PART 11
Petitions and Appeal
RULE 1100. Nature of the function of Examiners. – The function of determining whether or not an application for registration or renewal thereof should be allowed or denied under the facts disclosed in the application and in the references consulted by the Examiner and under the applicable law (statutory and decisional), is a quasi-judicial function and involves the exercise of judicial discretion.
Thus, with respect to such function, the Director cannot lawfully exercise direct control, direction and supervision over the Examiners but only general supervision, exercised through a review of the recommendation they may make for the grant of registration and of other actions, and through a review of their adverse decisions by petition or appeal.
RULE 1101. Petition to the Director to question the correctness of the action of an Examiner on a matter not subject to appeal. – Petition may be filed with the Director from any repeated action or requirement of the Examiner which is not subject to appeal and in other appropriate circumstances. Such petition, and any other petition which may be filed, must contain a statement of the facts involved and the point or points to be reviewed. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition. The Examiner, as the case may be, may be directed by the Director to furnish a written statement setting forth the reasons for his decision upon the matter averred in the petition, supplying a copy thereof to the petitioner. The mere filing of a petition will not stay the maximum period of four months counted from the mailing date of the Examiner’s action subject of the appeal for replying to an Examiner’s action nor act as a stay of other proceedings.
RULE 1102. Appeals to the Director. – Every applicant for the registration of a mark or other mark of ownership may, upon the final refusal of the Examiner to allow registration, appeal the matter to the Director. Appeal may also be taken to the Director from any adverse action of the Examiner in any matter over which these Regulations give original jurisdiction to the Examiner. A second adverse decision by the Examiner on the same grounds may be considered as final by the applicant, petitioner, or registrant for purposes of appeal.
RULE 1103. Effect of a final decision of an Examiner which is not appealed. – A final decision of an Examiner which is not appealed to the Director within the time permitted, or, if appealed, the appeal is not prosecuted, shall be considered as final to all intents and purposes, and shall have the effect of res judicata in respect of any subsequent action on the same subject matter.
If an application is considered abandoned for failure of the applicant to respond to an action of the examiner on the merits e.g. citation of confusingly similar marks, the order declaring the application as abandoned which has become final shall likewise have the effect of res judicata.
RULE 1104. Time and manner of appeal. – Any petition or appeal must be taken by filing the petition in duplicate or a notice of appeal, as the case may be, and payment of the required fee within two (2) months from the mailing date of the action appealed from, must specify the various grounds upon which the appeal is taken, and must be signed by the petitioner or appellant or by his attorney of record. The period herein provided shall, in no case, exceed the maximum period of four (4) months from the mailing date of the action appealed from.
RULE 1105. Appellant’s brief required. – In case of an appeal, the appellant shall, within two (2) months, without extension, from the date of filing of the notice of appeal, file a brief of the authorities and arguments on which he relies to maintain his appeal. On failure to file the brief within the time allowed, the appeal shall stand dismissed.
RULE 1106. The Examiner’s answer. – The Examiner shall furnish a written statement in answer to the petition or appellant’s brief, as the case may be, within two (2) months from the order of the Director directing him to submit such statement. Copy of such statement shall be served on the petitioner or appellant by the Examiner.
RULE 1107. Appellant’s reply. – In case of an appeal, the appellant may file a reply brief directed only to such new points as may be raised in the Examiner’s answer, within one (1) month from the date copy of such answer is received by him.
RULE 1108. Appeal to the Director General. – The decision or order of the Director shall become final and executory fifteen (15) days after receipt of a copy thereof by the appellant unless within the said period, a motion for reconsideration is filed with the Director or an appeal to the Director General has been perfected by filing a notice of appeal and payment of the required fee. Only one motion for reconsideration of the decision or order of the Director shall be allowed.
RULE 1109. Appellant’s brief required. – The appellant shall, within one (1) month from the date of filing of the notice of appeal, file a brief of the authorities and arguments on which he relies to maintain his appeal. On failure to file the brief within the time allowed, the appeal shall stand dismissed.
RULE 1110. Director’s comment. – The Director shall submit within one (1) month his comments on the appellant’s brief if so required by the Director General.
RULE 1111. Appeal to the Court of Appeals. – The decision of the Director General shall be final and executory unless an appeal to the Court of Appeals is perfected in accordance with the Rules of Court applicable to appeals from decisions of Regional Trial Courts. No motion for reconsideration of the decision or order of the Director General shall be allowed.
