for Cancellation of a Mark, Patent,
Utility Model, Industrial
Registration of a Mark, and
State recognizes that an effective intellectual and industrial property
system is vital to the development of domestic creativity, facilitates
transfer of technology, attracts foreign investments and ensures market
access for our products;
WHEREAS, the State
recognizes that the use of intellectual property bears a social
and to this end, the State shall promote the diffusion of knowledge and
information for the promotion of national development and progress and
the common good;
WHEREAS, it is the
policy of the State to enhance the enforcement of intellectual property
rights in the country; and, to protect and secure the exclusive rights
of scientists, inventors artists and other gifted citizens to
intellectual property and creations, particularly when beneficial to
NOW, THEREFORE, pursuant
to the provisions of Republic Act No. 8293, otherwise known as the
Property Code of the Philippines, the following rules and regulations
Inter Partes Proceedings [Petitions for Cancellation of Patent,
Utility Model, Industrial Design, Compulsory Licensing and Opposition
Trademark Registration] are hereby promulgated:
PROCEEDINGS, THE PARTIES TO THE PROCEEDINGS; JURISDICTION; PROCEDURE;
Section 1. The
contested or inter partes proceedings are:
1.1. Patent Cases
1.2. Trademark Cases
Parties in inter partes proceedings. The Petitioner in a
proceeding and in a compulsory licensing proceeding and the Opposer in
an opposition proceeding shall be deemed to be in the position of
a plaintiff while the Respondent in a cancellation, compulsory
or opposition proceeding shall be in the position of defendant, with
thereto. The Petition for Cancellation, Petition for Compulsory
and Notice of Opposition shall correspond to the Complaint, while the
thereto shall correspond to the Answer. The taking of testimony
before the Director or any Hearing Officer, the introduction of
evidence during the hearings and the submission of briefs or memoranda,
shall correspond to trial.
Section 3. Original
jurisdiction over inter partes proceedings. The Director
have original jurisdiction over inter partes proceedings. Such
partes proceedings shall be heard before the Director, any Hearing
or other ranking official of the Bureau designated by the Director but
all decisions and final orders shall be signed by the Director.
Section 4. Right
of foreign corporation to sue in trademark or service mark enforcement
action. Any foreign national or juridical person whether or
engaged in business in the Philippines may bring a petition for
cancellation or compulsory licensing: Provided, that the country of
he or it is a national, or domiciled, or has a real and effective
establishment is a party to any convention, treaty or agreement
to intellectual property rights or the repression of unfair
to which the Philippines is also a party, or extends reciprocal
to nationals of the Philippines by law.
Section 5. Jurisdiction
of the courts in patent cancellation. The courts shall have
over petition for the cancellation of the patent where such petition is
based on the grounds enumerated in Section 67 or Section 68 of Republic
Act No. 8293. However, where any of the grounds in Sections 67 or
68 has been raised together with the grounds for cancellation stated in
Sections 49, 61, 109 or 120 in a petition for cancellation of a patent,
utility model or industrial design or where any of such grounds
issues has been raised in an administrative case for violation of laws
involving intellectual property rights, all parties in the petition or
administrative case shall be prohibited from instituting a separate
in court based on Section 67 or Section 68 of Republic Act No.
Rules of procedure to be followed in the conduct of hearing of
partes cases. In the conduct of hearing of inter partes
the rules of procedure herein contained shall be primarily
The Rules of Court, unless inconsistent with these rules, may be
in suppletory character, provided, however, that the Director or
Hearing Officer shall not be bound by the strict technical rules of
and evidence therein contained but may adopt, in the absence of any
rule herein, such mode of proceedings which is consistent with the
of fair play and conducive to the just, speedy and inexpensive
of cases, and which will give the Bureau the greatest possibility to
on the technical grounds or issues before it.
Powers of Hearing Officer. A Hearing Officer
conduct hearings and investigation shall be empowered to administer
and affirmations, issue subpoena and subpoena duces tecum to compel
of parties and witnesses and the production of any book, papers,
and other records which are material to the case, and to make
rulings on questions raised at the hearings, with the ultimate decision
being left to the Director or any final order.
