PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
or otherwise. Thus, a trade mark or copyright may be licensed in whole or in part, either exclusively or non-exclusively. 6.3 Registration or Recording of an Assignment or Licence For trade mark assignments and licences, recordal with the BOT is required to affect third parties, includ - ing the IPOPHL. As a result, the licensee or assignee cannot assert any rights to the trade mark against others, and there is a risk that a subsequent, recorded assignment may take precedence over an unrecorded one. In contrast, recordal of copyright assignments and licences is optional and has no effect on their valid - ity, enforceability or effectivity. At most, recordal pro - vides public notice. However, if the transaction is not recorded, there may be risk of confusion, such as when another party records an assignment or licence after the unrecorded transaction. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Trade mark and copyright infringement may be admin - istrative, civil or criminal in nature. No damages may be recovered under the IP Code after the elapse of four years from the time the cause of action arose. Meanwhile, since the IP Code does not specify the prescriptive period of a criminal action for infringe - ment, the rules under Act No 3326 apply based on the prescribed penalty: • four years if punishable by imprisonment for more than one month but less than two years; • eight years if punishable by imprisonment for two years or more but less than six years; and • 12 years if punishable by imprisonment for six years or more.
The equitable principles of laches, estoppel and acquiescence, if applicable, may be considered and applied. 7.2 Legal Claims for Infringement Lawsuits The IP Code provides that the use in commerce of an identical copy or colourable imitation of a regis - tered mark, or a dominant feature thereof, by another person without the consent of the registered owner of that mark, where such use is likely to cause confu - sion, constitutes trade mark infringement. The follow - ing elements must be shown: and Their Standards Trade Mark Infringement • the trade mark is registered with the IPOPHL; • the trade mark has been reproduced, counterfeit - ed, copied or colourably imitated by the infringer; • the infringing mark has been: (a) used in connection with the sale, offering for sale or advertising of any goods, business or services; or (b) applied to labels, signs, prints, packages, wrappers, receptacles or advertisements in - tended to be used upon or in connection with such goods, business or services; • the use or application of the infringing mark is likely to cause confusion, mistake or deception as to the goods/services themselves or their source; and • such acts are without the consent of the trade mark owner. Dilution is not found in the IP Code per se but is an accepted claim based on jurisprudence for marks that are deemed to be famous or well known. If the infringed mark is not registered, the owner may raise an action for unfair competition under the IP Code, which protects the goodwill of a proprietor. Cybersquatting or the acquisition in bad faith of a domain name that is identical or confusingly similar to a registered mark is proscribed by Republic Act No 10175, also known as the Cybercrime Prevention Act of 2012.
399 CHAMBERS.COM
Powered by FlippingBook