PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Maria Patricia Cruz and Kyle Gino Salazar, Villaraza & Angangco
1. Trade Mark and Copyright Law 1.1 Governing Law Governing Laws for Trade Marks and Copyrights Republic Act No 8293 (also known as the Intel - lectual Property Code of the Philippines, or the IP Code) establishes the statutory framework for the protection of intellectual property rights in the Philippines, including trade marks and copy - rights. The Philippine Intellectual Property Office (IPOPHL) has also issued several implement - ing rules and regulations that are relevant to the procedural aspects of trade mark and copyright prosecution, such as: • the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2023, replacing the Revised Trademark Regulations of 2017 (Memorandum Circular 2023-001); • the Rules and Regulations on Inter Partes Proceedings, as amended by IPOPHL Memo - randum Circular 2022-013; • the Implementing Rules and Regulations on the Term of Copyright Protection and the Public Domain (Memorandum Circular 2023- 021); • the Revised Rules and Regulations on Copy - right Registration and Recordation (Memoran - dum Circular 2020-025) and the Supplemen - tal Guidelines on Bulk Copyright Registration and Recordation Fees (Memorandum Circular 2021-028); and • the Revised Rules and Regulations on Accreditation of Collective Management Organizations (Memorandum Circular 2020- 026).
The Supreme Court of the Philippines has also issued the following rules and regulations spe - cifically affecting civil and/or criminal trade mark actions before the regular courts: • the 2020 Revised Rules of Procedure for IP Rights Cases; and • the Rules on Search and Seizure in Civil Actions for Infringement of IP Rights. Protection for Common Law Trade Marks and Copyrights Trade marks In general, trade mark rights and ownership are acquired through valid registration under the IP Code. In Zuneca Pharmaceutical v Natrapharm, Inc. (G.R. No. 211850, 8 September 2020), the Supreme Court clarified that prior use does not override prior registration for marks that were first used or registered after the IP Code came into effect on 1 January 1998. However, for marks used before the IP Code came into effect, good-faith prior use remains a valid basis for claiming ownership under Section 236. In addition, the first-to-file and first-to-reg - ister principle assumes good faith on the part of the applicant/registrant. If the application/regis - tration was made in bad faith or with knowledge that another has appropriated the unregistered mark for commercial use, such prior user shall be protected against the applicant/registrant. Unregistered marks are also protected through unfair competition claims under Section 168 of the IP Code. To establish unfair competition, the following must be shown: • the appearance of the marks involved is iden - tical, or there is confusing similarity; and
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