IP Litigation andEnforcement Guide:Philippines

IP Litigation& Enforcementin the Philippines

This is a brief guide addressing

common questions and concerns

of the IP litigation and enforcement

landscape in the Philippines.

Is your jurisdiction a common law or civil law jurisdiction?

The Philippines is primarily a civil law jurisdiction, but its legal systemhas elements of common law as decisions of the Supreme Court arebinding on lower courts and are a source of law.

What methods are there for enforcing IP rights in your jurisdiction?

What courts have jurisdiction to handle civil IP cases?

Courts designated as Special Commercial Courts (SCCs) havejurisdiction to handle civil IP cases.

Is there any bifurcation of proceedings? For example, for determiningvalidity or damages?

Bifurcation of proceedings is not an option available under Philippinerules. Issues such as the liability of an infringer and the appropriateremedies are resolved in the same proceeding.

What are procedures for civil enforcement?

Civil enforcement to recover damages from the infringer and/or toenjoin the infringing action is initiated by filing a verified complaintwith a SCC. The parties file complaints, answers, and such otherpleadings as may be allowed by regulations. Remedies includepreliminary injunctions, preliminary attachments, damages and fines.

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Is a power of attorney needed for civil actionto be brought? If so what are the proceduresand time lines?

A power of attorney (“POA”) is needed whenthe complaint/civil action will be brought byan authorized representative of the IP owner.Examples include when a party-litigant is acorporation or the IP owner is not based in thePhilippines. In such case, the POA must befiled together with the complaint, which needsto be verified under oath by the complainantor authorized representative of thecomplainant.

What is the average time to trial in a civilcase?

Based on the timelines provided in the 2020Revised Rules of Procedure for IntellectualProperty Cases, the average time to trial in acivil case is about 6 months from the time offiling the complaint, as outlined below:

a. Within five (5) days from the filing of thecomplaint, the SCC will issue a summons tothe other party/respondent to file its Answer.

b. The other party/respondent is required tofile the Answer to the complaint within 30days from receipt of the summons.

c. The complainant has 15 days from receipt ofAnswer to respond to any counterclaim orcross-claim raised therein.

Thereafter, a party has the option to availof modes of discovery within 30 days fromthe joiner of issues (usually counted fromthe receipt of the Answer). The other partymay object to the mode of discovery within10 days from receipt of request. Therequesting party will then have three (3)days from receipt of the objection tosubmit a comment. The court shall rule onthe objection or comment no later than 10days from receipt of the same.

d. Within five (5) days from expiration of 30days to avail of modes of discovery or after thediscovery requested has been completed, thecourt will issue a notice setting the case forpre-trial for simplification of issues andmarking of evidence.

e. The pre-trial shall be terminated no laterthan 30 days from its commencement.

f. Clarification hearings ay be conducted within30 days from termination of pre-trial.

g. The trial proper shall commence within 60days from the termination of the pre-trial.

h. The trial should be completed no later than60 days from the date of the initial trial.

However, in practice, the timelines are likely tobe adjusted depending on the availability ofthe parties and representatives attending thehearing and the calendar of the court.

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What is the language of the proceedings? Isthere a choice of language?

The proceedings are in English. Pleadingssubmitted are also in English. In case a witnesscan only speak a local or foreign language, atranslator will be provided.

Is it possible to apply for summary judgment?

Yes, a summary judgement can be applied for.The plaintiff must prove that there is nogenuine issue as to any material fact in orderfor a summary judgement to be granted.

On what basis are interim injunctionsgranted?

Interim injunction is a provisional remedyavailable to the parties in IP disputes. Theapplicant must prove their right to beprotected, material invasion of such right,need to enjoin the action to prevent furtherdamage, and that no other remedy exists toprevent the damage.

On what basis are permanent injunctionsgranted?

After trial, a grant of final injunction is properif it has been shown that the applicant isentitled to have the act or acts complained ofbe permanently enjoined.

What appeal procedures are available from afirst instance judgment?

Decisions and final orders rendered by SCCsare appealable to the Court of Appealsthrough a petition for review under Rule 43 ofthe Rules of Court. The petition for reviewshould be filed within fifteen (15) calendardays from notice of the decision or final orderof the SCC. A fifteen (15)-calendar dayextension to file a petition for review may begranted upon filing a proper motion and thefull payment of legal fees.