Workflow/procedure in inter partes proceedings.
for Cancellation, Compulsory Licensing or Notice of Opposition shall be
filed with the Bureau which shall check if the complaint is in due form
and thereafter, shall issue an order for the payment of the required
of the required fee, the petitioner, his counsel or representative
submit to the Bureau a copy of the official receipt and present the
thereof for comparison. Within twenty four (24) hours from
receipt of the proof of payment of the required fee, the Assistant
of the Bureau shall acknowledge receipt of the papers by
the Inter Partes Case Number, docket the same and then assign the case
to any of the Hearing Officers through raffle under the rules
by the Director General.
(3) working days from receipt of the petition by the Bureau, the
Officer to whom the petition is assigned shall immediately
and send, in the name of the Director, to all parties required to be
in the IP Code and these Regulations the necessary orders, notice of
summons, and other notices, either by registered mail or by personal
Section 9. Summons
and answer. The summons shall require respondent to answer
petition (and not to file a motion to dismiss) within fifteen (15) days
from service of the summons.
The respondent shall answer the petition in writing, either by denying
specifically the material allegations of the petition or by alleging
lawful defense. He shall file his answer together with the sworn
statements and documentary evidence and serve copies thereof upon the
time fixed for the filing and service of the answer shall, unless
ordered, run from receipt of notice of the order admitting the amended
petition or opposition from service of such amended petition. The
original answer shall be considered as answer to the amended petition
a new answer is filed within ten (10) days from notice or service.
to dismiss. No motion to dismiss shall be entertained.
all grounds for dismissal shall be pleaded as affirmative defenses, the
resolution of which shall be made in the decision on the merits.
The Hearing Officer may, for good cause shown, conduct a hearing on any
of the affirmative defenses if this will promote expediency in the
of the pending case.
Section 10. Pre-trial.
Upon joinder of issues, the designated clerk of the Bureau
the Notice of Pre-Trial upon receipt of invitation from the Hearing
setting the date of the pre-trial conference. The pre-trial
shall be set within two (2) months but not earlier than one (1) month
receipt of the Answer or other pleading. The notice of pre-trial
shall be delivered by personal delivery or registered mail within two
days from the date on which instruction was given to the clerk.
notice of pre-trial shall require the parties to submit a pre-trial
containing the following:
(a) A brief
of the parties’ claims and defenses;
if any, for simplification of issues;
list of documents
they intend to produce as evidence, together with appropriate markings
as exhibits as well as the identification of witnesses and a statement
of the substance and purpose of their testimony during the hearing on
merits. These documents must be produced for examination during
pre-trial conference without prejudice to the presentation of
documents during the trial if the party was prevented from producing
same during the pre-trial on account of fraud, accident, mistake,
negligence or such other reason which the Director or Hearing Officer
justifiable in the interest of justice and fair play;
they can stipulate on facts not covered by admissions in their
If so, they should come with drafts of matters they are ready to
they are open to the possibility of an amicable settlement; if so, they
should be prepared on the pre-trial date to submit their minimum
for purposes of settlement; and,
as may aid in the prompt disposition of the action.
Each party shall file
with the Bureau and serve on the adverse party said pre-trial briefs at
least three (3) days before the date of pre-trial conference fixed in
As counsel needs
the consent of his client for purposes of accepting an offer of
the attendance not only of the attorneys of record but also of the
themselves, is required for the pre-trial conference. Presence of
any party may be dispensed with if his counsel is provided with a
power of attorney or the appropriate corporate authorization to make
and/or to accept and approve compromise proposals.
The failure of the
petitioner/opposer to appear when so required shall be cause for
of the action with prejudice. A similar failure on the part of
respondent shall be cause to allow the petitioner/opposer to present
evidence ex parte and the Director to render judgment on the basis
Section 11. (a)
Dismissal for failure to prosecute. If the
does not appear at the time and place designated in the Notice of
Conference or a Notice of Hearing or in a subsequent order, or failed
prosecute his case for an unreasonable length of time, or fail to
with these Regulations or any order of the Bureau, the petition or
of opposition, as the case may be, may be dismissed for failure
prosecute and judgment rendered for the respondent to recover his costs
from the petitioner/opposer, provided, however, that the Bureau may
the patent or trademark registration where it finds evidence
of the petitioner’s submission. Within fifteen (15) days
receipt of the Order of Dismissal, the petitioner/opposer may file a
to set aside such order if his failure to appear was by reason of
accident, mistake or excusable negligence.
