GovWire

1. Introduction

IPenforcement remains a source of business concern in the Philippines. InsufficientIPenforcement information and a resulting lack of transparency is a barrier for foreign investors. One of the projects under theFSIPProgramme aims to address the lack of adequateIPenforcement information through anIPenforcement Manual. This Manual onIPenforcement in the Philippines has been developed for businesses operating in or planning to expand into the Philippines. It is published in cooperation with the British Chamber of Commerce, Philippines and aims to provide foreign businesses with a picture of how theIPenforcement system works in the Philippines. It includes details of the laws and regulations as well as theIPenforcement procedures.

The Manual uses a definition of enforcement that parallels the World Trade Organisations Trade Related Aspects of Intellectual Property (TRIPS) Agreement. This means it focuses on trademark and copyright enforcement procedures which in common parlance means trademark counterfeiting and copyright piracy. The types of enforcement systems used to deal with these two issues are most commonly criminal, administrative (including Customs), as well as the civil court system. Other forms ofIPexist (e.g., patents, designs) but their enforcement is usually appropriate for civil court or administrative systems.

The Manual is up to date as of 30 April 2020. The Manual is for informational purposes only so users of this Manual should take local legal advice on specificIPcases.

2. Overview of the Philippines legal andIPsystem

IPrights are important assets for all businesses. It is crucial to ensure these rights are properly protected in a modern economy. It is also a key business goal to be able to make effective use of them commercially as well as to enforce those rights against infringement when necessary.

Recognition and protection ofIPrights usually means registering trademarks, designs and patents at the governmentIPoffice or providing protection for unregistered rights like copyrights and trade secrets under international treaties. The Philippines has relatively well-established systems to do this. But mere registration ofIPis not a business goal. What matters is how businesses can commercially make use of theirIPand whether a country provides a system forIPprotection and enforcement and how effective that system is.

IPenforcement systems are a subset of a countrys legal system. Businesses including foreign investors need to engage with a countrys legal systems for many reasons. It is therefore, necessary to understand the strength and independence of a legal system before looking at how well theIPenforcement procedures operate. This requires simple judicial procedures, efficient enforcement systems and clear and effective legal remedies. It is especially challenging for foreign businesses to engage with complex and unfamiliar foreign legal systems. The protection ofIPis a particularly challenging and technical area. It usually requires a blend of civil courts (e.g., to claim damages), criminal procedures (e.g., to stop counterfeiting), and administrative remedies (e.g., CustomsIPborder protection systems).

The legal system in the Philippines is a mixture of old indigenous society rules, together with the colonial inputs of Spain and the United States and a modern overlay. It is a civil law country wherein all rules must be embodied in laws or statutes. On the other hand, the courts interpret the law and Supreme Court decisions become judicial precedents.

The judicial system comprises of the Supreme Court and the lower courts. The Rules of Court of the Philippines and the rules and regulations issued by the Supreme Court define the procedures in the courts. For many foreign businesses, the court procedures will appear quite familiar, given the use of English and American legal terms like Motions.

Lawyers, or attorneys as they are more commonly referred, can be engaged to handle legal issues and the profession is governed by the Code of Professional Responsibility and the Integrated Bar of the Philippines.

The Philippines like many developing countries faces various challenges in its legal system. The World Justice Project Rule of Law index ranks the Philippines 90/120 countries, a decline from the ranking of 51/102 of the Philippines back in in 2015. The Philippines ranks 95/190 in the Ease of Doing Business index by the World Bank Group; and 152/190 for enforcing contracts. Transparency International places the Philippines at 113/180 countries in its corruption perceptions index, which is another drop from its previous ranking of 99/180.

IPsystem

IPis a technical area of law. While many general lawyers do practiceIPlaw, in many countries there is a separateIPprofession or, as is the case in the Philippines, a separate area ofIPlaw, which is practiced by specialistIPlawyers. The Intellectual Property Association of the Philippines is theIPlaw professions industry body.

In recent years theIPsystem has undergone a number of improvements. This is driven by the successes of the Intellectual Property Office of the Philippines (IPOPHL), which has the unique characteristic of operating under the Office of the President, enabling a level of influence and reach not achieved in other countries.

IPis governed by the Republic Act No. 8293 or the Intellectual Property Code of the Philippines (IPCode). At the time of writing there are proposals to amend this Act with a NewIPCode.IPsystems can be broken into three components:

• registration and protection system. This refers to the registration system operated by IPOPHL for trademarks, designs and patents as well as all the related functions that IPOPHL operates
• commercialisation ofIP. This typically meansIPcontracts such as licenses, assignments, and other commercial agreements involvingIP
• enforcement through the civil and criminal courts and administrative routes. The administrative enforcement route option is through theIPEnforcement Office (IEO) of the IPOPHL. Upon the filing of a formal complaint with theIEO,IPowners and businesses may coordinate withIEOin taking appropriate action to enforceIPrights

The technical nature ofIPand the issues that arise in the registration and protection, the deployment ofIPassets through contracts as well as the enforcement ofIP, make theIParea complex for the novice. Typically, specialist externalIPattorneys assist business in all aspects. Many larger corporations have specialist in houseIPattorneys.

Due to the many changes in recent years, spearheaded by IPOPHL, the