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Intellectual Property Rights in the Philippines: Overview
Practical Law Country Q&A w-018-1454 (Approx. 26 pages)
Intellectual Property Rights in the Philippines: Overview
by Bienvenido Marquez III, Divina Pastora Ilas-Panganiban and Reena Mitra-Ventanilla, Quisumbing Torres, member firm of Baker & McKenzie International, a Swiss verein
| Law stated as at 01 Feb 2023 • Philippines |
A guide to intellectual property rights law in the Philippines. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
Patents
1. Provide a brief definition of a patent, the key legal requirements to obtain it and the law that applies.
A patentable invention is any technical solution to a problem in any field of human activity, which is new, involves an inventive step, and is industrially applicable (Republic Act No. 8293 or the Intellectual Property Code of the Philippines (IP Code)). It may be, or may relate to, a product, process, or improvement of a product or process.
The following are excluded from patent protection:
- Discoveries, scientific theories, and mathematical methods.
- Schemes, rules, and methods of performing mental acts, playing games, or doing business, and programs for computers.
- Methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body (but products and compositions for use in these methods are patentable).
- Plant varieties or animal breeds, or essentially biological processes for the production of plants or animals (but micro-organisms and non-biological and microbiological processes are patentable).
- Aesthetic creations.
- Anything contrary to public order or morality.
2. Which authority registers patents? Briefly outline the key stages and timing in obtaining a patent.
Patent Registration Authority
The Philippine Intellectual Property Office (IPO) registers patents in the Philippines through the Bureau of Patents.
Process and Timing
Application requirements. The patent application must be in Filipino or English, and must contain all of the following:
- A request for the grant of a patent.
- A description of the invention.
- Drawings necessary for the understanding of the invention.
- One or more claims.
- An abstract.
The application procedure flowchart and timing, as well as the patent application fees, are available on the IPO website.
International applications. A patent application filed by any person who has previously applied for the same invention in another country, which by treaty, convention, or law affords similar privileges to Filipino citizens, is considered filed as of the date of filing the foreign application. The following requirements apply:
- The local application expressly claims priority.
- The local application is filed within 12 months from the date the earliest foreign application was filed.
- A certified copy of the foreign application, and an English translation, is filed within six months from the date of filing. This period may be extended for another six months for good cause or in compliance with treaties.
The IPO conducts a search and preliminary examination of international applications filed under the Patent Cooperation Treaty of 1970 (PCT). An application that has passed the formality examination is then classified according to the technical field or area of technology to which the patent belongs, and a search is conducted to determine whether the invention meets the prior art requirement (that is, whether it is new and involves an inventive step). After the expiration of 18 months from the filing date, the patent application is published. This gives third parties an opportunity to challenge the patent application. The applicant must file a request for a substantive examination within six months from the date of publication of the patent application. If the application passes the patentability examination, the grant of the patent is again published.
A third party cannot oppose a patent application, but can file observations to the Bureau of Patents as to the invention's patentability.
A search for information on patents can be conducted through the IPO website.
The term of a granted patent is 20 years from the application's filing date. Patents are subject to maintenance fees or annual fees, which must be paid to maintain the patent in force. The annual fee must be paid on the expiration of four years from the date the application was published. Payment of the annual fee can be made three months before the due date.
For PCT applications, the term of a granted patent is 20 years from the international filing date. The term of patent protection cannot be extended.
The Philippines adheres to the first-to-file rule. If two persons have made an invention separately and independently of each other, or file an application for the same invention, the right to the patent belongs to the person who first filed an application, or to the applicant who has the earliest filing or priority date.
Supplementary protection certificates (SPCs) or equivalent protection are not available.
5. What steps must a patent owner take to maintain the registration and legally protectable status of its patents?
To maintain a patent registration, maintenance or annual fees must be paid to the IPO (for the maintenance fees, see IPO: Schedule of fees on patents.
If the annual fee is not paid, the patent application is deemed withdrawn or the patent is considered as lapsed from the day following the expiration of the period to pay the annual fee. A grace period of six months may be granted on payment of the prescribed surcharge.
A patent need not be used to maintain the validity of its registration.
6. What rights does a patent give to its owner? On what grounds can a patent infringement action be brought? What are the main defences to a patent infringement action?
Rights Granted by a Patent
A patent owner has the following exclusive rights:
- To restrain, prohibit, and prevent any unauthorised person or entity from making, using, offering for sale, selling, or importing the patented product.
- To restrain, prevent, or prohibit any unauthorised person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from a patented process.
- To assign, or transfer by succession, the patent, and to conclude licensing contracts for the patent.
- To commence an action for patent infringement.
Grounds for Patent Infringement
The grounds for an infringement action are the unauthorised:
- Making, using, offering for sale, selling, or importing of a patented product or a product obtained directly or indirectly from a patented process.
- Use of a patented process.
Defences to a Patent Infringement Action
The following defences can be raised:
- Invalidity of the claim.
- Existence of a ground for cancellation of the patent.