(b) Effect of
failure of respondent to answer. If the respondent fails to
within the period herein provided, the Hearing Officer shall, upon
of the petitioner/opposer or motu propio, declare the respondent in
and forthwith receive evidence ex parte and submit his recommendations,
to the Director. No service of papers other than substantially
or supplemental pleadings and final orders or decisions shall be
on a party in default unless he files a motion to set aside the
of Default within fifteen (15) days from receipt thereof on any of the
grounds mentioned in the preceding paragraph, in which event he shall
entitled to notice of all further proceedings regardless of whether the
order of default is set aside or not.
Section 12. Conduct
of hearings. Should the Hearing Officer be absent on any scheduled
date of hearing, the hearing shall automatically be conducted by his
Hearing Officer or, upon instruction of the Director, by any
Hearing Officer. All hearings shall be continuous until
and no postponement of hearings, specially those scheduled by agreement
of the parties, shall be allowed over the objection of any party.
However, in extremely meritorious cases and upon written motion filed
the Hearing Officer at least three (3) days before the scheduled
with proof of personal service upon the other party or parties, a
may be granted.
Section 13. Order
of trial. The following procedure shall be observed during the
of the case:
shall submit to the Hearing Officer and serve on the adverse party the
sworn statement of the witnesses (which shall constitute the
testimony of the affiants) and other documentary evidence at least
(3) days before the scheduled hearing and shall make his witnesses
for cross-examination by respondent during the scheduled hearing.
shall then present the sworn statements of witnesses (which shall
the direct testimony of the affiants) and other documentary evidence
shall make his witnesses available for cross-examination by petitioner
during the scheduled hearing.
and the respondent may, in succession, present rebuttal and
evidence, with the direct testimony of witness being reduced into
form, as herein prescribed.
of the witness residing outside the Philippines is to be taken, said
may testify personally in his own behalf, or the direct examination may
be in the form of an authenticated affidavit and be submitted
the period fixed by the Hearing Officer, and the opposing party may
the witness through written interrogatories in the manner prescribed by
the Rules of Court. The party presenting the witness shall bear
expenses pertaining thereto and shall obtain the necessary approval for
the deposition. Submission of the Answer to cross interrogatories
to the Bureau shall be made within six (6) months from the date of the
issuance of the Letters Commission. Said period may be extended once
very justifiable reasons. In no case, however, shall the submission of
said Answer exceed one (1) year from date of issuance of Letters
Otherwise, the testimony of said foreign witness shall be stricken out
by the Hearing Officer, motu propio or upon motion of the opposing
Failure to present
the sworn statement of the witnesses and documentary evidence at the
shall be deemed a waiver of the right to present evidence during
to evidence not allowed. No demurrer to evidence shall be
after the presentation of petitioner’s evidence. Respondent shall
forthwith present evidence in its behalf.
Section 15. Director
or Hearing Officer not bound by technical rules of evidence. The
Director, Chief Hearing Officer or any Hearing Officer shall receive
and material evidence, rule on offer of evidence and exclude all
matter, and shall act according to justice and fairness. The
in the exercise of its power to investigate and hear cases within its
shall not be strictly bound by the technical rules of evidence.
Bureau shall, however, take judicial cognizance of the official acts
the legislative, executive and judicial departments of the Philippines,
the laws of nature, scientific facts as published in treatises,
or pamphlets and other facts which are of public knowledge or general
as would enable the Director, Chief Hearing Officer or Hearing Officer
to rule upon the technical issues in the case.
Section 16. Judgment
on the pleadings. When an answer fails to tender an issue or
otherwise admits the material allegations of the adverse party’s
the Director may, on motion of said adverse party, render judgment on
Section 17. Summary
judgment. Any party seeking to recover upon a petition, a
counterclaim or cross-claim or against whom a petition, claim,
or counterclaim is asserted may, at any time after the issues are
move with supporting affidavit, depositions or admissions of parties,
a summary judgment in his favor as to all or any part thereof.
motion shall be served at least ten (10) days before the time specified
for the hearing. The adverse party may file with the Bureau and
opposing affidavits at least three (3) days prior to the day of
After the hearing, the judgment sought shall be rendered forthwith if
pleadings, depositions and admissions on file, together with the
show that there is no genuine issue as to any material fact and that
moving party is entitled to a judgment as a matter of law.
