Consolidated Verified Notice of Opposition was filed out of time

In Man Truck & Bus AG v. Halla Holdings Corporation, IPC No. 14-2016-00546, 14-2016-00547 and 14-2016-00548 (January 12, 2017), the subject trademark applications were published on 30 August 2016. Section 134 of the Intellectual Property Code of the Philippines provides:

Sec. 134. Opposition. 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 referred to in Subsection 133.2, file with the Office an opposition to the application. xxx

While Rule 2, Section 12 of the Revised Rules and Regulations on Inter Partes Proceedings (IPOPHL Memorandum Circular No. 16-007) provides:

Section 2. Period to file opposition. – The verified notice of opposition must be filed within 30 days from the date of the publication of the trademark application in the IPOPHL “Gazette”. 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 Bureau may grant an additional period of 30 days within which to file the opposition. A second motion for extension of 30 days may also be granted on meritorious grounds and upon payment of the applicable fees. A third and last 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 one hundred and twenty (120) days from the date of the aforementioned publication; Provided, furtlier, 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 Office or the Bureau is closed for business as may be declared by the Director General, the filing must be done the next succeeding working day. (Emphasis supplied)

Opposer Man Truck & Bus AG (“Opposer”) filed two Motions for Extension of Time to File Opposition. Thus, it had until 28 November 2016 within which to file its oppositions. Opposer filed its Consolidated Verified Notice of Opposition on 29 November 2016.

Rule 2, Section 8 (b) of the Amendments to the Rules and Regulations on Inter Partes Proceedings (Office Order No. 99, Series of 2011) provides:

Section 8. Action on the Notice of Opposition or Motion for Extension to File Notice of Opposition and Petition. – xxx (b) The notice of opposition or petition may be dismissed outright and/or motu propio for having been filed out of time, due to lack of jurisdiction, and/or failure to state a cause of action. Likewise, a motion for extension of time to file notice of opposition shall be denied outright if the opposer fails to state meritorious grounds.

Therefore, the Consolidated Verified Notice of Opposition was dismissed for being filed out of time.

Comment: Deadlines are important.

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No exclusive right to use the gear device

In Rotary International v. Pegroup, Inc., IPC No. 14-2013-00177 (January 04, 2017), Opposer Rotary International (“Opposer”) filed an opposition to the registration of Pegroup, Inc.’s (“Respondent-Applicant”) FOODMACH mark. The Adjudication Officer ruled that the competing marks provided below are not confusingly similar.

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Trademarks are confusingly similar if the overall presentation of both marks would lead the public to believe that the goods to which the marks are affixed emanate from the same source, or are connected or associated with each other.

In this case, the competing marks are distinct in sound, appearance, and connotation. The Adjudication Officer ruled that what is impressed on the mind of a consumer who encounters the competing marks are the words FOODMACH and ROTARY. The only similarity between the two marks is the use of a gear device. However, such similarity is not sufficient as consumers can easily distinguish between the two marks.

Moreover, Respondent-Applicant’s mark is endowed with other distinguishing features. Therefore, the competing marks are distinct in sound, appearance, and connotation. In addition, the BLA cited four trademarks belonging to different proprietors that use a gear device in Class 35. Thus, Opposer does not have the exclusive right to use the gear device in Class 35.

Questions:

Why did the Opposer oppose the subject mark?

Do the Opposer and Respondent-Applicant offer the same service?