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At-a-glance: Intellectual Property Philippines IPO Building, 351 Sen Gil Puyat Ave, Makati City, Philippines 1200 Tel: +632 752 5450 to 65 Fax: +632 897 1724 Email: mail@ipophil.gov.ph or dittb@ipophil.gov.ph Website: www.ipophil.gov.ph One... [more]

One of the key concerns in trade mark cases for lawyers in the Philippines is the alarming rate of dismissals on appeals due to technicalities, given the strict timeline to file an application for appeal at the Office of the Director General (ODG). In addition, the ODG's reversals of decisions by the Bureau of Legal Affairs (BLA) usually originate from mistreatment of the first-to-file rule and subjective claims of confusing similarity. The ODG generally reverses BLA decisions where ownership is proved by undisputed evidence, although the ODG also states that the ability to register the mark with the Intellectual Property Office of the Philippines (IPOPhil) is no indication of its ownership, as stated in the IP Code.

Supreme Court decisions last year enlightened practitioners on questions regarding trade mark infringements and cancellations. In Coffee Partners v San Francisco Coffee & Roastery, the Supreme Court ruled that trade marks shall be protected even without registration, and by extension, an infringement suit may be filed by a trade mark owner without first registering with IPOPhil, provided that the rights owner has previously used the trade name in commerce within the country. The mark need not be in use. The decision in Dermaline v Myra Pharmaceuticals saw the Supreme Court take a pro-trade mark stance, ruling in favour of a trade mark owner who proposed to cancel the registration of a confusingly similar mark in a different class by citing the owner should enjoy protection in "market areas that are the normal potential expansion of his business". The new filing was sought on skin treatment services while the existing registration covered pharmaceutical preparations.

Meanwhile, IPOPhil is carrying out a public consultation on proposed amendments to regulations that govern administrative complaints for violations of IP law. In particular, the most anticipated change recommended the removal of provisions regarding liberal discovery procedures and depositions as a necessary exchange for greater efficiency within IPOPhil to issue decisions. This, however, conflicts with the views expressed by the Supreme Court, which stated that depositions are a beneficial method to seek and fact-check the truth so as to prevent perjury, encourage out-of-court settlements, and prevent surprises or unnecessary distractions in court. Furthermore, IPOPhil expects the IP Code to be overhauled in relation to a number of copyright matters, including the review and management of copyright applications. The new House Bill will include the definition of copyright infringement and communication to public over telecommunication broadcasting, amend the term of moral right after an author's death, and entitle rights owners of licensed work to statement accounts.