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 lodged before the Special Commercial Courts designated by the Supreme Court. The Rules aim to eliminate aspects of the general rules 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 Commercial 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 has to 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:

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Certificate of registration is considered prima facie evidence of the validity of registration, registrants ownership of the mark and registrants exclusive right to use it; Criteria for recognising well-known marks and likelihood of confusion are now part of the Rules; Likelihood of confusion is presumed where an identical sign/mark is used for identical goods/services; Intent to defraud is presumed: goods thereby misleading prospective purchasers;

for passing off a product by using imitative devices, signs or marks in the general appearance of the 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:

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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 if so claimed through affidavit evidence (unless defendant disputes and proves to the contrary); Registration and deposit of a work with the National Library or the Intellectual Property Office does not raise presumption of ownership, nor is it an indispensable condition for a claim of infringement; 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 body corporate 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 in storage costs. http://www.mirandah.com/en/categories/item/341-new-rules-in-the-philippines.html 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 in curbing 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), National Book Development Board (NBDB) and Food and Drug Administration (FDA).

This resulted in the birth of IPOPHLs Oplan Holistic. According to Ricardo Blancaflor, Director General of the IPOPHL, with Oplan Holistic, we [now] have the chance to become more aggressive when asked on how this campaign differs from past strategies. To date, IPOPHL has signed a deal with the Philippine Ports Authority (PPA) to implement strict border control measures in order to prevent the use of the Philippine seaports as entry and exit points of operated and counterfeit goods. IPOPHL has also conducted workshops on intellectual property and identification of counterfeit and pirated goods for the benefit of the officials of the PPA. Agreements were also signed with the Securities and Exchange Commission (SEC) and the Bureau of Customs to deputize the IPOPHL in enforcing intellectual property laws. IPOPHL has signed a deal with the Philippine Ports Authority to implement strict border control measures in order to prevent the use of the Philippine seaports as entry and exit points of operated and counterfeit goods. The IPOPHL did not stop there. As part of its Oplan Holistic, IPOPHL sought enforcement mandate from Malacaang the residence and main workplace of the Philippine President through the DTI, such as the granting of visitorial rights in order to be allowed to inspect 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 prosecute IPR violations, piracy, counterfeiting and other similar unlawful acts all with the strategy of checking on mall owners compliance and border control. According to Blancaflor, with such rights, the IPOPHL will ensure that those who violate will be meted out with cancellation of business name and registration and mayors permits, and charged in courts. In its push for a more holistic approach in the countrys battle against piracy, the IPOPHL is including the cancellation of US visas of mall owners as one of its enforcement 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 it all. 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 importers identified as Multi Karat Enterprises and Portwings Trading, amounting to at least P300 million (US$6.95 billion). The condemned articles were identified by Customs Commissioner 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 considering that 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 in 2008-2010. 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. We are halfway there, says Blancaflor. With the amendment of the Intellectual Property Code of the Philippines passing the third reading in Congress, more can be expected of Oplan Holistic. The salient areas of amendments include 1) setting up of the Bureau of Copyrights within IPOPHL, which have not only regulatory powers but enforcement powers as well; 2) accession to WIPO Internet Treaties; and 3) legislated enforcement powers of the IPOPHL. http://www.mirandah.com/en/categories/item/307-pirates-and-counterfeiters-beware-of-oplan-holistic.html

Well-Known Marks : The Philippines Standard Several international instruments, including the Paris Convention and the TRIPs Agreement, mandate that member states provide for a mechanism which affords protection to well-known marks. However, these international Instruments do not specifically set out in stone the exact mechanism which member states need to adopt. Consequently, there have been two significant approaches adopted by countries: (a) The first is a full-fledged mechanism for the protection of well-known marks. Thailand is one example, where a separate mechanism exists 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 the Bureau of Legal Affairs (BLA), the Office of the Director General and the courts 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 or not 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 the evidence 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 use of the mark; the duration, extent and geographical area of promotion of the mark (including advertising and publicity at fairs, exhibitions, etcs.); records of successful registration 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 mark shall 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' mark Following the submission of extensive evidence including registrations in other jurisdictions, advertising campaigns, awareness programs and other promotion, the mark ' 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 Polo Association 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 a declaration as to the well-known status of their respective marks. However, their requests were turned down by the BLA, owing to insufficient evidence to demonstrate 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 process and the need to abide by statutory stipulations. Thus, it indirectly protects the mark, and prevents the exploitation by other entities. Tagged under

Trademark

http://www.mirandah.com/en/categories/item/256-well-known-marks-the-philippines-standard.html Enforcement Of IP Laws In Philippines A New Beginning Piracy has wrecked havoc on the economy of the Philippines, adversely affecting economic activity and stifling organized 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 for concerted action whereby "each stakeholder, IP owner, user and enforcement agencies to play their respective crucial roles in safeguarding IP rights. Law enforcement agencies are mandated to further their coordination efforts at all levels to ensure that there are no loopholes for pirates to explore and no bottlenecks remaining unclogged."

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 prosecution of 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 National Committee 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 of storage 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 enforcement powers 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 counterfeit goods, and requested the mall owner to disallow stalls or lessees selling counterfeit products. Violating lessees can expect to have their lease terminated and lessors may 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 provide full- time prosecutors for the handling of IPR violation cases. Moreover, it is now possible to file appropriate legal actions for the cancellation of the business name of the erring establishments registered with the Department of Trade and 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 rights and 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 being removed completely" from the USTR Watch List.