International recognition of Philippine IP strategies

By Amanda Carlota, Federis & Associates
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Last year saw a dramatic increase in reports of IP rights violations in the Philippines, with 90% of reported counterfeiting and piracy occurring online. In March of this year, it was a welcome development when e-commerce platforms Lazada and Shopee signed a Memorandum of Understanding (MoU) with various brand owners and associations. The MoU establishes a code of practice for dealing with counterfeit and pirated goods sold on their platforms.

Amanda Carlota
Federis & Associates

In a complementary move, the Intellectual Property Office of the Philippines (IPOPHL) implemented revised rules of procedure that expanded the jurisdiction of its IP Rights Enforcement Office to include electronic, digital and online channels. The IPOPHL has also signed agreements with the US Patent and Trademark Office (USPTO) and the International Trademark Association (INTA).

The agreement with the USPTO renews a pre-existing partnership between the parties. It covers training and capacity building, promoting the importance of IP in innovation and economic growth, and sharing information and best practices. The agreement with INTA focuses on anti-counterfeiting, which also includes capacity building and co-ordination between brand owners and other government agencies, education of judges on IP issues, and raising awareness of IP protection among the public, particularly youth.

These agreements will help the government in the fight against counterfeiting. In the past few months, the bureau of customs has seized more than PHP3 billion (USD59.9 million) worth of counterfeit goods in raids conducted in the cities of Makati, Parañaque, Pasay and Subic. The seized goods included fashion items, personal care products, electronics and cigarettes.

To further aid in the effort, the IPOPHL-led National Committee on Intellectual Property Rights (NCIPR) has called on both national government agencies and local governments to adopt institutionalised anti-counterfeit and anti-piracy policies.

The Philippines has also strengthened its international ties. On 25 March, the IPOPHL, represented by Director General Rowel Barba, assumed chairmanship of the Asean Working Group on Intellectual Property Co-operation until 2023. The working group aims to accelerate the completion of deliverables under the Asean IP Rights Action Plan 2016-2025.

On 28 April, the Philippines acceded to the Beijing Treaty by depositing its instrument of accession, which had been signed by President Rodrigo Duterte in January, with the World Intellectual Property Organisation. The treaty, which expands the economic and moral rights of performers in audiovisual performances, enters into force with respect to the Philippines on 28 July.

For the eighth consecutive year, the Philippines remained off the Special 301 Report, an annual report published by the US Trade Representative on the state of IP rights protection and enforcement around the world. Countries named in the report are those that do not provide “adequate and effective” protection of IP rights, or “fair and equitable market access” to US nationals relying upon IP rights. The country also cleared an allegation, dating back to 2019, that the government used unlicensed software.

The Philippines also stayed off the European Commission’s watch list of countries in which the state of IPR protection and enforcement “gives rise to the greatest level of concern”. According to the IPOPHL’s Barba, the Philippines’ continued exclusion from the above-mentioned lists demonstrates the effectiveness of the whole-of-society strategy adopted by the NCIPR.

In June, the IPOPHL announced that IP filings for January to April increased by 21% from the same four-month period last year. The agency recorded a total of 15,028 filings, with filings for utility models and trademarks seeing the most growth. Barba attributed this to the streamlining of the IPOPHL’s e-services portal so that most filings can now be done online, as well as the agency’s efforts to increase IP awareness and education among businesses. The agency has also encouraged its partners in academia (innovation and technology support offices in higher education institutions, and research and development centres) to commercialise their innovations to boost filings.

Lastly, the Supreme Court recently published two landmark case decisions involving IP rights: Kolin Electronics v Kolin Philippines International and Emzee Foods v Elarfoods. In the former case, the court emphasised the adoption of the dominancy test and abandonment of the holistic test in determining confusing similarity between identical marks both used on goods in the same class of the Nice Classification, an international classification of goods and services applied for the registration of marks. In the latter case, the court also used the dominancy test to settle a long-running dispute between rival makers of lechon (roast suckling pig).

Amanda Carlota is an associate lawyer at Federis & Associates Law Office

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