PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Maria Patricia Cruz, Villaraza & Angangco
• the profits the defendant actually made out of the infringement. If such measure of damages cannot be readily deter - mined with reasonable certainty, the court may award damages as a reasonable percentage based on: • the defendant’s gross sales; or • the value of the services in connection with which the mark was used. Copyright In a copyright infringement case, the copyright owner may be awarded: • actual damages, including legal costs and other expenses incurred due to the infringement; and • profits made by the infringer as a result of the infringement. To prove profits, the plaintiff need only show sales, while the defendant must prove the costs they claim. Damages may be doubled if the defendant: • circumvents technological protection measures; or • removes or alters electronic rights management information without authority, or distributes works with such information removed, knowing it was done unlawfully. Before the final judgment, the copyright owner may choose to recover statutory damages of not less than PHP50,000 instead of actual damages and profits. When awarding statutory damages, the court will con - sider factors such as the severity of the infringement, the defendant’s bad faith and the need for deterrence. If the infringer was unaware or had no reason to believe their actions were infringing, the court may reduce the statutory damages to a maximum of PHP10,000. 10.3 Attorneys’ Fees and Costs The losing party will bear the costs. If the defendant prevails, attorneys’ fees and litigation expenses, aside from judicial costs, generally cannot be recovered unless specifically agreed upon. Regardless, these may be awarded in the following situations: • when exemplary damages are granted;
• if the defendant’s actions forced the plaintiff to liti - gate with third parties or incur expenses to protect their interests; • in criminal cases of malicious prosecution against the plaintiff; • in cases where a civil action against the plaintiff is clearly baseless; • when the defendant acts in gross bad faith by refusing to settle a valid and demandable claim; • in cases involving legal support claims; • for the recovery of wages for household helpers, labourers and skilled workers; • in actions for indemnity under workers’ compensa - tion or employer liability laws; • in civil actions seeking to recover civil liabilities arising from a crime; • if double judicial costs are awarded; and • in any other case where the court finds it just and fair to allow the recovery of attorneys’ fees and litigation expenses. 10.4 Ex Parte Relief Prior notification is not required before an IP infringe - ment case is instituted. This is because all legal reliefs require the participation of the defendant, who will have an opportunity to defend themselves. Under the Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellec - tual Property Rights, a temporary restraining order valid for 72 hours may be issued ex parte in cases of extreme urgency where the applicant faces grave injustice or irreparable harm. Within the 20-day period of the temporary restraining order, the party or per - son sought to be enjoined shall show cause why the injunction should not be granted, and the complainant may thereafter present evidence to the contrary. If the applicant’s right is clear, the invasion is substantial and there is an urgent need for the injunction in order to prevent serious harm, the preliminary injunction will be issued. 10.5 Customs Seizures of Counterfeits or Parallel Imports Trade Mark An IP rights holder may record their rights with the Bureau of Customs (BOC), on the basis of which the BOC will monitor and inspect suspect imports on its
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