A patent owner has no right to prevent third parties from using a patented product that has been put on the market in the Philippines by the owner of the product, or with the owner's express consent, as long as the use is performed after the product has been put on the market (section 72.1, IP Code). With regard to drugs and medicines, the limitation on patent rights applies after a drug or medicine has been introduced in the Philippines or anywhere else in the world by the patent owner, or by any party authorised to use the invention.
7. Which courts have jurisdiction over patent infringement actions? Is there a fast-track and/or a small-claims procedure?
Administrative patent infringement actions are filed with the IPO. Decisions can be appealed to the Bureau Director and then to the IPO Director General. Further appeals are brought to the Court of Appeals and then to the Supreme Court.
Civil and criminal cases for patent infringement are filed with the designated commercial courts of the Regional Trial Courts. Decisions of the trial courts can be appealed to the Court of Appeals and then to the Supreme Court.
The existing small-claims procedure within the commercial courts does not apply to patent infringement cases, and there is no applicable fast-track procedure.
Administrative Proceedings
Damages and injunctive relief can be claimed against the infringing party. The IPO can impose penalties, including:
- Cease and desist, seizure, and forfeiture orders.
- Administrative fines.
- Damages.
Civil Proceedings
Damages and injunctive relief can be claimed against the infringing party in the action. Ex parte searches and seizures are available.
Enhanced damages are available. The court can, depending on the circumstances of the case, award damages in a sum above the amount found as actual damages sustained, provided that the award does not exceed three times the amount of the actual damages (section 76.4, IP Code).
To monitor whether another party is infringing a patent, a party must closely monitor the activities of its competitors, including their activities at major international trade fairs and exhibitions, and their websites. Private investigators may also be engaged to conduct periodic market surveys or periodic checks, and report any infringing activities.
Utility Models
Legal Conditions for Utility Model Protection
A registrable utility model is any technical solution to a problem in any field of human activity, that is both:
- New.
- Industrially applicable.
(IP Code.)
In addition, it may have an inventive step, but this is not a requirement.
Registration Authority
The IPO registers utility models through the Bureau of Patents (for the application procedure flowchart, see IPO: Utility Model Registration Process Overview.
The contents of a utility model application are the same as for patent application (see Question 2).
Process and Timing
The application procedure flowchart and timing, as well as the application fees, are available on IPO: Utility Model.
The Philippines recognises foreign priority for utility model applications.
A utility model application is published after it passes a formality examination before registration. However, the application can be published immediately after filing, provided the following are complied with on filing the application:
- The description, claims, and drawings (if any) are compliant.
- The filing fee and other required fees have been fully paid.
- If priority is claimed, the prior documents are submitted.
- Other requirements as may be required by the IPO.
Grounds for Cancellation
The grounds for cancellation of a utility model are:
- The utility model is not new or industrially applicable.
- The utility model is not registrable.
- The subject matter of the model extends beyond the content of the application as originally filed.
Utility Model Search and Information Facilities
A search for information on utility models can be conducted through IPO: IPOPHL Patent Search.
Enforceable Utility Model Protection Term
The term of protection that applies to the registration of a utility model is seven years from the date that the application for registration was filed. Protection automatically expires at the end of that period. A utility model registration cannot be renewed.
Utility Model Infringement
Infringement is committed through making, using, offering for sale, selling, or importing the utility model without the owner's authorisation.
The defences to utility model infringement actions are the same as for patent infringement actions (see Question 6).
The same applies as for patent infringement actions in relation to courts having jurisdiction over utility model infringement actions and whether there is a fast-track and/or a procedure for smaller claims (see Question 7).
The remedies in utility model infringement actions are the same as for patent infringement actions (see Question 8).
Monitoring Utility Model Infringement
This is the same as for patent infringement monitoring (see Question 8).
Trade Marks
12. Provide a brief definition of a trade mark, the key legal requirements to obtain it and the law that applies.
The IP Code defines a mark as any visible sign capable of distinguishing an enterprise's goods (trade mark) or services (service mark). This includes a stamped or marked container of goods. A mark must be registered with the IPO to be protected (see Question 16 for the list of non-registrable marks).
Sound, smell, and motion cannot be the subject of trade mark protection.
Registration is necessary for protection against trade mark infringement.
However, owners of unregistered marks can bring an action for unfair competition or "passing off," provided that those marks have been in use in the market for a considerable and sufficient period of time to obtain goodwill.
See Question 19 for a discussion of unfair competition.
14. Which authority registers trade marks? Briefly outline the key stages and timing to obtain a registered trade mark.
Trade Mark Registration Authority
The IPO registers trade marks through the Bureau of Trademarks (for the application procedure flowchart, see IPO: Trademarks/Collective Marks Registration Process Overview.
Process and Timing
The application procedure flowchart and timing, as well as the trade mark application fees, are available on IPO: Trademark.
The Philippines recognises foreign priority for trade mark applications with respect to countries that either:
- Are parties to any convention, treaty, or agreement to which the Philippines is also a party.
- Extend reciprocal rights to nationals of the Philippines by law.
