Upon joinder of the issues, the pre-trial conference shall be set. How are trademark infringement, unfair competition, and false designation prosecuted? In the event that such damages cannot be ascertained with reasonable certainty, the court may award as damages a reasonable percentage based upon the amount of gross sales received by the infringer in connection with the use of the IP owner’s trademark. Home | Site Map | Disclaimer | A PaperStreet Web Design, Licensing, Due Diligence, Contract Review, Utility Model and Industrial Design Registration, Overview: Trademark System in the Philippines, Overview: Patent System in the Philippines. An inventory and a return of the search warrant should be submitted to the court after the raid. The BLA may require the submission of a memorandum. Unfair competition is a form of copying and making false statements by one who passes off his own goods for those of another that has an established goodwill. It is only with this registration that you will be able to take legal action against trademark infringement by third parties who use your product names, designs, logos or packaging without your authority. Yes. Blood, sweat and tears. An exception to this rule is if the mark being infringed upon is an internationally well-known trademark that is also a well-known trademark in the Philippines. The act of any person who shall, without the consent of the owner of a registered trademark, use in commerce, reproduce, counterfeit, copy or imitate a registered trademark or a dominant feature thereof is tantamount to trademark infringement. By continuing to browse our website, you are agreeing to our use of cookies, and to our, Website Privacy, Terms of Use, and Cookie Notice, Family Law, Estate Planning, Wills and Succession, Corporate Law Services, Incorporation and Business Registration, Due Diligence, Mergers and Acquisitions, Labor Law, Commercial Law and Litigation, Administrative, Criminal & Civil Litigation, Intellectual Property Law, Entertainment Law & Litigation, Local Government, Election Law and Administrative Law, copycats or infringers who piggy back on the goodwill and popularity of others. If the aim is to deter continuing infringing acts done in a small scale, a visit/inspection by the Intellectual Property Enforcement Office or the Optical Media Board may suffice. You may visit us at the 16th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, 1605 Pasig City, Metro Manila, Philippines. Trademark infringement is the unauthorized use in commerce of a registered trademark or a copy or colorable imitation thereof, which results in the likelihood of confusion among the consuming public. 3. Upon termination of the period for reception evidence, the case shall be decided by the BLA within thirty (30) calendar days from submission. In the Philippines, trademark registration is handled by the Intellectual Property Office (IPO). MANILA Philippines- Hooters of America Inc. has won its trademark infringement case filed against a Filipino-owned sports bar which had been using the "Hooters"" name.This developed as Hooters Philippines held a party to celebrate the first anniversary of its first Manila outlet in Building D of the SM Mall of Asia on April 28.Kazunari Endo president of Inhouse Creative Inc. and managing director of … Any cookies that may not be particularly necessary for the website to function and is used specifically to collect user personal data via analytics, ads, other embedded contents are termed as non-necessary cookies. The Philippines has its RA 8293 which is known as the Intellectual Property Code of the Philippines which protects the result of a creative thought of an individual. Defenses in Action for Infringement. The total amount of damages claimed should be Php 200,000 or more. Before such conference, the parties will be required to submit a pre-trial brief containing a brief statement of the parties’ claims and defenses, suggestions for simplification of issues, list of documents with appropriate markings to be submitted as evidences, statement of stipulation of facts and openness to possibility of amicable settlement, limitation on the number of witnesses and other matters which may aid in the prompt disposition of the case. Thereafter, the Respondent shall have eight (8) months to present and offer his evidence. In resolving the present infringement case between LS Jeans Tailoring and Levi’s 501, the Supreme Court adopted the “holistic test” as previously applied in a similar trademark infringement case also involving maong pants or jeans (between the foreign brand “Lee jeans” and local bran “Stylistic Mr. Lee”). 