Rogelio Nicandro
Romulo LLP

Rogelio Nicandro of Romulo LLP offers some handy tips for stopping trademark infringement in the Philippines

How are trademarks protected in the Philippines?

There are a number of methods available through the Philippines Intellectual Property Office (PIPO). A trademark examiner will reject an application if it is identical or confusingly similar to marks that are previously registered or filed. Applicants, however, have the opportunity to challenge any objections to their application.

Once a trademark is registered, an interested party can still initiate cancellation proceedings with the PIPO.

When a trademark is being infringed, however, owners can petition for a warrant to access the accused party’s location and seize the allegedly infringing goods. A trademark owner may also file a complaint for unfair competition practices.

How can pharmaceutical players combat trademark infringement in the Philippines?

Any party interested in opposing the grant of a trademark can file an opposition (within a set period) in the Philippines. If they miss the deadline, they can still file a petition to cancel the trademark once it has been granted.

If a third party produces a lookalike product bearing a brand’s trademark, then it has grounds to enforce its rights in court. Trademark owners must bear in mind here that they have to apply to the court to obtain a search warrant or a permit to seize infringing goods, which are strict processes.

The requirements are strict because a search or seizure lets the trademark owner infringe on the rights of others. If the search warrant is not based on fact, it could be highly damaging. That’s why courts are very strict when it comes to examining the evidence before granting a search warrant or an order for the seizure of goods.

How useful are customs agencies in the Philippines?

Customs is a possibility, but once the counterfeit goods are already in the country, there’s no point, so the trademark owner has to the courts to enforce its rights. But a trademark owner can prevent a product from entering the country by working with customs. There is a small fee involved, but it will stop entrance of the goods into the Philippines. Investigators also help. Any information, such as which ship is carrying the infringing goods, will give the trademark owner a major head start. Customs cannot search every container—the officials need to be fed information. Tipping off customs is normal.

Do local enforcement agencies work primarily with brands at point of entrance or on a more intimate level, with the public?

Generally, local enforcement agencies deal directly with the public, for a more insightful approach to locating infringing goods. While seizure proceedings are available at customs, enforcement usually takes place through filing an infringement case against the infringing parties.

The process usually starts with a cease and desist letter to satisfy procedural due process, which requires that a formal demand be made first. If the accused party fails to respond, a warning letter may also be issued, prior to any sort of action.

What can be done to stop infringement before it becomes a significant problem?

It’s worth remembering that infringement is typically settled through a cease and desist notice. Once a trademark owner sends a cease and desist notice, the infringer typically stops because they know they are infringing. It is an effective route.

There is also a law in the Philippines that states that if a commercial establishment, such as a shopping centre, allows infringing products to be sold on its premises, it is liable for infringement. Admittedly, the trademark owner needs to highlight that fake goods are being sold. The owner of the shopping centre, for example, might think that the goods are legitimate. But once the trademark owner makes the owner aware of the fake goods, it must act to stop the infringement, otherwise it can be held liable. That acts as a good deterrent.

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