PHILIPPINES Trends and Developments Contributed by: Katrina Doble, Danielle Francesca San Pedro, Edward King Chua and Kyle Gino Salazar, Villaraza & Angangco
products/mangoes originating from the province of Guimaras” by the Guimaras Mango Growers and Pro - ducers Development Cooperative as early as 2017. The registered mark, however, combined a figurative mango, a stylised letter “G” and the colours yellow and green, with the word elements “Guimaras Man - goes”, which were then disclaimed. To some extent, GIs also found protection under the IP Code’s prohibition on the registration of geographic signs or names that are descriptive of – or likely to mislead the public as to – the geographic origin of the goods or services. Although geographic names and GIs are distinct classes, these prohibitions can protect GIs that use geographical names against third-party monopolisation and false designations. However, the trade mark provisions of the IP Code do not pertain to GIs per se, which ultimately preserve the collective goodwill of their rightful users. Rather, the limitations on geographically descriptive/mis-descrip - tive marks specifically ensure that a geographic term relevant to certain goods and/or services as an actu - al or plausible place of origin remains available to all proprietors of such goods and/or services obtaining from such place of origin, or to protect the public from misleading use of a geographic term. Thus, while GIs could find protection under the trade mark system, such protections are indirect, negative and limited. The trade mark system was incapable of protecting the elements comprising the actual GI, nor could it grant a positive right to the owners of the GI. Unlike the trade mark provisions of the IP Code and the 2023 Trademark Regulations, the 2022 GI Rules provide recognition of GIs as such, and of positive and enforceable rights related to them. While the IP Code can stop third parties from exclusively appropriating a geographic term as a trade mark, they do not give the local producers rights over the name itself. Mean - while, the 2022 GI Rules create positive collective rights that can actively control a GI’s use, whether as a GI or as a trade mark, and that can stop its misuse by a producer from outside the region, or by one who does not follow the standards underpinning the GI.
A notable feature of the GI framework under the 2022 GI Rules is the express incorporation of Article 10bis of the Paris Convention, which prohibits any act of unfair competition contrary to honest practices in industrial or commercial matters. This reference sig - nificantly broadens the scope of protection available to GI holders beyond the traditional contours of unfair competition under the IP Code. Under Article 10bis, a wider range of conduct – such as misleading sug - gestions of geographical origin, reputation-riding, or the unfair exploitation of the goodwill associated with a protected place name – may be actionable even in the absence of classic trade mark infringement or a strict showing of likelihood of confusion. All told, the 2022 GI Rules are a necessary and wel - come step for GIs in the country, benefitting both local and foreign producers who use their GIs to introduce and promote their region’s products to the wider glob - al market. However, the heightened consciousness for GIs also has interesting effects on trade mark protection. In particular, it has been observed that, after the imple - mentation of the 2022 GI Rules, IPOPHL examiners have become more conscious of GIs during the trade mark examination stage, actively raising objections based on the use of a GI in a trade mark sought to be registered, whether or not such GI is registered in the Philippines under the 2022 GI Rules. In such cases, proof of authorisation to use the GI is required to overcome the objection. Notably, there is no provision in the IP Code or the 2023 Trademark Regulations that expressly protects GIs as such. There is also no explicit provision in the 2022 GI Rules that calls for the automatic recognition in the Philippines of foreign GIs not yet registered in the Philippines, especially within the context of the trade mark registration system. On the contrary, under the 2022 GI Rules, registration of both local GIs and foreign GIs is required to accord protection in the Phil - ippines. The 2022 GI Rules expressly state that the enhanced protection afforded to GIs under the 2022 GI Rules shall be acquired through valid registration with the IPOPHL and that the right to exclude third parties using a GI to mislead or in a manner that con -
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