4. Can one prevent counterfeit goods from entering the Philippines? We are located at the bustling Ortigas Central Business District in Pasig City, Metro Manila, Philippines. It is also committed by misrepresenting the nature, characteristics, quality, and geographic origin of the goods or services in the advertising or promotion of said goods and services. An administrative action for trademark infringement, unfair competition and/or false designation may be filed with the Bureau of Legal Affairs (BLA) of the IPO  within four (4) years from the date of commission of the violation, or if the date be unknown, from the date of discovery of the violation. The elements of unfair competition are: (1) confusing similarity in the appearance of the goods involved, and (2) intent to deceive the public and defraud a competitor. What enforcement actions are available to intellectual property owners whose rights are being infringed in the Philippine market? Trademark Law in a Knotshell: From Caves to Cyberspace September 20, 2007 By: Ferdinand M. Negre 2 A 'trademark' is defined under R.A. 166, the Trademark Law3, as including 'any word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured, sold or dealt in by others.' The award of damages shall be either the reasonable profit the IP owner would have made, had the infringer not infringed his rights, or the profit that the infringer actually received from the infringement. There are also recorded cases of violation of the said law and some of those were the Starbucks and Philippine Frap Case and the The IP owner will participate in the civil aspect of the criminal action if he is claiming damages. You may visit us at the 16 th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, 1605 Pasig City, Metro Manila, Philippines. Yes. (1) Infringement of trademark is the unauthorized use of a trademark, whereas unfair competition is the passing off of one's goods as those of another. There shall be no infringement of trademarks or trade names of imported or sold patented drugs and medicines that have been put on the market in the Philippines by the owner of the product, or with the owner's express consent, as well as imported or sold off-patent drugs and medicines, where the trademarks have not been tampered with, unlawfully modified or infringed. You wonder why. Under Philippine law, copyright infringement occurs when there is a violation of any of the exclusive economic or moral rights granted to the copyright owner. Instead of spending time, effort and money to develop a brand, some prefer to just copy these trademarks, Such procedure is governed by the Rules & Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights, This proceeding is initiated by filing a verified Complaint with the Bureau of Legal Affairs of the Philippine Intellectual Property Office, trademark infringement case with the Philippine Intellectual Property Office, THE UNFAITHFUL SPOUSE CAN LOSE EVERYTHING IN A LEGAL SEPARATION CASE, HOW TO RECOVER POSSESSION OF YOUR DOG (OR OTHER PERSONAL PROPERTY) THROUGH REPLEVIN, QUESTIONING CORPORATE TAKEOVERS THROUGH QUO WARRANTO, (+632) 8470-6126 / 8546-6126 / 8470-6130 / 8696-0397 / 8401-6392 / 8806-5236. The elements of trademark infringement are: (1) a registered trademark in the Philippines, (2) plaintiff’s ownership of said mark, and (3) use of the trademark or imitation thereof by a third person, which results in likelihood of confusion. It is mandatory to procure user consent prior to running these cookies on your website. 210693 (2017) found the principle of conclusiveness of judgment (Res Judicata) applies in trademark cases where there exist an identity of issues between an earlier judgment and the issues in a later case. The IP owner may work with government agencies to conduct a raid action pursuant to a valid search warrant or a visit/inspection pursuant to some of the government agencies’ visitorial powers. 7. You also see another store selling products with a logo almost similar to your trademark. In order to successfully sue for trademark infringement, a trademark owner must have first registered its trademark with the Intellectual Property Office (IPO) of the Philippines. After years of hard work, your brand is now popular. Some of our pages use cookies and similar technologies. All these you invested so your brand can establish its niche in the market. 8293 [1] was enacted in compliance with the WTO TRIPS Agreement. On the other hand, a similar failure on the part of the Respondent shall cause the declaration of the Respondent as in default and thereby allow the Complainant to present his evidence ex parte. You also have the option to opt-out of these cookies. What constitutes copyright infringement in the Philippines? Raid actions are usually conducted by the National Bureau of Investigation (Intellectual Property Rights Division) and the Philippine National Police (Criminal Investigation and Detection Group). Once the infringement is confirmed, the enforcement agent will apply for the issuance of a search warrant. The accused has the option to post bail. Such procedure is governed by the Rules & Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights (“Rules on IPV Cases”) as amended by Office Order No. Under the IP Code, trademark infringement occurs through: the unauthorised commercial use of a reproduction, counterfeit, copy or colourable imitation of a … Under Republic Act No. If the owner wants to seize a huge inventory of counterfeit items, it is best to conduct a raid action. Nicolas & De Vega Law Offices is a full-service law firm in the Philippines. If the goods are confirmed as counterfeit, they will be seized accordingly. 