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Most remedies for protecting IP owner rights in the Philippines are set out in Republic Act No. 8293, otherwise known as the IP Code of the Philippines. This law codifies what used to be separate, individual laws on patents (Republic Act No. 166), trademarks (Republic Act No. 165), and copyright (Presidential Decree No. 49).

The IP Code defines the concepts of the three main IP regimes, delineates the rights of an IP owner and provides remedies available to protect those rights.

Patents

Infringement remedies. Whether a patent involves a product or a process, patent owners enjoy several exclusive rights. They are entitled to restrain, prohibit and prevent any unauthorised person or entity from making, using, offering for sale, selling, or importing their product, which is either protected by a patent or obtained, directly or indirectly, from a process protected by a patent.

Any violation of such rights constitutes patent infringement. The patent holder may recover damages sustained by the infringement from the infringer in a civil action, as well as attorney fees and other expenses of litigation.

The patentee may likewise secure an injunction for protecting the rights. Courts are likewise empowered to order that goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation.

If the infringement is repeated, the infringer will be criminally liable to im-
prisonment from six months to three years and a fine of PHP100,000 (USD1,780) to PHP300,000.

Inventor remedies. The Intellectual Property Code similarly provides the remedies for a “true and actual” inventor, or someone deprived of a patent without consent or through fraud.

If the true or actual inventor is declared by a final court order or decision to be the true or actual inventor, then the court shall order their substitution as the patent holder or, if the true inventor prefers, cancel the patent and award damages in their favour, should the circumstances so warrant.

Patent cancellation. Any interested person may petition to cancel a patent or any claim or part of a claim, on the grounds that it: (1) concerns an invention that is not new or patentable; (2) does not disclose the invention in a manner sufficiently clear and complete; or (3) is contrary to public order and morality.

If it is found that there are sufficient grounds to cancel a patent or claim, a committee formed and mandated by the director of legal affairs to adjudicate the matter shall order the patent or any claims cancelled.

However, a patent owner may also amend the patent during the cancellation proceedings. If the amended patent is found to meet the requirements of the law, then the committee may decide to maintain it, as amended.

Utility models and industrial designs. Rights and remedies available to a patent holder may likewise be subject to mutatis mutandis (necessary changes) by the owner of a utility model and holder of an industrial design, integrated circuit or layout design certificate.

Trademarks

Opposing cancellation of registration. Any person believing they would suffer damages from registration of a mark may formally oppose the application in writing. Such opposition shall be verified and include a factual and legal basis.

The law similarly provides that any person believing they will be damaged by a trademark registration may file a petition to cancel such registration within five years from the date of registration of the mark.

However, a petition to cancel may also be filed at any time if the registered mark or a portion of it becomes the generic name for the goods or services, or has been abandoned.

A petition may also be filed at any time if its registration was obtained fraudulently; in a manner contrary to law, or if the registered mark is being used by, or with the permission of, the registrant to misrepresent the source of the goods or services.

A petition for cancellation of registration may also be filed at any time if the registered owner of the mark, without legitimate reason, fails to use the mark within the Philippines during an uninterrupted period of three years or more.

Mark infringement. Liability for trademark infringement falls on anyone using any reproduction, counterfeit, copy or colourable imitation of a registered mark, or the same container or dominant feature in commerce, without the consent of the owner. This includes application of the registered mark to labels, signs, prints, packages, wrappers, receptacles or advertisements in a manner likely to cause confusion or a mistake.

Unfair competition. The Intellectual Property Code provides that a person identified in the mind of the public by goods he/she manufactures or trades, or business or services, from those of others has property rights in the goodwill of those goods or services, protected in the same manner as other property rights.

This is regardless of whether a registered mark is involved. As such, any person who employs deception or any other means contrary to good faith to pass off such goods or services as those of the one having established such goodwill, or commits any act calculated to produce said result, shall be guilty of unfair competition.

In particular, guilt of unfair competition shall be deemed if the sale of goods gives the general appearance of goods of another manufacturer or dealer, in a manner that would influence purchasers to believe the goods are those of another manufacturer or dealer, to deceive and defraud the public.

A person may also be deemed guilty of unfair competition when, by any artifice or device, employing any other means calculated to induce the false belief they are offering services of another who has identified such services in the mind of the public.

Those who make any false statement in the course of trade, or act in a manner contrary to good faith or calculated to discredit the goods, business or services of another, may also be deemed liable for unfair competition.

Copyright

Anyone infringing a copyright may be subject to an injunction restraining such act of infringement.

Additionally, the court may order that the infringer pay the copyright proprietor, or his/her assigns or heirs, actual damages including legal costs and other expenses, as well as profits the infringer may have made due to such infringement. The infringer may likewise be ordered by the court to deliver sales invoices and other documents evidencing sales, as well as all articles and their packaging alleged to infringe a copyright, and implements for making them, for impounding during pendency of the action.

Infringers may similarly be ordered to deliver all infringing copies or devices, as well as all plates, moulds or other means for making infringing copies, for their destruction. Finally, damages may be ordered as the court deems proper.

Other remedies

The IPOPHL IP Rights Enforcement Office. The Intellectual Property Office of the Philippines (IPOPHL) has an IP Rights Enforcement Office (IEO) created under IPOPHL Memorandum Circular 2020-049, with enforcement powers that have been expanded to include electronic, digital and online channels.

These rules were issued in response to growing concerns about counterfeiting and piracy online. The IEO also has the authority to conduct independent motu proprio (on its own impulse) monitoring in both online and physical marketplaces.

In response to an administrative complaint by an IPR owner on counterfeiting and piracy, the IEO can issue an enforcement order to carry out the following: (1) request removal of counterfeit goods or content including advertisements or the blocking of access; (2) issue cease and desist orders; (3) order removal of counterfeit or pirated goods or content from physical establishments; and (4) urge proper government agencies to cancel business permits and licences.

Bureau of Customs Administrative Order No. 6-2002. An IPR holder/owner may apply to the commissioner of customs to record their IPR on the Bureau of Customs IPR Registry. On payment of a recording fee, they may request the bureau to monitor infringing goods at the border and determine whether such goods are subject to seizure and forfeiture.

Even if an IPR holder/owner’s IPR is not recorded, they may request the commissioner to issue an alert or hold order against any importation of suspected infringing goods.