Section 18. Transcript.
The stenographer or such other personnel as may be authorized
Director shall take down notes of all the proceedings in the
At the end of each hearing, he shall immediately transcribe all
taken thereat and deliver said notes as well as the transcript thereof,
duly certified, initialled on each page and signed by him on the last
to the Hearing Officer, to be attached to the record of the case at
ten (10) days before the next hearing or the date of the first day in a
scheduled series of continuous hearings.
Introduction of document belonging to another case.
a party in an inter partes proceeding desires to submit, as his own
a document filed in another case, separate from the case being heard,
should, for such purpose, secure a certified copy of such document,
the required fee therefor.
Section 20. Case
not to be discussed informally unless in presence of both parties.
It is strictly and absolutely forbidden for the Director or for
Hearing Officer or any employee of the Bureau who may have anything to
do directly or indirectly with the hearing, decision, or preparation of
the decision, in any pending inter partes case, to discuss informally
case or any phase thereof with any of the contending parties or their
except in the presence of the adverse party or his attorney.
principles may be applied. In all inter partes proceedings,
equitable principles of laches, estoppel and acquiescence, when
may be considered and applied.
Submission of memoranda and draft decision. Parties shall
to submit their memoranda within one (1) month from receipt of the
of admissibility of exhibits. Unless otherwise provided for by
laws, the appropriate final pleadings required of the parties to be
shall include a draft of the decision/resolution they seek, stating
and distinctly the facts and the law upon which it is based. The
Hearing Officer may adopt, in whole or in part, either of the parties’
draft decisions/resolutions, or reject both. This requirement
likewise be applied to orders other than the final judgment.
Hearing Officer’s report. Within one (1) month from
on which the case was submitted for decision, the Hearing Officer, in
and coordination with the Chief Hearing Officer, shall submit his
findings and draft of the decision through the Chief Hearing Officer
shall affix his initial thereon for approval of the
Cancellation of patents; Grounds.
party may, upon payment of the required fee, petition to cancel the
or any claim thereof, or parts of the claim, on any of the
claimed as the invention is not patentable;
that the patent
does not disclose the invention in a manner sufficiently clear and
for it to be carried out by any person skilled in the art;
that the patent
is contrary to public order or morality;
that the patent
includes matters outside the scope of the disclosure contained in
the application as filed.
by person having right to the patent. A person declared by
court order or decision as having the right to the patent may, within
(3) months after the decision has become final, seek cancellation of
patent, if one has already been issued.
party. A party interested in the patent shall include any
including a person declared by final court order or decision to be the
true and actual inventor.
cancellation. Where the grounds for the cancellation relate
some of the claims or parts of the claim, cancellation may be effected
to such extent only in which case, the Office shall reissue the amended
Section 3. Requirement
of the petition. The petition for cancellation shall be in
verified by the petitioner or by any person in his behalf who knows the
facts, specify the grounds upon which it is based, include a statement
of the facts relied upon, and filed in triplicate with the Bureau.
of printed publications or of patents of other countries, and other
documents mentioned in the petition shall be attached thereto, together
with the translation thereof in English, if not in the English
Section 4. Notice
of hearing. The Hearing Officer shall serve in the name of
Director, notice of the filing of the petition upon the patentee and
persons having grants or licenses, or any other right, title or
in and to the patent and the invention covered thereby, as
of record in the Office, and of notice of the date of hearing thereon
such persons and the petitioner. Notice of the filing of the
shall be published in the IPO Gazette.
The Committee of Three. In cases involving highly technical
on motion of any party, the Director may order that the petition
be heard and decided by a committee composed of the Director as
and two (2) members who have the experience or expertise in the field
technology to which the patent sought to be cancelled relates.
of the patent by the Committee. If the Committee finds that a
case for cancellation has been proved, it shall order the patent or any
specified claim or claims thereof cancelled.
made by the patentee during the cancellation proceedings. If
the Committee finds that, taking into consideration the amendment made
by the patentee during the cancellation proceedings, the patent and the
invention to which it relates meet the requirement of the IP
it may decide to maintain the patent as amended : Provided, that the
for printing of a new patent is paid within one (1) month from the date
of the decision of the committee. If the fee for the printing of
the new patent is not paid in due time, the patent shall be revoked at
the expiration of the period for payment.
