth year from its founding in 2011.  To view the firm’s portfolio, visit http://www.wipo.int/branddb/ph/en/ and enter “Betita Casuela” in the “Names/Representative” search option.

  • 1
  • 2
  • 5

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