new rules in the philippines

7/29/2019 New Rules in the Philippines

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New Rules In The Philippines

The Supreme Court of the Philippines announced new Rules of Procedure for IP rights cases on October 18 2011.

The Rules took effect on 8 November 2011 and govern new and pending civil and criminal actions for IPR violations lodgedbefore the Special Commercial Courts designated by the Supreme Court. The Rules aim to eliminate aspects of the generarules of procedure which do not apply to IPR cases.

The salient features of the new Rules are:

(1) Authority is conferred to the Special Commercial Courts in Quezon City, Manila, Makati and Pasig to issue search and seizure warrants enforceable nationwide.Additionally, the Special Commercia l Courts in other jurisdictions can also so issue warrants but the writs will be applicable only in their jurisdictions.

(2) Orders issued under the Rules are immediately executory even pending appeal.

(3) Cases may be submitted for decision on the basis of each partys position papers immediately after pre-trial, clarificatory hearing or trial. Generally a decision hato be rendered within 45 days (from e.g. receipt of the last position paper) or 60 days after receipt of the final pleading, if trial ensues.

(4) There are presumptions under the Rules, set out below with other important points. In general, fraudulent intent on the part of the defendant is already presumed

1.Trademark infringement and unfair competition cases:

o Certificate of registration is considered prima facie evidence of the validity of registration, registrants ownership of the mark and registrants exclusive righto use it;

o Criteria for recognising well-known marks and likelihood of confusion are now part of the Rules;o Likelihood of confusion is presumed where an identical sign/mark is used for identical goods/services;o Intent to defraud is presumed:

for passing off a product by using imitative devices, signs or marks in the general appearance of the goods thereby misleading prospective purchasers; for making any false statement in the course of trade to discredit the goods or business of another; where striking similarity in the appearance of the goods as packed and offered for sale.

2. Copyright Cases:

o Copyright is presumed to subsist in the words or in the subject matter to which the action relates; ownership is presumed to belong to the complainant ifso claimed through affidavit evidence (unless defendant disputes and proves to the contrary);

o Registration and deposit of a work with the National Library or the Intellectual Property Office does not raise presumption of ownership, nor is it anindispensable condition for a claim of infringement;

o There is the presumption of ownership by the person whose name is indicated on a work in the usual manner as author and by the person or bodycorporate whose name appears on audio-visual work in the usual manner.

3. There is the availability of order of destruction any time after filing of complaint or information, and retention of representative samples which lead to savings instorage costs.

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Pirates And Counterfeiters: Beware of Oplan Holistic

On June 21, 2008, the Philippines National Committee on Intellectual Property Rights (NCIPR) was set up to strengthen the efforts of the Philippine government incurbing piracy and counterfeiting. The Committee is composed of the Department of Trade and Industry (DTI) as chair and the Intellectual Property Office (IPOPHL)as vice-chair and other member agencies such as the Department of Justice (DOJ), Department of the Interior and Local Government (DILG), Bureau of Customs,National Telecommunications Commission (NTC), National Bureau of Investigation (NBI), Philippine National Police (PNP), Optical Media Board (OMB), NationalBook Development Board (NBDB) and Food and Drug Administration (FDA).
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This resulted in the birth of IPOPHLs Oplan Holistic.According to Ricardo Blancaflor, Director General of theIPOPHL, with Oplan Holistic, we [now] have the chanceto become more aggressive when asked on how thiscampaign differs from past strategies. To date, IPOPHLhas signed a deal with the Philippine Ports Authority(PPA) to implement strict border control measures inorder to prevent the use of the Philippine seaports asentry and exit points of operated and counterfeit goods.IPOPHL has also conducted workshops on intellectualproperty and identification of counterfeit and pirated

goods for the benefit of the officials of the PPA.Agreements were also signed with the Securities andExchange Commission (SEC) and the Bureau ofCustoms to deputize the IPOPHL in enforcingintellectual property laws.

IPOPHL has signed a deal with the Philippine PortsAuthority to implement strict border control measures inorder to prevent the use of the Philippine seaports asentry and exit points of operated and counterfeit goods.

