What is the legal framework for the protection of
Intellectual Property Rights in the Philippines?
Republic Act 8293, otherwise known as the Intellectual
Property Code, provides the legal framework for
intellectual property protection in the Philippines. It came
into effect on January 1, 1998.
What is Trademark Infringement?
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. The elements
of trademark infringement are: (1) a registered trademark
in the Philippines, (2) plaintiffs ownership of said mark,
and (3) use of the trademark or imitation thereof by a
third person, which results in likelihood of confusion.
What is Unfair Competition?
Unfair Competition is a form of copying and making false
statements by one which passes off its own goods for
those of another that has an established goodwill. The
copying and or passing off may include copying of the
trademark or giving ones own goods the general
appearance of another, which causes likelihood of
confusion. The elements of unfair competition are: (1)
confusing similarity in the appearance of the goods
involved, and (2) intent to deceive the public.
What is False Designation of Origin and False
Description of Goods?
False designation of origin or false description 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. It is also committed by misrepresenting the
nature, characteristic, quality and geographic origin of the
goods or services in advertising or promotion of said
goods and services.
Can a foreign company file an action for trademark
infringement, unfair competition or false designation
of goods in the Philippines?
Yes. 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
intellectual property 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.
What enforcement actions are available to intellectual
property owners whose rights are being infringed in
the Philippine market?
The intellectual property 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.
A raid action is usually conducted by the National Bureau
of Investigation (Intellectual Property Rights Division) and
the Philippine National Police (Criminal Investigation and
Detection Group).
The Optical Media Board and the Intellectual Property
Enforcement Office can conduct an inspection and issue
warning letters through their visitorial powers.
The course of action depends on the end goal of the
intellectual property owner. If the owner wants to seize a
huge inventory of counterfeit items, it is best to conduct a
raid action. 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.
How can one seize counterfeit products or infringing
items from the market?
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. 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.
Once the infringement is confirmed, the enforcement
agent will apply for the issuance of a search warrant. If
there are valid grounds, the court will issue a search
warrant, which must be served within 10 days. The
raiding team will then conduct a search and seizure
operation whereby all counterfeit and infringing items will
be confiscated and will be placed under the courts
custody and stored in a bonded warehouse. An inventory
and a return of the search warrant should be submitted to
the court after the raid.
How is trademark infringement, unfair competition
and false designation prosecuted?
An IP owner may file a criminal, civil, or administrative
action against an infringer.
Criminal Action
A criminal action may be initiated by filing a complaint
with the prosecutor. The Prosecutor then conducts the
preliminary investigation to determine if there are
reasonable grounds for infringement. 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. The Accused has the option to
post bail. Once the Accused is arrested and/or posts bail,
he or she will be arraigned. 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.
The IP owner will participate in the civil aspect of the
criminal action if he is claiming damages.
A person found guilty in a criminal case for trademark
infringement, unfair competition and/or false designation
will be imprisoned for a term of 2 years to 5 years, and
will be ordered to pay a fine ranging from Php 50,000 to
Php 200,000.
Civil Action
An IP owner may file a civil action to recover damages
from any person who infringes his or her rights. The
award of damages shall be either the reasonable profit
the plaintiff would have made, had a defendant not
infringed his rights, or the profit that the defendant
actually received from the infringement. 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 defendant in connection with the use of
plaintiffs trademark. In cases where actual intent to
mislead the public or to defraud the plaintiff is shown, the
damages may be doubled upon the discretion of the
Court.
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 plaintiff.
Administrative 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 Intellectual
Property Office (IPO). The total amount of damages
claimed should be Php 200,000 or more. Provisional
remedies, such as an injunction are available.
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 a foreign corporation or trademark owner
enforce its trademark rights even if the trademark is
not registered in the Philippines?
Yes. An action for unfair competition may be filed by
owners of trademarks, which are not registered in the
Philippines.
Is actual use of a trademark necessary before one
can file for a trademark infringement or unfair
competition action?

Yes. Likelihood of confusion is an element of trademark

infringement and unfair competition. To prove likelihood
of confusion, the mark being infringed upon should be
used on goods or services that are available in the
Philippines. 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 one prevent counterfeit goods from entering the

Philippines?

Yes. The Bureau of Customs has a system of recording

intellectual property rights, where it alerts owners of
shipment of counterfeit and/or original goods imported by
unauthorized importers or distributors. If the goods are
confirmed as counterfeit, they will be seized accordingly.

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.