[7] Republic Act No. In order to expedite trial, judicial affidavits shall be used, in lieu of direct testimony. 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. Is actual use of a trademark necessary before one can file for a trademark infringement or unfair competition action? 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. Mortgaged and creditors may seize such trademarks belonging to their debtors. 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. 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). 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. 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. We are located at the bustling Ortigas Central Business District in Pasig City, Metro Manila, Philippines. Under Republic Act No. (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. 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. Can a foreign corporation or trademark owner enforce its trademark rights even if the trademark is not registered in the Philippines? Provisional remedies, such as an injunction, are available. 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 … Cafe de Manila Corp had filed an application to use the phrase "The Frap Bar Everyone Deserves and Designs" on its coffee products. You also see another store selling products with a logo almost similar to your trademark. Significant changes in the trademark law: 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 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. All rights reserved. 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. 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. 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. What constitutes copyright infringement in the Philippines? This category only includes cookies that ensures basic functionalities and security features of the website. No. 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. You may also call us at +632 4706126, +632 4706130, +632 4016392 or e-mail us at [email protected] . The BLA will have original jurisdiction over the case if the total damages claimed are NOT less than P200,000.00. 4. The Respondent shall be required to file his Answer within ten (10) days from receipt of the summons issued by the BLA. (2) In infringement of trademark fraudulent intent is unnecessary whereas in unfair competition fraudulent intent is essential. All these you invested so your brand can establish its niche in the market. 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. An IP owner may file a criminal, civil, or administrative action against an infringer. 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.' Upon termination of the period for reception evidence, the case shall be decided by the BLA within thirty (30) calendar days from submission. 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). 166 repealed Act 666 in 1946, [7] and was itself expressly repealed on January 1, 1998 when Republic Act No. This is of course illegal. 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. Blood, sweat and tears. 17-012, series of 2017. 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. Inherited – Assigned and licensed. If there are valid grounds, the court will issue a search warrant, which must be served within ten (10) days. 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. Can one prevent counterfeit goods from entering the Philippines? This website uses cookies to improve your experience while you navigate through the website. Republic Act 8293, otherwise known as the Intellectual Property Code, provides the legal framework for intellectual property protection in the Philippines. Welcome to NDV Law! 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. It is mandatory to procure user consent prior to running these cookies on your website. 8293 [1] was enacted in compliance with the WTO TRIPS Agreement. This holds true regardless of whether there is actual sale of the goods or services bearing the infringing mark. Likelihood of confusion is an element of trademark infringement and unfair competition. After years of hard work, your brand is now popular. 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. Yes. What do you do? 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. 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. Can a foreign company file an action for trademark infringement, unfair competition, or false designation of goods in the Philippines? If the owner wants to seize a huge inventory of counterfeit items, it is best to conduct a raid action. You may visit us at the 16th Flr., Suite 1607 AIC Burgundy Empire Tower, ADB Ave., Ortigas Center, 1605 Pasig City, Metro Manila, Philippines. Necessary cookies are absolutely essential for the website to function properly. This is a common scenario whereby businesses fall prey to copycats or infringers who piggy back on the goodwill and popularity of others. 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. 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. 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. Nicolas & De Vega Law Offices is a full-service law firm in the Philippines. 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. 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. 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. McDonald's has been involved in two trademark infringement cases that reached the Supreme Court. 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. - 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 … The IP owner will participate in the civil aspect of the criminal action if he is claiming damages. 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. It may also consist in aiding or abetting such infringement. Yes. A criminal action may be initiated by filing a complaint with the prosecutor. Defenses in Action for Infringement. Under the IP Code, trademark infringement occurs through: the unauthorised commercial use of a reproduction, counterfeit, copy or colourable imitation of a … Is registration necessary in a suit for trademark infringement? The accused has the option to post bail. 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. (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 … 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. The Philippines Supreme Court’s Decision in Case Number G.R. 7. These cookies do not store any personal information. 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. In the Philippines, trademark registration is handled by the Intellectual Property Office (IPO). Subsequently, the parties shall be given two (2) months each for rebuttal and sur-rebuttal evidence, without extension. To prove likelihood of confusion, the mark being infringed upon should be used on goods or services that are available in the Philippines. An IP owner may file a civil action to recover damages from any person who infringes his or her rights. Once the infringement is confirmed, the enforcement agent will apply for the issuance of a search warrant. These cookies will be stored in your browser only with your consent. What is the legal framework for the protection of Intellectual Property Rights in the Philippines? 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 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. Yes. It came into effect on January 1, 1998. 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. Upon investigation, you discovered that a store is selling products bearing your trademark without your consent. After pre-trial, the Hearing Officer shall set the case for successive and continuous hearing for the reception of the evidence in chief. We also use third-party cookies that help us analyze and understand how you use this website. 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. 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. 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. Yes. Rights of Trademark Owners: Trademarks may be: Transferred in whole or in part. 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. You now have a regular clientele who patronize your products bearing your trademark. The Optical Media Board and the Intellectual Property Enforcement Office can conduct inspections and issue warning letters through their visitorial powers. What is false designation of origin and false description of goods? One of the remedies of the registered trademark owner is to file an administrative complaint for trademark infringement against the third party. 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. The course of action depends on the end goal of the IP owner. The total amount of damages claimed should be Php 200,000 or more. An inventory and a return of the search warrant should be submitted to the court after the raid. 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. Once the accused is arrested and/or posts bail, he or she will be arraigned. This is how to file a trademark infringement case with the Philippine Intellectual Property Office. 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 … Upon joinder of the issues, the pre-trial conference shall be set.

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