Decisions or final orders rendered by theDirectors of the Bureaus of IPOPHL foradministrative cases can be appealed to theOffice of the Director General. It is taken byfiling an Appeal Memorandum to the Office ofthe Director General of the IPOPHL withinthirty (30) days from notice of a decision orfinal order appealed from. The IPOPHLDirector General’s decision can be appealed tothe Court of Appeals.

What are the procedures for criminalenforcement?

A complaint must first be filed with theDepartment of Justice. The complaint will beevaluated by a public prosecutor. If the publicprosecutor confirms that there is probablecause that a violation of the IP Code iscommitted, a criminal information will beaccordingly filed with the courts. Once theinformation has been raffled to a SCC, thecriminal court will schedule the arraignment ofthe infringer and trial will thereaftercommence.

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What are the procedures for criminalappeals?

Criminal appeals are filed with the Court ofAppeals. This can be done by filing a notice ofappeal with the SCC who rendered thedecision or final orders appealed from and byserving a copy of the same upon the adverseparty. Such appeal must be taken withinfifteen (15) days from the promulgation of thejudgment or from notice of the final orderappealed from. The period to perfect theappeal will be suspended from the time amotion for new trial or reconsideration is fileduntil notice of the order overruling the samemotion have been served upon the accused orhis counsel.

What are the procedures for administrativeenforcement?

The Bureau of Legal Affairs (BLA) of theIntellectual Property Department hasjurisdiction over administrative complaints forIP violations, provided the total damages claimis at least Php200,000.00 (approximatelyUS$4,000). The procedures provided in theRules & Regulations on AdministrativeComplaints for Violation of Laws InvolvingIntellectual Property Rights, in sum, are asfollows:

a. An action is commenced by the filing of aComplaint;

b. The BLA issues a Summons or Notice toAnswer within three (3) days from receipt ofComplaint;

c. The Answer must be filed within 10 daysfrom receipt of Summons or Notice to Answer;

d. Upon joinder of issues (after receipt ofAnswer), the hearing officer will issue a noticesetting the case for pre-trial conference andrequiring the parties to submit a pre-trial brief;

e. At the pre-trial conference, parties will begiven the chance to, among others, agree onthe trial dates;

f. The case will be entered in the BLA’s trialcalendar and parties will be served with thenotice/s of trial;

g. The hearing on the case shall be terminatedwithin 90 days (30 days allottedto complainant; 30 days for the respondent;and 30 days for rebuttal or sur-rebuttal).

The timelines above, however, are not strictlyfollowed. In practice, hearing dates anddeadlines are likely to be adjusted dependingon the availability of the parties andrepresentatives attending the hearing and thecalendar of the BLA/hearing officer.

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What are the measures for Customs borderprotection?

The first step in border protection is to securethe customs recordal of the IP before theBureau of Customs (BOC). The applicationprocess requires the submission of severaldocuments, including certified copies ofregistrations of IPs, and information about thelegitimate channels of distribution of thegoods of the IP owner. The customs recordal iseffective for a two-year period and isrenewable. The BOC will rely on the customsrecordal in case there is a customs seizure/raidaction. Brand familiarity trainings arerecommended so the BOC agents are able todistinguish counterfeits from originals.

What IP treaties is your jurisdiction amember of?

Madrid AgreementWTO – TRIPS AgreementWIPO – Copyright TreatyWIPO – Trademark Law TreatyWIPO – Performances and PhonogramsTreatyBerne ConventionParis ConventionBudapest TreatyPatent Cooperation Treaty

Further reading

Guides:

IP Enforcement Guide: PhilippinesBritCham Philippines - IP RightsEnforcement Manual for the PhilippinesPatent protection overview in four majorASEAN countriesE-filings and hearings in Courts in SouthEast Asia

Articles:

Talent Shows and copyright infringement inthe PhilippinesFast tracking health related patents in thePhilippinesThe Philippines mayor and the counterfeitsneakers

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Edmund Jason BarandaTel. +63 2 4031686

Fax +63 2 4031522

Email ebaranda@rouse.com

Baranda & AssociatesSuite 1002

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3rd Avenue Corner 31st Street

Bonifacio Global City

Taguig City

Metro Manila

Philippines

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