The IPOPHL did not stop there. As part of its OplanHolistic, IPOPHL sought enforcement mandate fromMalacaang the residence and main workplace of the

Philippine President through the DTI, such as thegranting of visitorial rights in order to be allowed toinspect warehouses where commodities to be seized

are suspected to be stored, to secure copies of documents pertaining to the nature and particulars of the commodity or goods subject to importation and to prosecuteIPR violations, piracy, counterfeiting and other similar unlawful acts all with the strategy of checking on mall owners compliance and border control. According toBlancaflor, with such rights, the IPOPHL will ensure that those who violate will be meted out with cancellation of business name and registration and mayors permitsand charged in courts.

In its push for a more holistic approach in the countrys battle against piracy, the IPOPHL is including the cancellation ofUS visas of mall owners as one of itsenforcement powers. It also opened piracy hotlines in order to bolster its call for support from the public to report places where pirated and counterfeit goods are sold

Three years down the line, was the IPOPHL successful in its drive to promote respect for intellectual property rights and the war against piracy? The statistics say itall. In 2009, the NCIPR hauled in P5.6 billion (US$129 million) worth of fake goods. In the period of January to November 2010, it seized P4.3 billion (US$99 million)worth of fake goods.

In February this year, the IPOPHL, together with the BOC has confiscated counterfeit or imitation versions of known footwear brands which were consigned to Orient

Seas Trading and Anchorage Indenture Import Export. Both shipments were found to contain counterfeit Havaianas, Nike, Lacoste, Crocs and other leading footwear

brands. The estimated value of the fake branded shoes consigned to Anchorage Indenture was P60 million (US$1.39 billion) while that of Orient Seas was estimated

to be worth at least P80 million (US$1. 85 billion).

In April this year alone, the IPOPHL, together with the Bureau of Customs, has confiscated and destroyed thousands of smuggled counterfeit products from importersidentified as Multi Karat Enterprises and Portwings Trading, amounting to at least P300 million (US$6.95 billion). The condemned articles were identified by CustomsCommissioner Alvarez as imitations of Energizer batteries and an array of well-known brands such as Louis Vuitton, Chanel, Gucci, Lacoste, Breitling and Nike.

In May of this year, the USTR removed the Philippines from the Out-of-Cycle Review (OCR) for the first time. This is a major step for the new officials consideringthat we took a major step in addressing counterfeit, says Blancaflor.

The Philippines was removed from the priority watch list in 2006 and was since placed in the ordinary watch list with an out-of-cycle review conducted by the USTR in2008-2010. We are only one step away from being removed completely, says Blancaflor.

The fact that the Philippines was removed from the OCR is a good indication that intellectual property rights enforcement in the country is gaining momentum. Weare halfway there, says Blancaflor. With the amendment of the Intellectual Property Code of the Philippines passing the third reading in Congress, more can beexpected of Oplan Holistic. The salient areas of amendments include 1) setting up of the Bureau of Copyrights within IPOPHL, which have not only regulatory powersbut enforcement powers as well; 2) accession to WIPO Internet Treaties; and 3) legislated enforcement powers of the IPOPHL.

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Well-Known Marks : The Philippines Standard

Several international instruments, including the Paris Convention and the TRIPs Agreement, mandate that member states provide for amechanism which affordsprotection to well-known marks. However, these international Instruments do not specifically set out in stonethe exact mechanism which member states need to adopt. Consequently, there have been two significant approaches adopted bycountries:

(a) The first is a full-fledged mechanism for the protection of well-known marks. Thailand is one example, where a separate mechanismexists for the recordation of well-known marks;

(b) The second is the conferment of 'well-known' status on marks through the adversarial process. Indonesia is one such example.

The Philippines has chosen to adopt the latter. Certain competent authorities, namely theBureau of Legal Affairs(BLA), the Office of the Director General and thecourts exercising jurisdiction, have the mandate to 'declare' that a mark is well-known. The approach adopted by the BLA in deciding whether a mark is well-known ornot reflects the Joint Recommendation concerning Provisions on the Protection of Well- Known Marks, adopted by the World Intellectual Property Organisation.Interested parties would need to furnish evidence demonstrating 'use' and the 'well-known' status of the mark. The concerned authority would then peruse theevidence in order to ascertain, interalia, the degree of knowledge or recognition of the mark to the relevant sector; the duration, extent and geographical area of useof the mark; the duration, extent and geographical area of promotion of the mark (including advertising and publicity at fairs, exhibitions, etcs.); records of successfulregistration or protection conferred in other jurisdictions (if any); and the brand value of the mark. Upon being satisfied that the mark fulfills the requirements, the markshall be declared a well-known mark. Below is a bird's eye view of recent decisions issued by the BLA dealing with the well-known status of marks:

The 'BOTOX' markFollowing the submission of extensive evidence including registrations in other jurisdictions, advertising campaigns, awareness programs and other promotion, themark ' BOTOX' was declared as a well-known mark, in Allergan, Inc v. Image Sense Corporation (Decision No. 2010-50 dated July 27, 2010)

'FACEBOOK'Like in the case of 'BOTOX', the proprietor submitted extensive evidence demonstrating the well-known status of the mark. Consequently, the mark 'FACEBOOK'was declared 'well-known' in Facebook, Inc v. Lina Petalver Celino (Decision No. 2010-62 dated July 29, 2010)

'TWO POLO PLAYERS AND HORSE LOGO'The mark 'TWO POLO PLAYERS AND HORSE (Logo)' has also been declared as a well-known mark. The pertinent decision of the BLA is United States PoloAssociation v. Ramesh L Mirpuri (December No. 2010-49 dated 30 July 2010).

On the other hand, the proprietors of the marks IONAX, OPTIGARD, FRITOS, FRITOLAY, TOSTITOS and DORITOS, COLGATE TOTAL and CINEMAX sought adeclaration as to the well-known status of their respective marks. However, their requests were turned down by the BLA, owing to insufficient evidence todemonstrate their well-known status.

Obtaining a declaration that the mark is well-known confers significant benefits. Additionally, these benefits are conferred without going through a registration processand the need to abide by statutory stipulations. Thus, it indirectly protects the mark, and prevents the exploitation by other entities.

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Enforcement Of IP Laws In Philippines A New Beginning

Piracy has wrecked havoc on the economy of the Philippines, adversely affecting economic activity and stiflingorganized industry. While the Philippines remains in the Watch List of the Office of the US Trade Representative (USTR),

the USTR has recognised the innovative and sustained efforts of the Intellectual Property Office of the Philippines(IPOPHL) to undertake effective enforcement strategies.

In 2010, IPOPHL embarked on a "Holistic Approach" in the country's battle against piracy. This new strategy calls forconcerted action whereby "each stakeholder, IP owner, user and enforcement agencies to play their respective crucialroles in safeguarding IP rights. Law enforcement agencies are mandated to further their coordination efforts at all levels toensure that there are no loopholes for pirates to explore and no bottlenecks remaining unclogged."
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To address widespread piracy and counterfeiting, the Philippine Government adopted the following measures:

1. Establishment of an Operations Center in May 2010 that receives complaints from rights holders and if necessary, undertakes case build up to ensure prosecutionof IPR violation cases.

2. Release of Php 10,000,000 (approximately US$ 227,272.73) from the Office of the President in October 2010 for the operational requirements of the NationalCommittee on Intellectual Property Rights (NCIPR) to include promotion, protection and enforcement of IPR.

3. Provided for a free warehouse facility which can be used by rights holders during the pendency of IPR violation cases. This was undertaken to address the cost ofstorage whenever there are seizures made and cases filed.

4. IPOPHL employees were deputized as agents of Optical Media Board (OMB) and Bureau of Customs (BOC) arming the latter with visitorial and enforcementpowers for optical media products and on imported items in violation of the IP Code.

5. Checking on mall owners compliance by IPOPHL. In December 2010, IPOPHL wrote to Greenhills Shopping Center, an establishment notorious for its counterfeitgoods, and requested the mall owner to disallow stalls or lessees selling counterfeit products. Violating lessees can expect to have their lease terminated and lessorsmay find their business licences cancelled and US travel visas revoked.

6. Strengthened internal mechanisms for disposition of IP cases.

Office Order No 186 was issued giving the rights holder an immediate remedy of a temporary restraining order upon

complaint if the matter is of extreme urgency. There is also an arrangement with the Department of Justice to providefull- time prosecutors for the handling of IPR violation cases. Moreover, it is now possible to file appropriate legalactions for the cancellation of the business name of the erring establishments registered with the Department of Tradeand Industry as well as the Securities and Exchange Commission.

The measures taken by the Philippine Government in 2010 have shown a heightened commitment to enforce IP rightsand demonstrate a firm resolve to prosecute violators to the full. Philippines IPO director general Ricardo Blancaflor has said: "We are only one step away from beingremoved completely" from the USTR Watch List.

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