17-012, series of 2017. Then one day, you realize that your sales declined. Trademark infringement is the unauthorized use in commerce of a registered trademark or a copy or colorable imitation thereof, which results in the likelihood of confusion among the consuming public. These cookies do not store any personal information. Yes. A raid pursuant to a court-issued search warrant may be conducted to ensure that the counterfeit products are seized and removed from the market. Cafe de Manila Corp had filed an application to use the phrase "The Frap Bar Everyone Deserves and Designs" on its coffee products. The copying and or passing off may include copying of the trademark or giving one’s own goods the general appearance of another, which causes likelihood of confusion. (2) In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is essential. This proceeding is initiated by filing a verified Complaint with the Bureau of Legal Affairs of the Philippine Intellectual Property Office (“BLA”) within four (4) years from the date of commission of the violation, or if the date be unknown, from the date of discovery of the violation. Mortgaged and creditors may seize such trademarks belonging to their debtors. This category only includes cookies that ensures basic functionalities and security features of the website. 12, series of 2002, Office Order No. This is a common scenario whereby businesses fall prey to copycats or infringers who piggy back on the goodwill and popularity of others. Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similarto a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers. Provisional remedies, such as an injunction, are available. An IP owner may file a criminal, civil, or administrative action against an infringer. This is how to file a trademark infringement case with the Philippine Intellectual Property Office. It came into effect on January 1, 1998. The BLA will have original jurisdiction over the case if the total damages claimed are NOT less than P200,000.00. Worse, these stores are selling their products at lower prices! What do you do? Upon investigation, you discovered that a store is selling products bearing your trademark without your consent. MANILA, Philippines - Global coffee giant Starbucks has won a trademark case against a Philippine company, which tried to register the name "Frap" for a marketing slogan, BusinessWorld reported on Friday. Out of these cookies, the cookies that are categorized as necessary are stored on your browser as they are essential for the working of basic functionalities of the website. One of the remedies of the registered trademark owner is to file an administrative complaint for trademark infringement against the third party. Suites 2004 & 2005, 88 Corporate Center Valero corner Sedeño Streets, Salcedo Village, Makati City 1227, Philippines   Telephone: +632 8896197  Facsimile: +632 8896132 © Copyright 2013 Federis & Associates Intellectual Property Firm. Under the old law, the penalties for repetition of infringement are: PhP10,000 and/or 5 years of imprisonment and the offense prescribes in 2 years; under the present law, the penalties range from PhP100,000 to PhP300,000 and/or 6 months to 3 years of imprisonment and the offense prescribes in 3 years. A foreign national or corporation, whether or not licensed to do business in the Philippines, may bring a civil or administrative action for trademark infringement, unfair competition, or false designation, so long as such individual or corporation is domiciled in a country which is a party to any convention, treaty, or agreement relating to IP rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to the nationals of the Philippines by law. A criminal action may be initiated by filing a complaint with the prosecutor. Necessary cookies are absolutely essential for the website to function properly. Within ten (10) days after the Respondent has finished his presentation of evidence or lapse of the 8 month period, whichever comes first, the Respondent shall file a formal offer of evidence to which the Complainant may file his comment/objection thereto within ten (10) days from receipt.,  The same shall be resolved by the Hearing Officer within fifteen (15) days from receipt of the comment/objection. You may also call us at +632 4706126, +632 4706130, +632 4016392 or e-mail us at [email protected] . An action for unfair competition may be filed by owners of trademarks which are not registered in the Philippines. What is false designation of