The Philippines: Proof of authority to file action

December 08 2017

Many foreign IP owners have observed that in the Philippines there are too many documents required and formalities to be complied with in filing actions for the enforcement of intellectual property rights. Generally, technical rules are interpreted liberally. However, in certain instances, for example, to avoid multiplicity of suits, adherence to the procedural rules is necessary, as in the following case.

On September 6 2017, the Supreme Court of the Philippines affirmed the decision of the Court of Appeals in the case of Societe des Produits Nestle v Puregold Price Club (GR No. 217194), dismissing Nestle's appeal due to the failure of the latter to comply with the proper execution of the certification against forum shopping. This was an opposition case filed by Nestle on December 5 2008 against Puregold's application for the trademark "COFFEE MATCH" for being confusingly similar with its "COFFEE-MATE" trademark already registered with the Intellectual Property Office of the Philippines (IPOPHL). On April 16 2012, the Bureau of Legal Affairs of the IPOPHL dismissed Nestle's opposition and held that (i) Nestle's opposition was defective because the verification and certification of non-forum shopping attached to said opposition did not include a board of directors' resolution or a secretary's certificate that would show the authority of Dennis Jose Barot, Nestle's Regional Intellectual Property Adviser to execute the special power of attorney authorising its Philippine counsel to sign the said certification on behalf of Nestle. Barot's proof of his authority was a power of attorney signed by a Nestle officer whose own authority was not substantiated by a resolution of Nestle's board of directors, or a secretary's certificate attesting to said resolution.

The BLA further held that the term "COFFEE" appearing on both marks is generic or distinctive of the goods, and that the words "MATE" and "MATCH" are visually and aurally different that the consumer cannot mistake one for the other. Nestle appealed to the Office of the Director General, who on February 7 2014, sustained the BLA's decision. Nestle then appealed the ODG's decision to the Court of Appeals, who dismissed the appeal and the subsequent motion for reconsideration outright based on the above procedural lapse.

Nestle appealed the CA decision to the Supreme Court by way of a petition for review, and affirmed the CA's decision. Citing the 2004 case of Development Bank of the Philippines v CA, the Supreme Court held that "the failure to attach a copy of a board resolution proving the authority of the representative to sign the certification against forum shopping was fatal to its petition and was sufficient ground to dismiss since the courts are not expected to take judicial notice of board resolutions or secretary's certificates issued by corporations."