Intellectual PropertyEnforcement Guide:Philippines

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Although IP laws and regulations in the

Philippines are already among the most

stringent in the region, the region suffers from

various IP protection problems.

There are challenges posed by gaps in the

current legal framework, lack of awareness of

IPR, and corruption. Its legal system is US-based

and the Philippines is a WTO member. Most IP

enforcement takes place in Metro Manila but

other areas, such as Cebu and Davao City, are

also of interest in view of their commercial

importance.

Introduction tothe Philippines

The Philippines, with its over 106 million peoplespread over 7,641 islands, high Englishlanguage penetration, and close relationshipwith the United States, is a rapidly developingmarket in South East Asia. Metro Manila, wherethe central business districts are located, has apopulation of over 12 million.

IP Rights and IP Laws

Copyright, trade marks, including well-knownmarks, registered designs, utility models andpatents are protected in the Philippines. Tradesecrets are recognised as IPs but are left to thebe protected pursuant to contractualagreements of the parties. Geographicalindications (GIs) are also recognised but there isno separate system to register the same. GIs, atthe moment, may be registered as trademarks.In addition, there is protection against unfaircompetition at both the civil and criminal level.IPRs are registered at the Intellectual PropertyOffice. The Intellectual Property Code of thePhilippines (Republic Act 8293, as amended byRepublic Act No. 10372) is a unified IP law thatgoverns all intellectual property matters.

Forum

IP cases, whether civil or criminal, are filed inSpecial Commercial Courts (SCCs), which alsohear other types of commercial case. Theexpectation is that these courts have built upexpertise in IP and other commercialissues. The IPOPHL also has the Bureau of LegalAffairs, which has administrative jurisdiction tohear IP complaints.

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Investigation

Most counterfeit/pirated goods sold in thePhilippines are imported from China.Investigations are crucial to determine thesteps to take in enforcement. This involvesassessing the target and the extent of itsoperations and securing evidence ofinfringement. The investigation work maycover online or offline market surveys, sitevisits, trap purchases, in-depth investigation,and surveillance.

Enforcement Bodies

Criminal IP cases can be brought by theNational Bureau of Investigations (NBI) or thePhilippines National Police (PNP) on complaintfrom an IP holder. Cases are prosecuted by theDepartment of Justice prosecutors.

The Bureau of Customs has authority to detainand seize infringing imports and exports at theborders. It can also seize counterfeit and mis-declared goods inland.

The Intellectual Property Office of thePhilippines (IPOPHL) has the IP EnforcementOffice (IEO), which may be sought forassistance in complaints involving counterfeitsand pirated goods. The IEO may issue noticesto warn entities against their infringing actionsand also conduct visits. They can also refer thecomplaint to other government agencies, suchas NBI and PNP for case build up.

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Raid Requirements

In case a criminal raid action is needed, thefollowing requirements should be prepared:

enforcement Power of Attorney (notarisedand legalised/apostilled);certified copies of registration certificatesLetter of request addressed to the NBI/PNPevidence of counterfeiting (actual samplestogether with sales invoice/official receiptgathered from investigations);affidavits of investigator/s and NBI/PNP;genuine samples of products forcomparison purposes; anda product expert (preferably local) who willattest on the genuineness of the products.

The search warrant application must be filedbefore a SCC of the locality where the raid willbe conducted, with the exception of SCCs inQuezon City, Makati, Pasig and Manila, whichare authorised to issue search warrants thatare enforceable nationwide.

The judge must be satisfied by the evidencethat there is probable cause that infringingacts are being committed.

Raid actions are usually suggested fordistributor cases. We have a network ofmarket spotters and informants who candevelop investigation leads for such actions.Raids of retail shops are rarely cost-effective,but can nevertheless send a strong message tothe market, especially if the raid is conductedin a hotspot.

Another consideration in a raid action isstoring the counterfeit goods pending thefiling of a criminal complaint and/or pendingthe criminal case. Storage charges can build upover time. Thus, securing the immediatedestruction of the seized items is the criticalnext step after conducting the raid.

Settlement

After a raid, IP holders have been able to reachsettlements with the infringers, which includethe following terms:

consent of the infringer to the destructionof the infringing goods;signed undertakings from the infringer;identification of the supplier and/ormanufacturer of the infringing goods;a public apology by the infringer;payment of damages; andwithdrawal of the complaint and release ofthe infringer.

Settling the case is one way to avoid lengthycriminal prosecution and to ensure immediatedestruction of the seized infringing goods.