The IPO conducts an initial examination to assess whether the application meets the formal and the substantive requirements. If the application has a formality issue or a substantive issue (that is, the subject mark is similar to a registered mark), the IPO issues an Official Action, which states the issues and gives the applicant an opportunity to correct the defects or address the issues.
Once the application is accepted and the publication fee is paid, the application is published. Within 30 days from publication, a third party can oppose the trade mark application. If no third party opposes the application, the trade mark is registered on payment of fees.
A petition to cancel a mark's registration can be filed by any person who believes that they are or will be damaged by the registration of the mark.
15. What official facilities are available to conduct searches and obtain information on trade marks?
A search for information on trade marks can be conducted through WIPO IP Portal, Global Brand Database: Quick Search.
16. On what grounds can the authority refuse to register a trade mark? On what grounds can third parties challenge a trade mark application?
Grounds for an Authority Refusing to Register a Trade Mark
A mark cannot be registered if it:
- Comprises immoral, deceptive or scandalous matter, or matter that may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute.
- Comprises the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation of any of those things.
- Comprises:
- a name, portrait, or signature identifying a particular living individual (except with their written consent); or
- the name, signature, or portrait of a deceased President of the Philippines, during the life of their surviving spouse, if any (except with the spouse's written consent).
- Is identical with a registered mark belonging to a different proprietor or with an earlier filing or priority date, in respect of the same or closely related goods or services, or nearly resembles such a mark so as to be likely to deceive or cause confusion.
- Is:
- identical with, confusingly similar to, or a translation of, a mark that is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines (whether or not it is registered in the Philippines) as being the mark of a person other than the applicant; and
- used for identical or similar goods or services.
- Is identical with, confusingly similar to, or a translation of, a mark considered well-known, that is registered in the Philippines with respect to goods or services that are not similar to those for which registration is applied for.
- Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services.
- Consists exclusively of signs that are generic for the goods or services that they seek to identify.
- Consists exclusively of signs or indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice.
- Consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time, or production of the goods or rendering of the services, or other characteristics of the goods or services.
- Comprises shapes that may be required by technical factors or by the nature of the goods themselves, or factors that affect their intrinsic value.
- Comprises colour alone, unless defined by a given form.
- Is contrary to public order or morality.
Third Party Grounds for Challenging a Trade Mark Application before Registration
An opposition action can be filed by any person who believes that they would be or are damaged by the registration of a mark, or that the registration is contrary to law. An opposition can be filed within 30 days from publication of the trade mark application.
18. What steps must a trade mark registrant take to maintain the registration and legally protectable status of its trade marks?
A trade mark is renewable for periods of ten years indefinitely, on payment of renewal fees to the IPO. A grace period of six months after the expiration is allowed, on payment of an additional fee (for the schedule of fees, see IPO: Schedule of Trademark-Related Fees).
To maintain the registration, Declarations of Actual Use (DAUs) and evidence of use must be filed within the following time frames:
- Three years from the filing date of the trade mark application.
- One year from the fifth anniversary of trade mark registration.
- One year from the date of renewal of trade mark registration.
The law requires actual commercial use of the mark in the Philippines as a condition for the maintenance of the mark in the registry.
19. What rights does a trade mark give to its owner? Identify and describe the available claims for trade mark violations? What are the main defences to trade mark actions?
Rights Granted by a Trade Mark
The owner of a registered mark has the exclusive right to prevent all third parties (unless the third party has been given consent) from using, in the course of trade, identical or similar signs or containers for goods or services that are identical or similar to those in respect of which the trade mark is registered, where such use would result in a likelihood of confusion. This does not apply in cases of importation of drugs and medicines allowed under the IP Code and of off-patent (generic) drugs and medicines.
In the case of use of an identical sign for identical goods and services, a likelihood of confusion is presumed.
Grounds for and Elements of Trade Mark Infringement Claims
Infringement occurs when any person, without the consent of the owner of the registered mark:
- Uses in commerce any reproduction, counterfeit, copy, or colourable imitation (see below) of a registered mark or a dominant feature of a registered mark:
- in connection with the sale, offering for sale, distribution, or advertising of any goods or services, including other preparatory steps necessary to carry out the sale of any goods or services; and
- where such use is likely to cause confusion or a mistake, or deceive.
(A colourable imitation is such a close or ingenious imitation as to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving the attention a purchaser usually gives, causing them to purchase the imitation supposing it to be the original.) - Reproduces, counterfeits, copies, or imitates a registered mark or a dominant feature of a registered mark and:
- applies it to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce on or in connection with the sale, offering for sale, distribution, or advertising of goods or services; and
- where the use is likely to cause confusion or a mistake, or deceive.
The elements of trade mark infringement are:
- The trade mark being infringed is registered with the IPO.
- The trade mark is reproduced, counterfeited, copied, or colourably imitated by the infringer.
- The infringing mark is either:
- used in connection with the sale, offering for sale, or advertising of any goods, business, or services; or
- applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used on or in connection with those goods, business, or services.
- The use or application of the infringing mark is likely to cause confusion or a mistake, or to deceive buyers or others as to the:
- goods or services themselves;
- source or origin of the goods or services; or
- identity of the business.