of the amended patent. If the patent is amended per decision of the
committee, the Bureau shall, at the same time as it publishes the
of the cancellation decision, publish the abstract, representative
and drawings indicating clearly what the amendments consist of.
of cancellation of patent or claim. The rights conferred by
patent or any specified claim or claims cancelled shall
Notice of the cancellation shall be published in the IPO
Section 7. Patent
found invalid may be cancelled. If, in an action for
filed before the court, the court finds the patent or any claim to be
it shall cancel the same. Such order of cancellation shall be
to the Director who shall cause the recording and publication of notice
of such order in the IPO Gazette upon receipt of the final judgment of
cancellation by the court. Such recording shall be made in the
register of the Office.
OF UTILITY MODEL REGISTRATION
Section 1. Grounds
for cancellation of utility model registration. At any
time during the term of the utility model registration, any person,
payment of the required fee, may petition the Director to cancel the
model registration on any of the following grounds:
(a) That the
invention does not qualify for registration as a utility model and does
not meet the requirements of registrability, in particular:
(b) That the
and the claims do not comply with the prescribed requirements;
(c) That any
which is necessary for the understanding of the invention has not been
(d) That the
of the utility model registration is not the inventor or his successor
in title; or
(e) That the
model registration extends beyond the content of the application
as originally filed.
for the cancellation of utility model. The procedure for the
cancellation of patent shall apply mutatis mutandis to the cancellation
of utility model.
of cancellation of utility model registration. The rights
by the registration of the utility model shall terminate upon the
of such registration.
OF DESIGN REGISTRATION
Section 1. Grounds
for the cancellation of design registration. At any time
the term of the industrial design registration, any person upon payment
of the required fee, may petition the Director to cancel the industrial
design on any of the following grounds:
(a) that the
design does not give a special appearance to and can not serve as
for an industrial product or handicraft;
design is not new or original;
design is dictated essentially by technical or functional consideration
to obtain a technical result;
design is contrary to public order, health or morals; or
subject matter of the industrial design extends beyond the content of
application as originally filed.
Section 2. Partial
cancellation. Where the grounds for cancellation relate to a
part of the industrial design, cancellation may be effected to
extent only. The restriction may be effected in the form of an
of the effected features of the design.
Section 3. Procedure.
The procedure prescribed by these Regulations in the cancellation of
and utility model registration shall be applied mutatis mutandis in the
cancellation of design registration.
of cancellation. The rights conferred by the registration of
a design shall terminate upon the cancellation of such
Section 1. Patents
subject to proceedings for compulsory licensing. Invention
industrial design registration and utility model registration are all
to proceedings for compulsory licensing.
Section 2. Who
may file petition for compulsory licensing; time for filing the
Upon the payment of the required fee, any person may file a
for compulsory licensing at any time after the grant of the patent or
of the industrial design or utility model. However, if the
is based on the ground that the patented invention is not being worked
in the Philippines on a commercial scale, although capable of being
without any satisfactory reason, the petition may be filed at any time
after the expiration of a period of four (4) years from the date of
of the application or three (3) years from the date of the patent
period expires last.
for compulsory licensing. The Director may grant
a license to exploit a patented invention, even without the agreement
the patent owner, in favor of any person who has shown his capability
exploit the invention, under any of the following circumstances:
or other circumstances of extreme urgency;
interest, in particular, national security, nutrition, health or the
of other vital sectors of the national economy as determined by the
agency of the Government, so requires; or
judicial or administrative body has determined that the manner of
by the owner of the patent or his licensee is anti-competitive; or
case of public
non-commercial use of the patent by the patentee, without satisfactory
invention is not being worked in the Philippines on a commercial scale,
although capable of being worked, without satisfactory reason;
that the importation of the patented article shall constitute working
using the patent.
Section 4. Requirement
to obtain a license on reasonable commercial terms. The license
only be granted after the petitioner has made efforts to obtain
from the patent owner on reasonable commercial terms and conditions but
such efforts have not been successful within a reasonable period of
Section 5. When
a petition for compulsory licensing may be granted even without efforts
to obtain authorization from the patent owner. The
under the preceding section shall not apply in the following
for compulsory license seeks to remedy a practice determined after
or administrative process to be anti-competitive;
of national emergency or other circumstances of extreme urgency;
cases of public
Section 6. Notice
to the right holder. (a) In situations of national emergency
or other circumstances of extreme urgency, the right holder shall be
as soon as reasonably practicable.
