When a 3rd party decides to file an opposition against a trademark, the following procedure applies:
Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication of the mark in the E-Gazette of Trademarks, file with the IPO an opposition to the application.
Upon proper motion anchored on meritorious grounds which must be expressly indicated in the motion, and the payment of the filing fee for opposition and other applicable fees, the IPO may grant an additional period of 30 days within which to file the opposition. A second motion for extension of 30 days may be granted on compelling grounds and upon payment of the applicable fees; Provided, that in no case will the filing of the opposition exceed ninety (90) days from the date of the aforementioned publication; Provided, further, that if the last day for filing of the verified opposition or motion for extension falls on a Saturday, Sunday, holiday, non-working day or on a day when the IPO is closed for business as may be declared by the Director General, the filing must be done the next succeeding working day.
The opposition must be in writing, verified and accompanied by a certification of non-forum shopping, and in due form as prescribed in the Rules. The petition or opposition must be filed in duplicate with proof of service to the respondent. The periods to file the opposition or petitions are provided in the succeeding rules.
The petition or opposition must indicate the following:
(1) names and addresses of the petitioner or opposer and the other parties, including the respondent;
(2) the assigned application number and the filing date of the trademark application opposed, or of the registration number, the name of the registrant, and the date of the registration of the trademark, patent, utility model, industrial design or layout design sought to be cancelled; and
(3) the ultimate facts constituting the opposer's or petitioner's cause or causes of action and the relief sought.
The opposer or petitioner shall attach to the opposition or petition the affidavits of witnesses, copies of certificates of registration of marks registered in other countries, documentary or object evidence, which must be duly-marked starting from Exhibit "A", and other supporting documents mentioned in the notice of opposition or petition together with the translation in English, if not in the English language. The verification and certification of nonforum shopping as well as the documents showing the authority of the signatory or signatories thereto, affidavits and other supporting documents, if executed and notarized abroad, must have been authenticated by the appropriate Philippine diplomatic or consular office. The execution and authentication of these documents must have been done before the filing of the opposition or petition.
For the purpose of the filing of the opposition, the opposer may attach, in lieu of the originals or certified copies, photocopies of the affidavits of its witnesses and other documentary evidence, and photographs of object evidence subject to the presentation or submission of the originals and/or certified true copies thereof during the Preliminary Conference. However, the opposer must already attach to the opposition, upon its submission to the IPO, the originals of the following:
(ii) Certification of non-forum shopping;
(iii) Special Power of Attorney of representative(s) who signed the pleadings, the verification, and the certification of non-forum shopping; the proof of authority to issue or execute the Special Power of Attorney; and
(iv) Proof of authentication by the appropriate Philippine diplomatic or consular office, of the foregoing documents, if executed abroad.
If the opposition or petition is determined to be compliant with the requirements, the IPO shall immediately issue a Notice to Answer, for the respondent to file an answer. The respondent also has the same period as the opposer, or a total of ninety (90) days from publication in the E-Gazette of Trademarks, within which to file his Answer subject to the filing of motions for extension of time and payment of the required fees.
If the respondent fails to file an answer or if the answer is filed out of time, the respondent shall be declared in default. The Hearing/Adjudication Officer shall issue the order of default and shall require in the said order the opposer or petitioner to submit or present within ten (10) days from receipt thereof the originals and/or certified copies of the affidavits, documentary evidence and object evidence, if necessary. The case shall be decided on the basis of the petition or opposition, the affidavits of the witnesses and the documentary or object evidence submitted by the petitioner or opposer.
In case the respondent timely files his Answer in accordance with the Rules, the IPO either may refer the case for mediation to give the parties an opportunity to settle the case, or set the case for Preliminary Conference. Should mediation fail and the parties do not agree on a settlement, the Preliminary Conference shall be conducted. The purposes of the Preliminary Conference is to facilitate the resolution of the case through stipulations, clarify and simplify issues, and for the submission and/or presentation of the original or certified true copies of affidavits, documents and other evidence, if necessary.
Upon the termination of the preliminary conference, the Hearing/Adjudication Officer shall issue an order in open court, requiring the parties to submit their respective position papers within 10 days from the issuance of the order in open court. After the lapse of the reglementary period within which to file the position paper, and with or without the parties having submitted the same, the case is deemed submitted for decision by the IPO-Bureau of Legal Affairs (BLA).
The decision of the IPO-BLA is appealable to the Director-General of the IPO, whose decision, in turn, is appealable to the Court of Appeals and, thereafter, to the Supreme Court.
1. Government Fees
The government fees include the following:
2. Professional Fees
For trademark enforcement work (including filing an opposition), our firm usually charges based on actual time rendered at the following rates:
Associate ---- US$20+/hour
Paralegal ------- US$10+/hour
We require a deposit for cost to cover all expenses in connection with the matter such as filing fees, transportation, photocopying, etc., subject to liquidation. We list the above costs as ranges because each case requires different levels of complexity. Some clients request a low-cost defense and other clients request us to deploy all our available resources. We will match a solution to your needs.
Notwithstanding our usual time-billing policy, we have considered fixed fee arrangements for litigation and dispute resolution matters being handled by our firm including for intellectual property enforcement. Our fixed fee arrangement would be based on the approximate time spent on the matter from our prior experience and under circumstances where there is no added substantial work such as an application for injunction or when an interlocutory order of the trial court or the Intellectual Property Office is elevated and challenged before the appellate courts. The agreed fixed fee could serve as a cap on our billing.
In the past, without significant additional work, a standard dispute (from filing of the initiatory pleading to resolution by the trial court or the Intellectual Property Office) requires about 60 hours or work from an Associate, 15 hours from a Junior Partner, and 10 hours from a Senior Supervising Partner. If the actual time for services rendered turns out to be less, then we bill based on the actual time. If the actual time exceeds the estimate (but not due to an added substantial work), then the agreed fixed fee is applied as a cap.
From our experience, additional substantial work such as an application for injunction or elevating and challenging an interlocutory order before the appellate courts may take significant number of work hours. For instance, an application for injunction will require the presentation of evidence by the applicant and by the opposing party, offer of evidence and submission of memoranda.
As the complexity of opposition initiation or defense varies greatly, the costs can range from the hundreds of dollars well into the tens of thousands.
Note that opposition is completely voluntary, and a trademark applicant can simply abandon the application at any time should the chance of winning be too small to justify the expense. The opposition services on this page are not included in any of our trademark registration packages. We are here to advise you and discuss your options with you.