- The use or application of the infringing mark is without the consent of the trade mark owner or the assignee of the trade mark.
Other Trade Mark Causes of Action
Unfair competition. An action for unfair competition is also available. It is committed by any person who employs deception or any other means contrary to good faith to pass off their own manufactured or distributed goods, business, or services as those of the business having established goodwill.
The elements of unfair competition are:
- Confusing similarity in the appearance of the goods involved.
- Intent to deceive the public and defraud a competitor.
False designation of origin, false description, or false representation. This is another cause of action to protect trade marks. It is committed by any person who, in connection with any goods, services, or containers for goods, uses in commerce any word, term, name, symbol, device (or any combination of these), or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, that:
- Is likely to cause confusion or mistake, or to deceive as to the affiliation, connection, or association of that person with another person, or as to the origin, sponsorship, or approval of their goods, services, or commercial activities, by another person.
- Misrepresents the nature, characteristics, qualities, or geographic origin of theirs or another person's goods, services, or commercial activities.
These causes of action apply to both registered and unregistered trade marks.
A trade mark owner can file a criminal, civil, or administrative action based on the above causes of action.
Defences to Trade Mark Claims
Common defences include that the mark involved does not either:
- Cause any likelihood of confusion or mistake in the mind of the public.
- Deceive buyers as to the goods' origin or the source.
Lack of prior registration of the challenging mark is another defence for trade mark infringement actions.
20. Which courts have jurisdiction over trade mark infringement actions? Is there a fast-track and/or a small-claims procedure?
This is the same as for patent infringement actions (see Question 7).
This is the same as for patent infringement actions (see Question 8). Criminal cases for trade mark infringement do not require repeat infringements.
22. On what grounds can third parties challenge a registered trade mark through invalidation, cancellation or revocation proceedings (after registration)?
The following are grounds for the cancellation of a trade mark:
- Another person is damaged by the registration of the mark.
- The mark has become a generic word.
- The registered mark has been abandoned.
- The registration was obtained fraudulently or contrary to the provisions of the IP Code.
- The registered mark is being used by, or with the permission of, the registrant to misrepresent the source of the goods or services on or in connection with which the mark is used.
- The registrant has failed to use the mark for an uninterrupted period of three years.
23. What steps can a trade mark owner take to monitor whether another party is infringing its trade mark rights?
This is the same as for patent infringement monitoring (see Question 9). In addition, the owner can also closely monitor the IPO's Electronic Gazette, to check whether to oppose published marks that may create a likelihood of confusion with its own marks.
Copyright
Copyright protection arises automatically on creation of the work. Registration is not required for protection. However, copyrighted works can be deposited with the National Library (or the Supreme Court, for copyrighted works in the field of law), to obtain a copyright registration certificate, which can serve as evidence of authorship or ownership of the copyrighted work.
The IPO also accepts deposits of copyrighted works through the Bureau of Copyrights and Other Related Rights (for the application procedure flowchart, see IPO: Copyright).
Copyright and Economic Rights
Copyright vests at the moment of creation and subsists during the life of the author and for 50 years from 1 January immediately following the date of the author's death.
For joint authorship, protection subsists during the life of the last surviving author and for 50 years after their death.
For anonymous works, the 50-year term is counted from the date the work is first published or from the date of creation if unpublished, unless, before expiration, the author's identity is publicly ascertained, in which case the lifetime period is applied.
For audiovisual and photographic works, protection is for 50 years from the date of publication or, if unpublished, the date of creation.
For applied art, protection is for 25 years from the date of creation.
Moral Rights
Moral rights survive the life of the author plus 50 years, except that the moral rights in the attribution of authorship of works are perpetual.
Neighbouring Rights
For performances not incorporated in recordings, rights subsist for 50 years from the end of the year in which the performance took place.
For sound or image and sound recordings, and for performances incorporated in those, rights subsist for 50 years from the end of the year in which the recording took place.
For broadcasts, the term is 20 years from the date the broadcast took place.
28. What steps must a copyright owner take to maintain the registration, if applicable, and legally protectable status of its copyright?
The National Library of the Philippines, which is the repository of all copyrighted works and to whom the IPO transmits all deposited works, maintains a search facility available to obtain information on copyright.
30. What steps can a copyright owner take to monitor whether another party is infringing its copyright?
This is the same as for patent infringement monitoring (see Question 9).
31. What rights does copyright grant? On what grounds can a copyright infringement action be brought? What are the defences to copyright infringement actions?
Rights Granted by Copyright
A copyright confers on the author economic and moral rights (see Question 34 for moral rights).
The economic rights of the author consist of the exclusive right to carry out, authorise, or prevent the following acts:
- Reproduction of the work or a substantial portion of the work.
- Dramatisation, translation, adaptation, abridgment, arrangement, or other transformation of the work.
- First public distribution of the original and each copy of the work by sale or other forms of transfer of ownership.
- Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials, or a musical work in graphic form, irrespective of the ownership of the original or the copy that is the subject of the rental.