(b) In the case of
public non-commercial use, where the government or contractor, without
making a patent search, knows or has demonstrable grounds to know that
a valid patent is or will be used by or for the government, the right
shall be informed promptly.
licensing of patents involving semi-conductor technology. In
the case of compulsory licensing of patents involving semi-conductor
the license may only be granted in case of public non-commercial use or
to remedy a practice determined after judicial or administrative
to be anti-competitive.
Section 8. Compulsory
license based on interdependence of patents. If the
protected by a patent, hereafter referred to as the “second patent”,
the country cannot be worked without infringing another patent,
referred to as the “first patent”, granted on a prior application or
from an earlier priority, a compulsory license may be granted to the
of the second patent to the extent necessary for the working of his
subject to the following conditions:
claimed in the second patent involves an important technical advance of
considerable economic significance in relation to the first
the first patent shall be entitled to a cross-license on reasonable
to use the invention claimed in the second patent;
in respect of the first patent shall be non-assignable except with the
assignment of the second patent; and
conditions of Section 95 (Requirement to obtain a license on reasonable
commercial terms), Section 96 (Compulsory licensing of patents
semi-conductor technology), Section 98 (Form and contents of petition),
Section 99 (Notice of hearing), and Section 100 (Terms and conditions
compulsory license) of the IP Code.
Section 9. Form
and contents of petition. The petition for compulsory
must be in writing, verified by the petitioner and accompanied by
of the required filing fee. It shall contain the name and address
of the petitioner as well as those of the respondents, the number and
of issue of the patent in connection with which compulsory
is sought, the name of the patentee, the title of the invention, the
grounds upon which compulsory license is sought, the ultimate facts
the petitioner’s cause of action, and the relief prayed for.
Notice of hearing. Upon filing of a petition, the
shall forthwith serve notice of the filing thereof upon the patent
and all persons having grants or licenses, or any other right, title or
interest in and to the patent and invention covered thereby as
on the record in the Office, and of notice of the date of hearing
on such persons and petitioner. The resident agent or
appointed in accordance with Section 33 of the IP Code, shall be bound
to accept service of notice of the filing of the petition within the
of this Section.
Publication of notice. In every case, the Director
the notice to be published in a newspaper of general circulation once a
week for three (3) consecutive weeks and once in the IPO Gazette
the expense of the applicant.
Grant of license. (a) If the Director finds
that a grant
of license under the preceding sections has been made out, he shall,
six (6) months from the date the petition was filed, order the grant of
an appropriate license.
(b) A compulsory
license sought for public non-commercial use shall be issued within six
(6) months from the filing of the proponent’s application or receipt of
the Board of Investment’s endorsement.
Terms and conditions of compulsory license. The
agree on the basic terms and conditions including the rate of royalties
of a compulsory license. In the absence of agreement between the
parties, the Director shall fix the terms and conditions including the
rate of royalties of the compulsory license subject to the following
and duration of such license shall be limited to the purpose for which
it was authorized;
shall be non-exclusive;
shall be non-assignable, except with the part of the enterprise or
with which the invention is being exploited;
the subject matter of the license shall be devoted predominantly
for the supply of the Philippine market: Provided, that this limitation
shall not apply where the grant of the license is based on the ground
the patentee’s manner of exploiting the patent is determined by
or administrative process to be anti-competitive.
license may be terminated upon proper showing that circumstances which
led to its grant have ceased to exist and are unlikely to recur:
that adequate protection shall be afforded to the legitimate interest
patentee shall be paid adequate remuneration taking into account
the economic value of the grant or authorization, except that in cases
where the license was granted to remedy a practice which was determined
after judicial or administrative process, to be anti-competitive, the
to correct the anti-competitive practice may be taken into account in
the amount of remuneration.
Amendment of compulsory license. Upon the request
of the patentee
or the licensee, the Director may amend the decision granting the
license, upon proper showing of new facts or circumstances justifying
Cancellation of compulsory license. Upon the
request of the
patentee, the Director may cancel the compulsory license:
(a) If the
for the grant of the compulsory license no longer exists and is
has neither begun to supply the domestic market nor made serious
has not complied with the prescribed terms of the license.