Criminal & CivilIP Enforcement

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Civil Enforcement

Civil actions for IP infringement are filed at theSCCs and the main goal is to recover damagesfrom the infringer. This is recommended only ifthe IP owner has evidence of the profit of theinfringer for the infringement, which can beshown to the court. Civil cases also take years toreach first instance decision.

Criminal Prosecution

If the IP holder pursues criminal action after araid, a complaint must be filed before theDepartment of Justice. The complaint will beevaluated by a public prosecutor in two tothree preliminary investigation hearings. If thepublic prosecutor confirms that there isprobable cause that violation of the IP Code iscommitted, a criminal information will beaccordingly filed before the courts.

Once the information has been raffled to aSCC, the criminal court action will schedule thearraignment of the infringer and the criminalprocess will take its course. It is usual for theinfringers to abscond, which results in casesbeing archived. In some instances, theinfringers will challenge every step of theproceeding and/or request for postponementsto prolong the case and avoid jail time.

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Administrative Enforcement

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The Bureau of Legal Affairs of the IntellectualProperty Department has jurisdiction overadministrative complaints for IP violations,provided the total damages claim is overapproximately US$4,000.

The procedure is similar to a civil action. Theparties exchange complaint, answer, and suchother pleadings as may be allowed byregulations. Remedies include preliminaryinjunctions, preliminary attachments as well asdamages and administrative fines.

Warning letter programs

Warning letters can be effective againstlegitimate businesses, especially when this iscombined with persistent chaser calls. Weemploy this method to resolve cases withoutthe need to go to court. This is alsoappropriate when the dispute involved is notfor an outright counterfeiting matter, e.g.,unfair competition issues or confusinglysimilar use of registered mark are involved.

Among the demands included in our warningletter is for the target to sign an undertaking.While signed undertakings are rarely secured,nevertheless, the warning letter and repeatedchaser calls are sufficient deterrent to thetargets to refrain from further selling infringingproducts.

Our team is highly trained in handling warningletter programs that will generate the desiredresults.

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OnlineEnforcement

Our team runs multiple forms of onlinemonitoring and takedown programs. Weconduct online surveys and monitoring, trappurchase from online targets, and transitioningthe online work to offline investigations. Ourteam also handles takedown programs invarious online shopping platforms.

The time limit for the suspension is ten (10)working days from the date the suspensiondecision is issued. It can be extended for afurther ten (10) days in case the customs needto consult IP experts’ opinions. Uponexpiration of the suspension period, Customsmust:

issue a decision to accept the caseaccording to administrative proceduresonce confirmation is done of thesuspended infringing goods;issue a decision on detention of goods incase there are sufficient grounds todetermine the suspended infringing goods;impose administrative sanctions andremedies if there are sufficient grounds todetermine the suspended infringing goods;andtransfer the case to the EP for investigationand criminal prosecution if the value ofcounterfeits meets the threshold forcriminal prosecution.

Upon expiration of the suspension period, ifthe IPR holders do not initiate a lawsuit orCustoms does not accept the case inaccordance with administrative violationhandling procedures, Customs will resume thecustoms procedures for the consignment.

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BorderProtection

Customs Recordal

The first step in border protection is to securethe customs recordal of the IP before theBureau of Customs (BOC). The applicationprocess requires several documents, includingcertified copies of registrations of IPs, andinformation about the legitimate channels ofdistribution from the IP owner.

The customs recordal is effective for a two-year period, which is renewable.

The customs recordal is crucial in introducingthe brand to the BOC. The BOC is expected torefer to the customs recordal if the IP isaffected in a seizure/raid action by the BOC.The IP owner, in turn, is expected to provideassistance to the BOC through issuingcertifications whether or not an item seized isgenuine.

Brand familiarity training

The BOC also entertains brand familiaritytraining opportunities for their frontlinepersonnel. This is encouraged in order toencourage brand recall among the BOCofficials and personnel. This is especiallysuggested to be implemented in ports wherecounterfeits are reported to have passedthrough.

Raid action by the BOC

Majority of the raids conducted by the BOCare inland, as they can raid any establishmentprovided the same is not a residential buildingor a dwelling area. The BOC relies onintelligence from the IP owners aboutincoming shipment of counterfeits to conductseizures at the border.

Edmund Jason BarandaTel. +63 2 4031686

Fax +63 2 4031522

Email manila@rouse.com

Baranda & AssociatesSuite 1002

Fort Legend Towers

3rd Avenue Corner 31st Street

Bonifacio Global City

Taguig City

Metro Manila

Philippines

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