- Public display of the original or a copy of the work.
- Public performance of the work.
- Other communication to the public of the work.
Grounds for and Elements of Copyright Infringement Claims
Copyright infringement occurs when there is a violation of any of the exclusive economic rights held by a copyright owner. Contributory copyright infringement is also punishable.
A party bringing the claim must show that both:
- They have a valid copyright in the work allegedly infringed.
- The defendant infringed the copyright by copying protected elements of the copyrighted work.
When assessing copyright infringement claims, the courts consider the extent of use of the copyrighted work.
The fair use of a copyrighted work for criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, research, and similar purposes is not considered as a copyright infringement.
Defences to a Copyright Infringement Action
The following are not considered as copyright infringement and therefore can be used as defences:
- Recitation or performance of a work that is lawfully made accessible to the public, if done either privately and free of charge, or made strictly for a charitable or religious organisation.
- Quoting from a published work, provided it is compatible with "fair use," and only to the extent justified by the purpose, provided that the source and name of the author, if appearing on the work, are mentioned. In determining whether the use made of a work constitutes fair use, the factors considered include:
- the purpose and character of the use, including whether the use is of a commercial nature or is for non-profit educational purposes;
- the nature of the copyrighted work;
- the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
- the effect of the use on the potential market for or value of the copyrighted work.
(Section 185, IP Code.) - Reproducing or communicating to the public by mass media works on current political, social, economic, scientific, or religious topics that are delivered in public, if that use is for information purposes and has not been expressly reserved. The source must be clearly indicated.
- Reproducing or communicating to the public, through photographic, cinematographic, or broadcasting means, literary, scientific, or artistic works as part of reports on current events and only to the extent necessary for that purpose.
- Including a work, by way of illustration, in any public communication for teaching purposes compatible with "fair use," provided that the source and name of the author, if appearing on the work, are mentioned.
- A recording made in an educational institution of a work included in a broadcast for the use of that institution, provided that the recording is:
- deleted within a reasonable period after its first broadcast; and
- not made, except for brief excerpts, from audiovisual works that are part of the general cinema repertoire of feature films.
- Ephemeral recordings of a broadcast organisation using its own facilities and its own broadcast.
- Use of a work by or under the direction of the government, or by educational, scientific, or professional organisations, when it is in the public interest and is compatible with "fair use."
- Public performance or communication for charitable or educational purposes by a non-profit organisation where no admission fee is charged, subject to other limitations set by regulations.
- Public display of the original or a copy of the work not made by means of a film, slide, television image, or otherwise, on a screen or by means of any other device or process, provided either that:
- the work has been published; or
- the original or the copy displayed has been sold, given away, or otherwise transferred to another person by the author or their successor in title.
- Use in judicial proceedings or for the giving of professional legal advice.
- Reproduction or distribution of published articles or materials in a specialised format exclusively for the use of the blind, visually impaired, and reading-impaired persons, provided that the copies and distribution are:
- made on a non-profit basis; and
- indicate the copyright owner and the date of original publication.
32. Which courts have jurisdiction over copyright infringement actions? Is there a fast-track or a small-claims procedure?
This is the same as for patent infringement actions (see Question 7).
This is the same as for patent infringement actions (see Question 8). Criminal cases for copyright infringement do not require repeat infringements.
Moral rights arise automatically on creation of the copyrighted work. The following are the author's moral rights:
- To require that the authorship of the work be attributed to them.
- To make alterations to their work before, or to withhold it from, publication.
- To object to any distortion, mutilation, other modification of, or other derogatory action in relation to, their work that would be prejudicial to their honour or reputation or that of another author.
- To restrain the use of their name with respect to any work not of their own creation or in a distorted version of their work.
An author can waive their moral rights by a written instrument.
Registered Design Rights
35. Is design right protection available through registration? What are the legal conditions to obtain a registered design?
An industrial design is any composition of lines or colours, or any three-dimensional form, whether or not associated with lines or colours, that gives a special appearance to and can serve as a pattern for an industrial product or handicraft.
Legal protection is available for design rights through registration. To be registrable, an industrial design must be new and ornamental. Layout designs of integrated circuits are also registrable, as long as they are original.
Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health, or morals, are not protected.
36. Which authority registers designs? Briefly outline the key stages and timing in obtaining a registered design.
Design Registration Authority
The IPO registers designs in the Philippines through the Bureau of Patents (for the application procedure flowchart, see IPO: Industrial Design Registration Process Overview.
Registration is needed for a design right to be protected.
Process and Timing
The application procedure flowchart and timing, as well as the design application fees, are available on the IPO website.
The Philippines recognises foreign priority for registered design right applications.
A design application is published after it passes a formality examination before registration. There is no substantive examination.
There is no opposition process against a design application. However, within 30 days from the date of publication of the design application, any person can present written adverse information concerning the registrability of the design, including matters relating to novelty and industrial applicability, while citing relevant prior art. The IPO must consider any written adverse information that complies with all of the following:
- Is in the form of a sworn statement.
- States the personal information and circumstance of the opposing party.
