PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
tion and related expenses may range from USD35,000 to USD50,000. A civil case for infringement is filed before the regional trial court designated as a special commercial court (SCC) having jurisdiction over the place where the plaintiff or the defendant resides or has its principal office, at the option of the plaintiff. The filing fee for a civil infringement action is 2% of the total amount of the claims. The estimated costs for legal representa - tion and related expenses may range from USD45,000 to USD70,000. A criminal infringement case is instituted with the National Prosecution Service of the Department of Justice (DOJ) for the purposes of preliminary investi - gation. A criminal case will be filed with the SCC only if probable cause is found after preliminary investiga - tion. The place of commission of the offence or any of its elements determines which SCC has jurisdiction to try the case. A criminal action for violation of IP laws may be insti - tuted with the DOJ or the Office of the Prosecutor by paying PHP5,000 as a basic filing fee. The estimated costs of legal representation and related expenses may range from USD50,000 to USD100,000. Regardless of the tribunal chosen, all litigious actions require legal representation. Foreign copyright owners can file for copyright infringement in the Philippines. The Philippines is a member of international copyright treaties, which extend copyright protection to foreign works without the need to register the copyright. A foreign owner of a registered mark in the Philippines can file a trade mark infringement case based on inter - national conventions and reciprocity. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants There are no provisions or proceedings that allow a potential defendant to seek a declaration of non- infringement. All defences will have to be raised in the infringement action. However, a complainant’s plea for a preliminary injunction will require a bond from the
trade mark owner to protect the defendant, and the defendant can seek to lift the preliminary injunction by posting a counter-bond. 7.7 Small Claims There are no specific alternative avenues for small trade mark or copyright claims in the Philippines. However, mediation outside of litigation is available to the parties at any time, as well as other alternative dispute resolution methods. 7.8 Effect of Trade Mark and Copyright Office Decisions In the Philippines, decisions made by specialised administrative bodies, such as the IPOPHL, are typi - cally given substantial weight by the courts in defer - ence to their expertise in their respective fields. When evaluating infringement claims, courts may consider similar IPOPHL rulings as precedents. The courts also seldom disturb the factual findings of the IPOPHL in case of appeals. 7.9 Counterfeiting and Bootlegging Counterfeiting Counterfeiting is considered a subcategory of trade mark infringement but is not explicitly defined by the IP Code. However, the Revised Rules of Procedure on Administrative Enforcement of Intellectual Property Rights define “counterfeit goods” as “any goods or materials including packaging bearing without author - isation a trademark which is identical to a trademark validly registered with the IPOPHL or already declared as a well-known mark internationally and in the Phil- ippines by a competent authority in respect of such goods or which cannot be distinguished in its essen - tial aspects from such a trademark and which thereby infringes the rights of the owner of the trademark in question”. Piracy Similarly, piracy is a form of copyright infringement that refers to the act of illegally distributing or repro - ducing copyrighted content, typically on a large scale and often for profit. Piracy over the internet is sepa - rately punishable under Republic Act No 8792 (the Electronic Commerce Act of 2000). The same law pre - scribes the grounds for liability of service providers for infringing content.
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