RULE
8 CANCELLATION
OF REGISTRATION OF MARKS
Section1. Who
may file a petition for cancellation. Any person who believes that
he is or will be damaged by the registration of a mark may file with
the
Bureau a petition to cancel such registration.
Section 2.
When
may a petition be filed. The petition for cancellation of the
registration
of a mark may be filed:
(a) Within
five
(5) years from the date of registration of the mark under the IP
Code;
(b) at
any time,
if the registered mark becomes the generic name for the goods or
services,
or a portion thereof, for which it is registered, or has been
abandoned,
or its registration was obtained fraudulently or contrary to the
provisions
of the IP Code, or if the registered mark is being used by, or with the
permission of, the registrant so as to misrepresent the source of the
goods
or services on or in connection with which the mark is used. If
the
registered mark becomes the generic name for less than all of the goods
or services for which it is registered, a petition to cancel the
registration
for only those goods or services may be filed. A registered mark
shall not be deemed to be the generic name of goods or services solely
because such mark is also used as a name of or to identify a unique
product
or service. The primary significance of the registered mark to
the
relevant public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic name of
goods or services on or in connection with which it has been
used.
Evidence on purchaser motivation shall not be admitted;
(c)
At any
time, if the registered owner of the mark without legitimate reason
fails
to use the mark within the Philippines, or to cause it to be used in
the
Philippines by virtue of a license during an uninterrupted period of at
least three (3) years.
Section 3. Contents
of petition for cancellation. The petition for cancellation
shall
give the name and address of the petitioner as well as those of the
necessary
party or parties respondent; and shall state the registration number
and
date of the registration sought to be cancelled; the name of the
registrant;
the statutory ground or grounds upon which cancellation is sought; the
ultimate facts constituting the petitioner’s cause or causes of
action
and the relief sought.
Section 4. Verification
of petition. A petition for cancellation filed in triplicate
shall be verified by the petitioner or by any person in his behalf who
knows the facts.
Section 5. Service
of petition and notice of hearing. Upon the filing of a
petition
for cancellation in proper form and payment of the required fee, the
Director
shall cause a copy of such petition to be served on the party or
parties
respondent, requiring such party or parties to answer the
petition.
After the issues have been joined, the Director will cause a date to be
set for the hearing of the case, which will be communicated to both
parties.
Section
6.
Power of the Bureau to cancel the mark in the exercise
of its
power to hear and adjudicate any action to enforce the rights to a
registered
mark. Notwithstanding the foregoing provisions, the court or
the Bureau shall, in the exercise of its power to hear and adjudicate
any
action to enforce the rights to a registered mark, likewise
determine
whether the registration of said mark may be cancelled in accordance
with
the IP Code.
Section
7.
Effect of filing of a suit before the Bureau or with the
proper court.
The filing of a suit to enforce the registered mark with the
proper
court or Bureau shall exclude any other court or agency from assuming
jurisdiction
over a subsequently filed petition to cancel the same mark. On
the
other hand, the earlier filing of petition to cancel the mark with the
Bureau shall not constitute a prejudicial question that must be
resolved
before an action to enforce the rights to same registered mark may be
decided.
Section
8.
Cancellation of registration. If the Bureau finds
that a case
for cancellation has been made out, it shall order the cancellation of
the registration. When the order or judgment becomes final, any
right
conferred by such registration upon the registrant or any person in
interest
of record shall terminate. Notice of cancellation shall be
published
in the IPO Gazette.
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