- States the grounds for objecting to the registration.
The Philippines is not a contracting party to the Hague System for the International Registration of Industrial Designs.
37. What official facilities are available to conduct searches and obtain information on design rights?
A search for information on designs can be conducted through IPOPHL Design Search.
39. What steps must a registered design right owner take to maintain the registration and legally protectable status of its design rights?
To maintain a design registration, the renewal fee must be paid within a year of the expiration of the registration (for the renewal fee, see IPO: Schedule of Fees on Utility Model & Industrial Design).
If the renewal fee is not paid, the design registration is considered as lapsed from the day following the expiration of the period to pay the renewal fee. A grace period of six months may be granted on payment of the prescribed surcharge.
40. What rights does a registered design give to its owner? On what grounds can a registered design infringement action be brought? What are the defences to design infringement actions?
Grounds for Registered Design Right Infringement
The grounds for an infringement action are the making, using, offering for sale, selling, or importing of a product using the registered design without the authorisation of the design owner.
Defences to a Registered Design Right Infringement Action
This is the same as for patent infringement actions (see Question 8).
41. Which courts have jurisdiction over registered design infringement actions? Is there a fast-track and/or a small-claims procedure?
This is the same as for patent infringement actions (see Question 7).
This is the same as for patent infringement actions (see Question 8).
This is the same as for patent infringement monitoring (see Question 9).
Unregistered Designs
There are no rights in an unregistered design, unless it falls under the ambit of copyright protection. If so, the rules on copyright govern the unregistered design (see Question 24 to 34).
Trade Secrets and Confidential Information
45. Is there specific protection for trade secrets and confidential information in your jurisdiction?
No specific Philippine law governs trade secrets. However, the IP Code recognises the protection of confidential information as an independent intellectual property right (IPR). Trade secrets can be protected by contractual means, such as confidentiality or non-disclosure agreements. Some other laws, such as general criminal laws, tax, and environmental laws, also protect confidential information. For example:
- Article 291 of the Revised Penal Code contains penalties that can be applied to any manager, employee, or servant who, in such a capacity, learns the secrets of their principal or employer and reveals those secrets. This provision includes, but is not limited to, the revelation of corporate trade secrets. The revelation of industrial secrets is likewise subject to the imposition of penalties under Article 292 of the Revised Penal Code. A person in charge, or any employee or workman, of any manufacturing or industrial establishment who, to the prejudice of the owner of that industrial establishment, reveals an industrial secret of their employer, can be criminally punished.
- For trade secrets that have been stored in electronic form, a criminal action can be brought in cases where a party's computer or computer data is accessed by another without authority (Cybercrime Prevention Act). In addition, the Electronic Commerce Act provides for a confidentiality obligation imposed on any person or entity that collects electronic information.
- The Consumer Act contains provisions prohibiting the use, or the revelation of, any information concerning any method or process regarded as a trade secret to that person's own advantage.
- Specific provisions apply to confidential information that relates to taxpayers under section 278 of the Tax Code. Under that provision, any person who causes an officer or employee of the Bureau of Internal Revenue to divulge any confidential information regarding the business, income, or inheritance of any taxpayer (the knowledge of which was acquired by the officer or employee in the discharge of their official duties, which it is unlawful for them to reveal), can be subject to the penalties provided for under the Tax Code. In addition, the same penalties can also be applied to any person who publishes or prints (in any manner) any income, profit, loss, or expenditure appearing in any income tax return that was not provided to that person in accordance with the law.
- In corporate rehabilitation proceedings, the Interim Rules Governing Corporate Rehabilitation authorises a rehabilitation court, on a motion or on its own initiative, to issue an order to protect trade secrets or other confidential research, development, or commercial information belonging to the debtor (that is, the corporation under rehabilitation).
- The Toxic Substances and Hazardous and Nuclear Wastes Control Act of 1990 limits the public's right to access information through records, reports, or information concerning chemical substances and mixtures, whenever the Department of Environment and Natural Resources considers that a record, report, or information (or parts of those documents) is confidential. These documents cannot be made public where they would divulge the trade secrets, the production or sales figures, or the methods or processes that are unique to the relevant manufacturer, processor, or distributor (or would otherwise tend to adversely affect the competitive position of the relevant manufacturer, processor, or distributor).
Trade secrets and confidential information are not registrable rights.
46. What steps must an owner of trade secrets and confidential information take to maintain the legally protectable status of their trade secrets and confidential information?
47. What steps can a party with rights protecting confidential information and trade secrets take to monitor whether another party is disclosing or using its trade secrets and confidential information?
This is the same as for patent infringement monitoring (see Question 9).
48. What rights do trade secrets and confidential information provide? On what grounds can an action for unauthorised disclosure or use of confidential information or trade secrets be brought? What are the defences to such actions?
Rights Granted
There is no specific law in the Philippines governing trade secrets, although the IP Code recognises the protection of undisclosed information as an independent IPR. Trade secrets and other confidential commercial information can be protected by contract.