Surrender of the license by the licensee. The
surrender the license by a written declaration submitted to the
Publication of the amendment, surrender, or cancellation of
The Director shall cause the amendment, surrender, or
to be recorded in the appropriate Register of the Office, notify the
and/or the licensee, and cause notice thereof to be published, at the
of the petitioner, in the IPO Gazette.
APPLICATION FOR REGISTRATION OF MARKS
Section 1. (a)
Who may oppose. Any person who believes that he would be
by the registration of a mark may, upon payment of the required fee and
within one (1) month after the publication of the application, file
the Bureau a notice of opposition to the application.
of opposition. The notice of opposition shall be in writing
verified by the opposer or any person on his behalf who knows the
and shall specify the grounds on which it is based and include a
of the facts relied upon.
Section 2. (a)
and hearing. Upon the filing of an opposition and
of the required fee, the Bureau shall serve notice of the filing on the
applicant, and of the date of the hearing thereof upon the applicant
the oppositor and all other persons having any right, title or interest
in the mark covered by the application, as appear of record in the
(b) Notice in
case of unverified notice of opposition. The Bureau may
the applicant of the fact of filing of an unverified opposition.
The applicant, after payment of the required fee, may request for a
of the unverified opposition.
(c) The notice to
answer will be sent to the applicant/respondent upon the filing
the verified opposition.
of opposition. The opposition will be dismissed motu propio
failure of the opposer to verify, in person or by any person on his
who knows the facts, the notice of opposition within two (2) months
date of filing of the unverified opposition.
Section 3. Contents
of the notice of opposition. Copies of certificates of
of marks registered in other countries or other supporting documents
in the opposition shall be filed with the opposition together with the
translation in English, if not in the English language.
Section 4. (a)
Extension of period for filing the verified opposition. For
cause shown and upon payment of the required surcharge, the time for
the verified opposition may be extended for an additional one (1) month
by the Director upon the written request of the opposer. Whenever
an extension is granted, the Director shall cause the applicant to be
thereof. The petition for extension shall be filed in
However, in no case shall the period within which to file the verified
opposition exceed four (4) months from the date of release of the IPO
publishing the mark being opposed. If the last day for filing of
the notice of opposition or the verified opposition falls on a
Sunday, holiday, non-working holiday as may be declared by the
of the Philippines or on a day when the Office or the Bureau is closed
for business as may be declared by the Director General, the same
shall be moved to the immediately following working day.
of an opposition in a form other than the original. The
filing the opposition may submit an opposition in a form other than the
original such as a facsimile copy or photocopy provided:
that such fax, photocopy or other form complies with the requirements
these Regulations and is filed within the period to file the notice of
opposition or the verified opposition, or any extension thereof,
(2) that the original copy of the verified opposition is filed
one (1) month from submission of the fax, photocopy or other form
(3) that the original copy of the verified opposition is filed
the maximum period of four (4) months counted from the date of release
of the IPO Gazette publishing the mark being opposed. In all
the notice to answer shall be sent to the applicant only upon the
of the original copy of the verified opposition.
OF REGISTRATION OF MARKS
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
Bureau a petition to cancel such registration.
may a petition be filed. The petition for cancellation of the
of a mark may be filed:
(5) years from the date of registration of the mark under the IP
if the registered mark becomes the generic name for the goods or
or a portion thereof, for which it is registered, or has been
or its registration was obtained fraudulently or contrary to the
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
or services on or in connection with which the mark is used. If
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
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
or service. The primary significance of the registered mark to
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
Evidence on purchaser motivation shall not be admitted;
time, if the registered owner of the mark without legitimate reason
to use the mark within the Philippines, or to cause it to be used in
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
give the name and address of the petitioner as well as those of the
party or parties respondent; and shall state the registration number
date of the registration sought to be cancelled; the name of the
the statutory ground or grounds upon which cancellation is sought; the
ultimate facts constituting the petitioner’s cause or causes of
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
for cancellation in proper form and payment of the required fee, the
shall cause a copy of such petition to be served on the party or
respondent, requiring such party or parties to answer the
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
Power of the Bureau to cancel the mark in the exercise
power to hear and adjudicate any action to enforce the rights to a
mark. Notwithstanding the foregoing provisions, the court or
the Bureau shall, in the exercise of its power to hear and adjudicate
action to enforce the rights to a registered mark, likewise
whether the registration of said mark may be cancelled in accordance
the IP Code.
