Philippines steps up rules of procedure for IP rights cases

The Supreme Court’s Revised Rules of Procedure for Intellectual Property Rights Cases took effect on 16 November 2020, amending the rules that had been in place since 2011. The revised rules apply to all Regional Trial Courts designated by the Supreme Court as Special Commercial Courts, which have jurisdiction over intellectual property (IP) rights cases.

As a general rule, orders issued by Special Commercial Courts in IP rights cases are immediately executory. However, there are certain exceptions, namely:

1. The order is restrained by the Supreme Court or the Court of Appeals;
2. The order is for the destruction of infringing goods, related objects or devices, where a motion for reconsideration is filed; or
3. The order is for the release of seized goods, where a search warrant is quashed.

The Special Commercial Courts in the cities of Manila, Quezon, Makati, Pasig, Baguio, Iloilo, Cebu, Cagayan de Oro, and Davao have the authority to issue writs of search and seizure that are enforceable nationwide.

Some of the procedural changes for civil cases are listed below:

1. An exclusive licensee to a copyright may file an action;
2. Complaints and answers must include supporting evidence;
3. Though still a prohibited pleading, a motion to dismiss may be filed when the court has no jurisdiction over the subject matter, there is another action pending between the same parties for the same cause, or the cause of action is barred by a prior judgment or statute of limitations;
4. A motion for extension of time to file the answer may still be filed for meritorious reasons, but the revised rules specify that only one extension, not exceeding 30 calendar days, may be requested;
5. A motion for postponement may be filed if due to acts of God, force majeure, or physical inability of the witness to appear and testify;
6. Extraterritorial service of summons, orders and other court processes to a foreign private juridical entity is now allowed;
7. The court may allow a deponent to give their deposition through electronic means, such as teleconferencing or video-conferencing; and
8. The court must render judgment within 60 calendar days after pre-trial, from receipt of the last position paper or expiration of the period to file the same, from the termination of the last clarification hearing, from the oral ruling on the last offer of evidence, or from submission of the memoranda or draft decision.

On the other hand, some of the procedural changes for criminal cases include the following:

1. The list of prohibited motions now includes motions for judicial determination of probable cause, unmeritorious motions for reinvestigation of the prosecutor recommending the filing of an information once the information has been filed, motions for a bill of particulars that do not conform to section 9, rule 116 of the Rules of Court, and motions to suspend arraignment based on grounds not stated in section 11, rule 116 of the Rules of Court;
2. A motion for postponement may be filed if due to acts of God, force majeure, or physical inability of the witness to appear and testify; and
3. The court must promulgate judgment within 60 calendar days from the time the case is submitted for decision, with or without the parties’ memoranda.

Electronic evidence is now admissible if it complies with the rules on admissibility under the Rules on Electronic Evidence, which took effect in 2001.

For trademark infringement and unfair competition cases, the revised rules enumerate examples of evidence deemed acceptable proof of actual use of a mark. The list is adapted from the Intellectual Property Office of the Philippines (IPOPHL) Rules and Regulations on Trademarks, Service Marks, Trade Names, and Marked or Stamped Containers.

Furthermore, market surveys may now be offered in evidence to prove the primary significance of a mark to the relevant public or likelihood of confusion. Infringing goods, related objects, and devices are subject to disposal and/or destruction.

Hazardous goods shall be subject to destruction only, while non-hazardous goods shall be subject to disposal and/or destruction. Acceptable disposal methods include humanitarian donations, under certain conditions.

Lastly, judges and court personnel will undergo training by the Philippine Judicial Academy in coordination with the Office of the Court Administrator.

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

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