49. Which courts have jurisdiction over actions for unauthorised disclosure or use of confidential information or trade secrets? Is there a fast-track and/or a small-claims procedure? What are the remedies in such actions?
Courts
A civil action for the enforcement of a confidentiality agreement or damages can be filed with the regular courts. Claims for contractual damages arising from a breach of a confidentiality agreement where the value of the claim does not exceed PHP200,000, exclusive of interest and costs, can be filed under the small-claims procedure in metropolitan or municipal trial courts.
Domain Names
No specific Philippine law governs domain names. However, the Official Domain Registry of the Philippines is dotPH Domains, Inc., which holds and maintains the database of all Philippine domain names. Domain names are registered on a first-paid, first-served basis. Those who intend to register a domain name must register through the dotPH Domains, Inc. website and submit their contact information.
If a domain name is registered as a trade mark, the same rules apply as for trade mark actions (see Question 19 to 21).
Database Rights
No specific Philippine law governs databases and there are currently no recognised database rights. However, databases that are original due to the selection, co-ordination, or arrangement of their contents are protected by copyright (see Question 24 to 34).
International IP Treaties
52. Is your jurisdiction party to international treaties that facilitate the recognition of foreign IPRs in your jurisdiction?
Utility Models
The Philippines is not a party to any international treaties in relation to utility models.
Design Rights
The Philippines is not a party to any international treaties in relation to design rights.
Reform
The Supreme Court promulgated the Revised Rules of Procedure for Intellectual Property Rights Cases (Revised Rules), which took effect on 16 November 2020. The Revised Rules introduced the following relevant changes, among others:
- The timeline for promulgation of a judgment is shortened from 90 days to 60 days after termination of pre-trial.
- In addition to the previously authorised Special Commercial Courts in Quezon City, Manila City, Makati City, and Pasig City, Special Commercial Courts in Baguio City, Iloilo City, Cebu City, Cagayan de Oro City, and Davao City now have authority to act on applications for the issuance of writs of search and seizure, or search warrants, in both civil and criminal actions. These warrants are enforceable nationwide.
- Depositions and other modes of discovery can now be conducted through teleconferencing, videoconferencing, and other electronic means.
- The court should order the destruction of seized goods that are considered hazardous, even if no criminal complaint is filed.
There are bills pending before Congress that seek to amend the IP Code. The following are some of the major amendments being proposed:
- Expansion of the organisational structure of the IPO from four bureaus to seven bureaus.
- Grant of police powers to the IPO in relation to counterfeit and pirated products. This would allow the IPO to undertake enforcement functions supported by concerned agencies, including:
- conducting visits during reasonable hours of establishments suspected of violation, and issuing provisional or final confiscation orders against counterfeit and pirated goods;
- issuing provisional and final take down orders, or cease and desist orders, to internet service providers, domain name registries/registrars, website owners, online intermediaries, online platforms, social media platforms, or any similar medium; and
- the power to issue provisional remedies to address any violation of IP rights.
- On patents:
- filing of provisional patent applications;
- parallel filing of two applications (a utility model and an invention patent application), for the same subject matter, which will be prosecuted independently. However, the applicant must make a choice whether to maintain the utility model registration or the letters patent, should both be granted.
- On trade marks:
- removal of the requirement that the mark must be visible, allowing for the registration of non-visible marks; and
- provision for the recognition of certification marks.
- On copyright:
- no copyright infringement for the making of a painting, drawing, engraving, or photograph of the work or the inclusion of the work in a cinematographic film or in a television broadcast, for a work that is permanently situated in a public place; and
- requirement of registration of a work to obtain an award of statutory damages.
- Imposition of solidary liability to landlords, unless they can prove that they have no knowledge or participation in the tenant's infringing act.
Contributor Profiles
Bienvenido Marquez III, Partner and Head, Intellectual Property, Data and Technology Practice Group; Co-head, Consumer Goods and Retail Industry Group
Quisumbing Torres, member firm of Baker & McKenzie International, a Swiss verein
T +63 2 8819 4936
F +63 2 8816 0080
E [email protected]
W www.quisumbingtorres.com/en/about-us
Professional qualifications. Philippine Bar, 1997
Areas of practice. Brand management and enforcement; IP disputes; IP transactions; IP litigation and prosecutions; copyright data and technology; media and telecommunications; data privacy and security; cybercrime law compliance.
Non-professional qualifications. BS Legal Management, Ateneo de Manila University, 1990
Recent transactions
- Successfully defended a leading global pharmaceutical company in a patent cancellation action involving a local generics company that had been commercially distributing products that infringed on client's patent. Successfully secured a favourable ruling from the IPO, which will boost the client's position in other patent matters around the region against similar generics manufacturers involving the same patent.
- Acted on behalf of a software developer against an end-user infringer and successfully obtained a conviction against the officers of the end-user company (the first conviction against an end-user in the Philippines).
- Represented and assisted a global FMCG company in successfully investigating and carrying out, with the assistance of local authorities, simultaneous enforcement actions against respondents found selling counterfeit items with marks of the client.