Effect of filing of a suit before the Bureau or with the
The filing of a suit to enforce the registered mark with the
court or Bureau shall exclude any other court or agency from assuming
over a subsequently filed petition to cancel the same mark. On
other hand, the earlier filing of petition to cancel the mark with the
Bureau shall not constitute a prejudicial question that must be
before an action to enforce the rights to same registered mark may be
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
conferred by such registration upon the registrant or any person in
of record shall terminate. Notice of cancellation shall be
in the IPO Gazette.
Section 1. Appeal
to the Director General.
Grounds of and period for filing motion for
Within the period for taking an appeal, the aggrieved party may
for reconsideration upon the grounds that the evidence is insufficient
to justify the decision or final order, or that the decision or final
is contrary to law.
Contents of motion for reconsideration and notice
The motion shall be made in writing stating the ground or grounds
a written notice of which shall be served by the movant on the adverse
A motion for reconsideration
shall point out specifically the findings or conclusions of the
or final order which are not supported by the evidence or which are
to law, making express reference to the testimonial or documentary
or to provisions of law alleged to be contrary to such findings or
A pro forma motion
for reconsideration shall not toll the reglementary period of
Action upon motion for reconsideration. If the
that the judgment or final order is contrary to the evidence or law, he
may amend such judgment or final order accordingly.
Resolution of motion. A Motion for reconsideration
resolved within one (1) month from the time it is submitted for
Second motion for reconsideration. No party shall be allowed
a second motion for reconsideration of a judgment or final order.
Partial reconsideration. If the grounds for a motion under
Rule appear to the Director to affect the issues as to only a part, or
less than all of the matter in controversy, or only one, or less than
of the parties to it, he may grant reconsideration as to such issues if
severable without interfering with the judgment or final order upon the
Remedy against order denying a motion for
An order denying a motion for reconsideration is not appealable, the
being an appeal from the judgment or final order.
Appeal to the Court of Appeals or Supreme Court. No motion
reconsideration of any decision or final order of the Director
shall be entertained and, the decision or final order of the
General shall be final and executory unless an appeal to the Court of
or the Supreme Court is perfected in accordance with Rule 41 of
Rules of Court applicable to appeals from decisions of Regional Trial
DECISIONS PENDING APPEAL
Section 1. Order
of execution. On motion of the prevailing party with notice
the adverse party, and upon filing of the approved bond,
Director may, in his discretion, order execution to issue even before
expiration of the time to appeal, upon good reasons to be stated in the
order. Such execution, however, may be stayed by filing of an
Section 2. Cancellation
of patent is immediately executory. Unless restricted by the
Director, the decision or order to cancel the patent, claim or part of
a claim by the Director shall be immediately executory even pending
ORDERS AND ENTRY THEREOF
Rendition of judgments and final orders. A judgment
order determining the merits of the case shall be in writing, stating
and distinctly the facts and the law on which it is based, signed by
Director, and filed with the appropriate Register of the Office.
It is the filing
of the decision, judgment or final order with the Register, not the
thereof, that constitutes rendition or promulgation.
Entry of judgments and final orders. If no appeal or
for reconsideration is filed within the time provided in these
the Director shall forthwith cause the entry of the judgment or final
in the appropriate Register of the Office. The date of finality
the judgment or final order shall be deemed to be the date of its
The record shall contain the dispositive part of the judgment or final
order and shall be signed by the Director, with a certificate that such
judgment or final order has become final and executory.
If no appeal or motion
for reconsideration has been filed on time, the judgment or final order
rendered by the Director or the Director General, as the case may be,
final and executory, and should immediately be caused to be entered by
the Director. To ensure this action the prevailing party should
a motion for the entry [and execution, if proper] of the
The date of entry is the starting point of the six months period for
a petition of relief, as well as the five years period of prescription
This rule corrects
the erroneous practice of entering the judgment or final order long
it had become final and executory. Even if the physical act of
the judgment or final order is done after it had become final and
the date when it became final and executory shall be deemed the date of