含羞草社区

The Philippines is signatory to the following IP treaties: Madrid Protocol, World Intellectual Property Organisation (WIPO) Copyright Treaty, WIPO Performance and Phonograms, Patent Co-operation Treaty, Rome Convention, Budapest Treaty, WIPO Establishment Convention, Paris Convention, and Trade Related Aspects of IP Rights (TRIPS Agreement). The governing law on IP is RA.8293, or the IP Code, which established the Intellectual Property Office of the Philippines (IPOPHL) and has the mandate to administer and implement state policies on IP to strengthen IP rights protection in the country.

The 1987 Constitution of the Philippines enshrines IP protection as a state policy – “to protect and secure the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations”. This policy of IP protection is not limited to its citizens, as the IP Code reiterates the country’s obligation to afford to “nationals of a country which is a party to any convention, treaty or agreement relating to intellectual property rights to which the Philippines is also a party”, the same protection. With this legal milieu, the venues for IP protection in the Philippines have never been more varied, abundant and accessible.

However, application of such principles is a matter of national law, so there could be differences in terms of specific protection of IP rights. Those entering the Philippines market to sell their products and/or services are encouraged to register, protect and enforce their rights where necessary, and to seek advice from local counsel.

Trademarks

Under the IP Code, a trademark is any visible sign capable of distinguishing the goods or services of an enterprise. Scent, sound, touch and taste marks have not yet been recognised as registrable, but other marks considered non-traditional such as 3D marks, position marks, holograms, motion marks and colour marks are registrable. Foreign words, provided they are accompanied by a translation or transliteration, can be registered as trademarks in the Philippines.

Granting trademark registration is on a first-to-file basis with a protection period of 10 years from the date of filing. To maintain the application or registration, a declaration of actual use (DAU) must be filed within three years, and every year after the 5th anniversary from registration, and after renewal on the 10th year.

It used to be that a prior user in good faith could defeat a registrant. But in September 2020, with the decision in the landmark case of Zuneca v Natrapharm, with our firm representing Zuneca, the rule that ownership of a mark is acquired through use was abandoned. However, the first-to-file registrant must be in good faith to acquire all the rights in a mark, otherwise it is open to cancellation.

Patents

The law on patents (Part II of the IP Code) covers inventions, utility models, industrial designs and layout design of integrated circuits. Patents are granted on a first-to-file basis. The protection periods for each right, commencing from the date of filing are: invention patents – 20 years, with annuities starting from the fourth year; utility models – seven years without extension; industrial design – five years, with two extensions of five years each. The registration of a layout design is valid for 10 years without extension and shall commence: (1) on the date of the first commercial exploitation; or (2) on the filing date, if the layout design has not been exploited commercially.

To be patentable, the invention must have novelty, an inventive step and industrial applicability. The element of novelty means that the invention does not form part of prior art, which refers to everything that has been made available to the public anywhere in the world before the filing or priority date of the application claiming priority. The IPOPHL adopts an expeditious registration process for utility model and industrial design applications, in that such applications are registered without substantive examination provided all required fees, including fees for publication are paid and all formal requirements set forth in the rules are complied with.

Copyright

Copyright is a type of intellectual property that protects original intellectual creations of an author who is a natural person, including literary, artistic, dramatic and musical works, as well as computer programs and cinematographic and audiovisual works, and other works in the literary and artistic domain, from the moment of its creation. Copyright includes both economic and moral rights. Registration is not required, but is desirable particularly when filing or defending actions for infringement. The term of protection is the lifetime of the author and 50 years after his death.

Enforcement

The National Committee on Intellectual Property Rights (NCIPR) in the Philippines was created to strengthen intellectual property rights enforcement and co-ordination among relevant agencies. It is an interagency body composed of 15 members such as the Department of Justice, Bureau of Customs, Food and Drug Authority, and others, with the Department of Trade and Industry as chairman, and the IPOPHL as vice chairman and secretariat.

Other than formulating policies on IP enforcement, it has the responsibility to intensify regular and effective enforcement against IPR violations and maintain appropriate co-ordination with the judiciary to ensure that courts are adequately skilled in intellectual property cases, and improve the adjudication of IP cases. For 2024, the NCIPR seized PHP40.99 billion (USD719.3 million) worth of counterfeit products.

Violations of IP rights are actionable by administrative, civil and criminal proceedings. Administrative actions are handled by the Bureau of Legal Affairs (BLA) of the IPOPHL, which decides cases based on substantial evidence. Mediation is mandatory and so far, since its introduction in 2011, the BLA has about a 25% success rate.

For civil and criminal actions, the Supreme Court designated several Regional Trial Courts (RTCs) in the country as Special Commercial Courts to handle IP-related cases. Criminal cases for patent infringement are available only if the responsible party is a repeat infringer.

To prove copyright infringement, the plaintiff must show that the defendant had access to the plaintiff’s work and that the defendant’s work is substantially similar to the plaintiff’s work. For civil actions, the degree of proof required is a preponderance of evidence. Appeals from the decisions of the RTC are brought before the Court of Appeals, then to the Supreme Court.

At the IPOPHL, oppositions to trademark applications, as well as petitions for the cancellation of registered trademarks and patents, may be brought before the BLA. The decisions of the BLA may be brought up to the BLA director and then the Office of the Director-General, before subsequently being elevated to the Court of Appeals, and then the Supreme Court.

Part of the IPOPHL is also the Intellectual Property Rights Enforcement Office (IEO), created in 2020, with a focus on stopping counterfeiting and piracy. After evaluation of a complaint, the IEO may recommend: the issuance of a notice/warning; the issuance of a visitorial order; the issuance of a compliance order; or referral to law enforcement agencies for case build-up.

For border control, IP recordation with the Bureau of Customs (BOC) is available to an IP rights-holder which is valid for two years. This is a continuing alert to the BOC examiners to watch out for counterfeit products.

In the realm of online commerce, an IP rights-holder can become a signatory to the memorandum of understanding (MoU) between e-commerce platforms and brand owners to facilitate take-down requests and exchange information. The MoU was signed in 2022, and administered by the IPOPHL, and now includes famous e-commerce platforms such as Shopee, Lazada and TikTok.

Finally, the Internet Transactions Act of 2023 imposes subsidiary liability on e-marketplaces and digital platforms that facilitated the internet transaction that is a subject of a civil action or administrative complaint, if it: failed to exercise ordinary diligence; failed, after notice, to act expeditiously in removing or disabling access to infringing goods or services; or failed to provide the contact details of an infringer without legal presence in the Philippines, despite notice.

With these tools of IP protection, IP rights holders can be confident and secure in their IP-related investments and transactions in the Philippines.