origin and false description of goods? The court will then proceed to try the criminal case and if the accused is found guilty of infringement beyond a reasonable doubt, it will issue a decision of conviction. within four (4) years from the date of commission of the violation, or if the date be unknown, from the date of discovery of the violation. This is how to file a trademark infringement case with the Philippine Intellectual Property Office. What is the legal framework for the protection of Intellectual Property Rights in the Philippines? The Bureau of Customs has a system of recording IP rights, where it alerts IP owners of the shipment of counterfeit and/or original goods imported by unauthorized importers or distributors. After pre-trial, the Hearing Officer shall set the case for successive and continuous hearing for the reception of the evidence in chief. If there are reasonable grounds, the prosecutor will issue an order recommending the filing of criminal information in court. After the filing of the criminal information, the court will issue a warrant of arrest. No wonder you lost your customers to these stores. It may also consist in aiding or abetting such infringement. The presentation of evidence shall be completed in two (2) years whereby the Complainant shall have eight (8) months to present and offer evidence. The IP owner may file a letter-complaint with the enforcement agency, usually the National Bureau of Investigation or the Philippine National Police, who will conduct an independent investigation to ascertain the validity and truthfulness of the complaint and the scope of the infringement. Can a foreign company file an action for trademark infringement, unfair competition, or false designation of goods in the Philippines? Nicolas & De Vega Law Offices is a full-service law firm in the Philippines . Failure on the part of the complainant to submit the Pre-Trial brief on time or to appear at pre-trial shall be cause for dismissal of the case with prejudice. If there are valid grounds, the court will issue a search warrant, which must be served within ten (10) days. 8293, otherwise known as the Intellectual Property Code of the Philippines (“IP Code”), trademark infringement refers to the act of any person who shall, without the consent of the owner of a registered trademark, use in commerce, reproduce, counterfeit, copy or imitate a registered trademark or a dominant feature thereof. RESEARCHER Browse our collection of materials on intellectual property BASICS OF IPIP RESOURCESINVENTORS, INNOVATORS, & INDUSTRIAL DESIGNERSHere are the requirements and steps to applying for grant of patent, and registering utility model and industrial designPATENTUTILITY MODELINDUSTRIAL DESIGNENTREPRENEURS Learn more about trademark registration and take a … The raiding team will then conduct a search and seizure operation, whereby all counterfeit and infringing items will be confiscated and placed under the court’s custody and stored in a bonded warehouse. This website uses cookies to improve your experience while you navigate through the website. Is registration necessary in a suit for trademark infringement? (RIGHT TO SUE – Section 160) Any foreign national or juridical person who meets the requirements of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines … Likelihood of confusion is an element of trademark infringement and unfair competition. This is of course illegal. - In an action for infringement, the defendant, in addition to other defenses available to him, may show the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition of cancellation can be brought under … Under Republic Act No. The Optical Media Board and the Intellectual Property Enforcement Office can conduct inspections and issue warning letters through their visitorial powers. Subsequently, the parties shall be given two (2) months each for rebuttal and sur-rebuttal evidence, without extension. Trademark registration in Philippines is valid for 10 years from the date of filing after which it can be frequently renewed for another 10 years. In order to expedite trial, judicial affidavits shall be used, in lieu of direct testimony. The recordation of IP rights or products covered therein is valid for two (2) years from the date of recordation, and shall be renewable every two (2) years thereafter. There shall be no infringement of trademarks or trade names of imported or sold patented drugs and medicines that have been put on the market in the Philippines by the owner of the product, or with the owner’s express consent, as well as imported or sold off-patent drugs and medicines, where the trademarks have not been tampered with, unlawfully modified or infringed. The course of action depends on the end goal of the IP owner. Republic Act 8293, otherwise known as the Intellectual Property Code, provides the legal framework for intellectual property protection in the Philippines. Inherited – Assigned