Q. My trademark has been registered worldwide, except in the Philippines. I also do not use the same in the Philippines. If somebody uses the trademark, can I file a case for unfair competition or infringement?
A. Yes. This is explicitly recognized in the Intellectual Property Code, which states that “Any foreging national or juridical person who meets the requirements of Sec. 3 of this Act and does not engage in business i the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines. This provision has been in accordance with the previous rulings of our Supreme Court in this regard.
“The disability under Section 69 of the Corporation Law of an unlicensed foreign corporation refers to transacting business in the Philippines and maintaining a ‘suit for the recovery of any debt, claim, or demand whatever’ arising from its transacting business in the Philippines. In another case, our Supreme Court precisely rejected a reading of Section 69 of the Corporation Law as ‘would give it a literal meaning’, i. e., ‘No foreign corporation shall be permitted by itself or assignee any suit for the recovery of any deed, claim, or demand unless it shall have the license prescribed by Section 68 of the Law. ‘The effect of the statute,’ declared the Supreme Court, ‘preventing foreign corporations from doing business and from bringing actions in the local courts, except on compliance with elaborate requirements, must not be unduly extended or improperly applied.
Our Supreme Court made it clear that “the disability of a foreign corporation from suing in the Philippines is limited to suits ‘to enforce any legal or contract rights arising from, or growing out, of any business which it has transacted in the Philippine Islands.’ . . . On the other hand, where the purpose of a suit is ‘to protect its reputation, its corporate name, its goodwill, whenever that reputation, corporate name or goodwill have, through the natural development of its trade, established themselves,’ an unlicensed foreign corporation may sue in the Philippines”.
Q. I have a trademark registration /letters patent issued by the Intellectual Property of the Philippines and somebody is using it without my consent. What are the actions can I take?
A. The following can be done:
- If the information is not yet confirmed, CNLEXFIRM can conduct a surveillance to confirm/validate the information and get samples of the fake products. If the information confirmed, then CNLEXFIRM can apply for a Search Warrant with our regular court and forthwith serve the same by confiscating the infringing items and depositing them in a Bonded Warehouse. Afterwhich, a criminal case for infringement is simultaneously filed with the regular courts to prosecute the infringer.
- You can send a demand letter, through your counsel, addressed to the infringer to him/her/them to cease and desist from using the registered trademark within a specified period, with a warning that should the infringer does not heed the warning, a criminal case for infringement of trademark will be filed without further notice. CNLEXFIRM can proceed as in the preceding paragraph.
- Alternatively, you can also file a civil case for inringement, with a prayer for an injunction and issuance of a temporary restraining order.
- Notify and/or file a seizure proceedings with the Bureau of Customs to prevent the entry into the Philippine ports of fake products or unauthorized importations bearing the Philippine registered trademark. This can however be done only when the registered trademark has been recorded in the Bureau of Customs books, via the “Customs Recordal”, which CNLEXFIRM can assist you.
- Verified notice of opposition may also be filed, within thirty (30) days from the publication of a trademark application in the Official Gazette of the Intellectual Property Office. or
- File (a) petition for cancellation of the trademark with the Intellectual Property Offiice within five (5) years from the date of the registration or (b)at any time if the registered mark becomes a generic name for the goods or sevices, or a portion therof, for which it is registered, or has been abandoned or its registration was obtained fraudulently or contrary to the provisions of R.A. 8293, or if the registered mark is being used by, or with the permission of the registrant so as to misrepresent the source of the goods or services for which it is registered or (c) any time, if the registered owner of themark, without legitimate reason fails to use the mark within the Philippines or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer.
Q. I have a letters patent issued by the Intellectual Property of the Philippines and somebody is using my invention without my consent. What action can I take?
A.You may file a civil action for infringement before the regular courts, with prayer for an injunction and issuance of a temporary restraining order.
Q. Why is it that I cannot file a criminal case for infringement in case of patent infringement?
A. The IP Law (R.A. 8293) says so. You will need a prior final and favorable judgement in the civil action against a person, before you can file a criminal case for infringement. Unlike in trademark cases where the IP Law specifically provides that a criminal case for infringement can immediately be filed.
Q. What is the requirement before I can recover damages in infringement cases?
A. There must be a notice as to the fact that the brand or the patent is registered with the Intellectual Property Office of the Philippines. In case of a registered trademark, the word “TM” or the words “Philippine Patent, Letters Patent No. ___” should be indicated in patented product, or on the advertising materials relating to the patented product or process.
You can also cause a publication of the registered trademark or letters patent with a newspaper of general circulation to warn the public of your ownership of the trademark of patent invention and inform the public the authorized distributor of your product, to whom they should exclusively deal with.