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Is your jurisdiction a common law or civil law jurisdiction?
The Philippines is primarily a civil law jurisdiction, but its legal system has elements of common law as decisions of the Supreme Court are binding 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) have jurisdiction to handle civil IP cases.
Is there any bifurcation of proceedings? For example, for determining validity or damages?
Bifurcation of proceedings is not an option available under Philippine rules. Issues such as the liability of an infringer and the appropriate remedies are resolved in the same proceeding.
What are procedures for civil enforcement?
Civil enforcement to recover damages from the infringer and/or to enjoin the infringing action is initiated by filing a verified complaint with a SCC. The parties file complaints, answers, and such other pleadings as may be allowed by regulations. Remedies include preliminary injunctions, preliminary attachments, damages and fines.
Is a power of attorney needed for civil action to be brought? If so what are the procedures and time lines?
A power of attorney (“POA”) is needed when the complaint/civil action will be brought by an authorized representative of the IP owner. Examples include when a party-litigant is a corporation or the IP owner is not based in the Philippines. In such case, the POA must be filed together with the complaint, which needs to be verified under oath by the complainant or authorized representative of the complainant.
What is the average time to trial in a civil case?
Based on the timelines provided in the 2020 Revised Rules of Procedure for Intellectual Property Cases, the average time to trial in a civil case is about 6 months from the time of filing the complaint, as outlined below:
However, in practice, the timelines are likely to be adjusted depending on the availability of the parties and representatives attending the hearing and the calendar of the court.
What is the language of the proceedings? Is there a choice of language?
The proceedings are in English. Pleadings submitted are also in English. In case a witness can only speak a local or foreign language, a translator 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 no genuine issue as to any material fact in order for a summary judgement to be granted.
On what basis are interim injunctions granted?
Interim injunction is a provisional remedy available to the parties in IP disputes. The applicant must prove their right to be protected, material invasion of such right, need to enjoin the action to prevent further damage, and that no other remedy exists to prevent the damage.
On what basis are permanent injunctions granted?
After trial, a grant of final injunction is proper if it has been shown that the applicant is entitled to have the act or acts complained of be permanently enjoined.
What appeal procedures are available from a first instance judgment?
Decisions and final orders rendered by SCCs are appealable to the Court of Appeals through a petition for review under Rule 43 of the Rules of Court. The petition for review should be filed within fifteen (15) calendar days from notice of the decision or final order of the SCC. A fifteen (15)-calendar day extension to file a petition for review may be granted upon filing a proper motion and the full payment of legal fees.
Decisions or final orders rendered by the Directors of the Bureaus of IPOPHL for administrative cases can be appealed to the Office of the Director General. It is taken by filing an Appeal Memorandum to the Office of the Director General of the IPOPHL within thirty (30) days from notice of a decision or final order appealed from. The IPOPHL Director General’s decision can be appealed to the Court of Appeals.
What are the procedures for criminal enforcement?
A complaint must first be filed with the Department of Justice. The complaint will be evaluated by a public prosecutor. If the public prosecutor confirms that there is probable cause that a violation of the IP Code is committed, a criminal information will be accordingly filed with the courts. Once the information has been raffled to a SCC, the criminal court will schedule the arraignment of the infringer and trial will thereafter commence.
What are the procedures for criminal appeals?
Criminal appeals are filed with the Court of Appeals. This can be done by filing a notice of appeal with the SCC who rendered the decision or final orders appealed from and by serving a copy of the same upon the adverse party. Such appeal must be taken within fifteen (15) days from the promulgation of the judgment or from notice of the final order appealed from. The period to perfect the appeal will be suspended from the time a motion for new trial or reconsideration is filed until notice of the order overruling the same motion have been served upon the accused or his counsel.
What are the procedures for administrative enforcement?
The Bureau of Legal Affairs (BLA) of the Intellectual Property Department has jurisdiction over administrative complaints for IP violations, provided the total damages claim is at least Php200,000.00 (approximately US$4,000). The procedures provided in the Rules & Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights, in sum, are as follows:
The timelines above, however, are not strictly followed. In practice, hearing dates and deadlines are likely to be adjusted depending on the availability of the parties and representatives attending the hearing and the calendar of the BLA/hearing officer.
What are the measures for Customs border protection?
The first step in border protection is to secure the customs recordal of the IP before the Bureau of Customs (BOC). The application process requires the submission of several documents, including certified copies of registrations of IPs, and information about the legitimate channels of distribution of the goods of the IP owner. The customs recordal is effective for a two-year period and is renewable. The BOC will rely on the customs recordal in case there is a customs seizure/raid action. Brand familiarity trainings are recommended so the BOC agents are able to distinguish counterfeits from originals.
What IP treaties is your jurisdiction a member of?