and licensed. The administrative penalties available may include the issuance of a cease and desist order; condemnation and seizure of infringing products; imposition of administrative fines ranging from Php 5,000 to Php 150,000 and an additional fine of up to Php 1,000 for each day of continuing violation; cancellation or withholding of any permit, license, or registration granted or being secured from the IPO; the assessment of damages; censure; and other analogous penalties or sanctions. A full-service law firm dedicated to delivering a broad range of quality legal services which large firms are able to deliver but with the personal touch which only small firms can provide. Can a foreign corporation or trademark owner enforce its trademark rights even if the trademark is not registered in the Philippines? Trademark Infringement Cease and Desist Letter A Cease and Desist Letter is used as a formal request to the recipient to stop (cease) and not continue (desist) any unwelcome or illegal behavior. Yes. Within ten (10) days after the Complainant has finished his presentation of evidence or lapse of the 8 month period, whichever comes first, the Complainant shall file a formal offer of evidence to which the Respondent may file his comment/objection thereto within ten (10) days from receipt.,  The same shall be resolved by the Hearing Officer within fifteen (15) days from receipt of the comment/objection. We also use third-party cookies that help us analyze and understand how you use this website. A person found guilty in a criminal case for trademark infringement, unfair competition, and/or false designation will be imprisoned for a term of two (2) to five (5) years, and will be ordered to pay a fine ranging from Php 50,000 to Php 200,000. [7] Republic Act No. But opting out of some of these cookies may have an effect on your browsing experience. An owner of a tra… All rights reserved. Trademark registration is an essential requisite in a suit for trademark infringement. This holds true regardless of whether there is actual sale of the goods or services bearing the infringing mark. No. The Philippines, being then a territory of the United States, incorporated into Act 666 principles upon which the U.S. trademark law was founded on. Is actual use of a trademark necessary before one can file for a trademark infringement or unfair competition action? These cookies will be stored in your browser only with your consent. You now have a regular clientele who patronize your products bearing your trademark. Law Firm in Metro Manila, Philippines | Corporate, Family, IP law, and Litigation Lawyers, How to file a Trademark Infringement Case with the Philippine Intellectual Property Office. The Respondent shall be required to file his Answer within ten (10) days from receipt of the summons issued by the BLA. An IP owner may file a civil action to recover damages from any person who infringes his or her rights. How can one remove counterfeit products or infringing items from the market? Trademark infringement is a violation of the exclusive rights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). 8293 (the IP Code), trademark infringement is defined as the use in commerce of any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, advertising of any goods or services. Welcome to NDV Law! Other forms of relief, such as injunction and the impounding of the counterfeit products, sales invoices and other documents evidencing sales, are also available as remedies to the IP owner. 186, series of 2010 and IPOPHL Memorandum Circular No. The prosecutor then conducts the preliminary investigation to determine if there are reasonable grounds for infringement. To prove likelihood of confusion, the mark being infringed upon should be used on goods or services that are available in the Philippines. Once the accused is arrested and/or posts bail, he or she will be arraigned. Instead of spending time, effort and money to develop a brand, some prefer to just copy these trademarks and unduly ride on the fame of these brands. McDonald's has been involved in two trademark infringement cases that reached the Supreme Court. False designation of origin or false description of goods is committed when one who in the course of trade uses any word, term, symbol or device, which is likely to cause confusion or mistake on the consuming public as to the affiliation, connection, association of such person with another person, sponsorship or approval of his or her goods, services or commercial activities by another person. 166 repealed Act 666 in 1946, [7] and was itself expressly repealed on January 1, 1998 when Republic Act No. The Philippines Supreme Court’s Decision in Case Number G.R. Rights of Trademark Owners: Trademarks may be: Transferred in whole or in part. Yes. In cases where actual intent to mislead the public or to defraud the IP owner is shown, the damages may be doubled upon the discretion of the court.