PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
The Revised Rules of Procedure on Administrative Enforcement of Intellectual Property Rights provide remedies specific to counterfeit goods and pirat - ed content through the Enforcement Office of the IPOPHL, including site blocking. Bootlegging Bootlegging is the act of recording live performances or studio recordings without the copyright holder’s consent. In the Philippines, there are currently no laws or rules that explicitly define and address “boot - legging”. The most relevant issuance is Republic Act No 10088 (the Anti-Camcording Law of 2010), which penalises the unauthorised recording of cinemato - graphic films and audiovisual works. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings The IPOPHL has established rules for IP litigation, including: • the Regulations on Inter Partes Proceedings for trade mark oppositions and cancellations; • the Rules on Administrative Complaints for IP Vio - lations for trade mark and copyright infringement cases; and • the Uniform Rules on Appeal for internal IPOPHL appeals. In regular courts or SCCs, infringement cases are governed by the Rules of Procedure for Intellectual Property Rights Cases, issued by the Supreme Court. Unless parties opt to arbitrate, they cannot choose nor influence the choice of adjudicating officers. Cases in the BLA are raffled randomly, while the presiding judge for civil or criminal cases depends on which SCC has jurisdiction over the case. 8.2 Effect of Registration Registration is required in order to file a trade mark infringement case. The registrant’s exclusive right, however, is limited to the goods/services specified in the Certificate and those related thereto. Philip -
pine jurisprudence recognises that identical or simi - lar marks may co-exist if they are applied to different and unrelated goods/services because purchasers are unlikely to confuse the goods/services or their origin. As an exemption, a famous or well-known mark regis - tered in the Philippines may be protected from dilution caused by the use of the mark for unrelated goods/ services. Copyright registration is not a prerequisite for filing an infringement action; it merely creates an official record of the registrant’s claim of ownership over the work and puts others on notice of such a claim. 8.3 Costs of Litigating Infringement Actions Please see 7.5 Lawsuit Procedure . 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The following defences against trade mark infringe - ment are explicitly recognised by the IP Code. • Innocent infringement in certain cases, where the only remedy is an injunction: (a) if the defendant is solely involved in printing the infringing mark or materials for others; or (b) if the defendant is a publisher or distributor, and the infringement occurs in a paid adver - tisement in a periodical or electronic communi - cation. • Good-faith use of a mark prior to its filing or priority date. Other defences may be raised and recognised on the basis of jurisprudence, such as equity, non-use and satire/parody. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) The IP Code provides for a general fair use clause and specific or statutory fair use provisions in relation to copyright infringement. In general, fair use of a copy - righted work for criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, research and similar purposes is not con -
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