Philippines, US boost collaboration in IP enforcement

By Amanda Carlota, Federis & Associates
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The Philippines has marked its ninth straight year with a clean sheet in the US Trade Representative’s annual Special 301 Report reviewing the global state of IP protection rights and enforcement.

The report reviewed more than 100 trading partners, listing 32 for inadequate IP laws such as copyright, patents and trademarks in the announcement on 27 April 2022. But the Philippines is once again cleared of concern.

The feat was hailed by director general of the IP Office of the Philippines (IPOPHL), Rowel Barba, as “another testament that the IPOPHL and National Committee on IP Rights remain steadfast in fostering innovation, creativity and entrepreneurship and preserving the country’s attractiveness as a destination for foreign IP assets to thrive”.

Amanda Carlota, Federis & Associates, Philippines, US boost collaboration in IP enforcement
Amanda Carlota
Federis & Associates

The report praised several measures the IPOPHL has undertaken to combat counterfeiting and piracy, including:

(1) Signing a memorandum of understanding (MoU) with the World Intellectual Property Organisation for conducting a nationwide survey to measure IP awareness among Filipinos; and

(2) Working with the EU Intellectual Property Office to conduct a workshop for law enforcement officers and public prosecutors to improve enforcement capabilities.

The report also cited the Philippines’ enactment of the Anti-Camcording Act, 2010, as an example of a law that other countries should adopt to deter unauthorised camcording.

Also discussed in the report were US bilateral talks with the Philippines and other countries regarding geographical indications. This coincides with the drafting of the IPOPHL’s Bureau of Trademarks implementing rules and regulations (IRR) on geographical indications to protect locally made products, which has two main objectives:

(1) Recognition of geographical indications as protectable IP under the IP Code of the Philippines; and

(2) Provision of reciprocal rights and protection of geographical indications to the Philippines’ fellow member-states of the WTO.

In a separate announcement, the IPOPHL listed several locally made products that could be protected as geographical indications pursuant to the IRR, such as mangoes from the province of Guimaras and T’nalak fabric handwoven by the people of Lake Sebu in South Cotabato, both of which are already registered as collective marks.

In one minor cautionary note, the US report did mention that opposition and cancellation proceedings in the Philippines are reputed to be slow. But the IPOPHL’s imminent amendments to the rules on inter partes proceedings, which govern oppositions and cancellations, should speed things up. The amendments include provisions for:

(1) Use of email for service and filing, when available, which was pioneered during the start of the pandemic;

(2) Inclusion of more than one IP application or registration in a single pleading, special power of attorney, proof of authority, verification and certification of non-forum shopping, as long as the same parties are involved, when previously separate pleadings and other documents were required for each individual application or registration;

(3) Granting of only one extension period of 45 days for filing an opposition or answer, when previously three 30-day extensions were available;

(4) Issuance by adjudication officers of decisions and final orders within 20 days, extendable for another 20 days for justifiable reasons;

(5) Granting of a period of 15 days to file a memorandum of appeal, extendable for another 15 days for meritorious reasons, when previously the period and extension were only 10 days each; and

(6) Granting of a period of 15 days for the appellee to comment on the appeal, when previously the period was 10 days.

Other measures the IPOPHL has undertaken recently include signing of MoUs with two key organisations. The first is with the Philippine Retailers Association, the members of which comprise nearly 80% of the Philippine retail industry. The MoU provides for adoption of an anti-counterfeiting and anti-piracy code of practice, and implementation of a fake-free policy in commercial establishments.

The IPOPHL hopes this MoU will help curb counterfeit trade in notorious markets for counterfeiting and piracy, like the Greenhills Shopping Centre in San Juan City in metro Manila, where the National Bureau of Investigation seized PHP63 million (USD1.1 million) worth of suspected counterfeit goods back in April this year.

The second MoU is with the Motion Picture Association, representing the five major US film studios (Paramount, Sony, Universal, Walt Disney and Warner Bros) and Netflix, for development of a piracy monitoring system and site-blocking regime for piracy sites.

AMANDA CARLOTA is an associate lawyer at Federis & Associates

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