Languages. English, Filipino
Professional associations/memberships. International Trademark Association (INTA), Member of the Asia Pacific Global Advisory Council (GAC) (2022 to 2023); International Trademark Association (INTA), Lead, Online Piracy Project Team of the Anti-Counterfeiting Committee; Integrated Bar of the Philippines; International Bar Association; International Trademark Association (INTA), Chairman, East Asia & the Pacific Anti-Counterfeiting Sub-Committee (2016 to 2017 Term); Enforcement Committee (2018 to 2019); International Trademark Association (INTA), Member, Enforcement Committee (2018 to 2019 Term); Licensing Executives Society (LES) Philippines, Immediate Past President (2019 to 2021); Co-Chair, Electronics, IT and Telecommunications (EITT); Licensing Executives Society (Asia Pacific), Co-chair; Intellectual Property Coalition, Auditor, Board of Trustees and Executive Committee Member; Intellectual Property Professors and Researchers Organization of the Philippines, Member of the Board (IP Pro); Intellectual Property Association of the Philippines (IPAP); Asian Patent Attorneys Association (APAA).
Divina Pastora Ilas-Panganiban, CIPM, Partner, Intellectual Property, Data and Technology Practice Group; Co-head, Technology, Media and Telecommunications Industry Group
Quisumbing Torres, member firm of Baker & McKenzie International, a Swiss verein
T +63 2 8819 4961
F +63 2 8816 0080
E [email protected]
W www.quisumbingtorres.com/en/about-us
Professional qualifications. Philippine Bar, 2001
Areas of practice. Brand enforcement; brand management; IP transactions; data and technology; data privacy and security; technology, media and telecommunications.
Non-professional qualifications. Master of Laws Intellectual Property and International Human Rights (with Distinction), Lund University, 2003; B.A. Public Administration, University of the Philippines, cum laude, 1995
Recent transactions
- Successfully obtained for Mang Inasal another favourable ruling from the Court of Appeals, involving other third party marks, which attempt to use the style, font, and colors of the client's mark.
- Successfully assisted a global FMCG company in handling recordation with the Bureau of Trademarks the assignment of the Philippine trademark portfolio consisting of more than 300 marks.
- Manage the worldwide trade mark portfolio of a Philippines-based multinational company and the largest Filipino fast food corporation. Assist in its brand management, IP protection and enforcement, and IP commercialisation activities across the globe.
- Languages. English, Filipino
Professional associations/memberships. Integrated Bar of the Philippines; International Bar Association; Licensing Executives Society International, Vice President and Director, Philippines Chapter; Licensing Executives Society International, Co-Vice Chair of the Education Committee; ASEAN Intellectual Property Association; Asian Patent Attorneys Association (APAA); International Trademarks Association (INTA), Member of the Data Protection Committee; U.P. Women Lawyers Circle; Pi Gamma Mu International Honor Society for Social Sciences; American Chamber of Commerce of the Philippines, Co-Chairperson of the IP Rights Committee; European Chamber of Commerce of the Philippines, Chairperson of the IP Rights Committee; Intellectual Property Association of the Philippines (IPAP); International Association for the Protection of Intellectual Property (AIPPI); International Association of Privacy Professionals, Certified Information Privacy Manager (CIPM).
Reena Mitra-Ventanilla, Partner, Intellectual Property, Data and Technology Practice Group; Member, Consumer Goods and Retail and Financial Institutions Industry Groups
Quisumbing Torres, member firm of Baker & McKenzie International, a Swiss verein
T +63 2 8819 4952
F +63 2 8816 0080
E [email protected]
W www.quisumbingtorres.com/en/about-us
Professional qualifications. Philippine Bar, 2007
Areas of practice. Brand management and enforcement; IP dispute resolution and litigation; IP due diligence; IP transactions; technology transfer arrangements and licensing; copyright; data and technology; media and telecommunications; data privacy and security.
Non-professional qualifications. AB Psychology, University of the Philippines, 2001
Recent transactions
- Assist a video-focused social networking company in opposing 18 trade mark applications of a local software application platform company. The dominant feature of the marks is confusingly similar with the well-known name and registered marks of the client.
- Manage the growing trade mark portfolio of local brands of a corporation engaged in the supermarket industry in the Philippines. Assist in its brand management and IP commercialisation activities in the country.
- Assist a global leader in the supply of high-tensile steel wire safety nets and meshes in a complaint for patent infringement against a local company and its directors and officers, for importing and distributing a product infringing on the client's patent.
Languages. English, Filipino
Professional associations/memberships. Asian Patent Attorneys Association (APAA); Integrated Bar of the Philippines, Member; International Trademark Association (INTA), Member of the Building Bridges Committee (2022 to 2023); International Association for the Protection of Intellectual Property (AIPPI); Intellectual Property Association of the Philippines (IPAP), Member; International Bar Association; Licensing Executives Society (LES) Philippines, Corporate Secretary; Philippine Franchise Association, Corporate Secretary; Philippine Franchise Association, Head, Alternative Dispute Resolution Committee; U.P. Women Lawyers Circle, Member; U.P. Portia Sorority, Member.