PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Maria Patricia Cruz and Kyle Gino Salazar, Villaraza & Angangco
be recorded with the BOT. A partial trade mark assignment involving the transfer of specific rights or interests in a trade mark is allowed. Copyright Assignment Copyright can be transferred, either entirely or partially, through a written agreement. Within the terms of the assignment, the assign - ee gains the same rights and legal remedies as the original copyright holder. However, granting certain rights does not equate to a full transfer of copyright. While the assignee obtains owner - ship of the rights granted, the original copyright owner retains any unassigned rights. To ensure proper documentation and to notify third parties, the assignment may be recorded with the BCRR. In the event of the copyright holder’s death, the heirs inherit both the moral and economic rights associated with the work, and may apply for the recordation of the transfer by succession. 6.2 Licensing Requirements or Restrictions Under the old Rules, licensing IP rights such as trade marks and copyright were considered “technology transfer arrangements” (TTAs), requiring compliance with provisions of the IP Code for mandatory and prohibited provisions, and clearance and/or registration with the Docu - mentation, Information and Technology Transfer Bureau (DITTB) of the IPOPHL. Although not mandatory for TTAs that are compliant with the IP Code, registration and exemption from the DITTB is necessary for enforceability if the TTA is non-compliant. Based on the Revised Voluntary Licensing Rules, however, IP rights transfers that do not involve
the transfer of systematic knowledge are not considered TTAs. Therefore, simple trade mark and copyright licences do not need to comply with the requirements for TTAs. A trade mark licence involving a registered mark or an application therefor should be in writ - ing, duly signed, notarised and, if appropriate, authenticated or apostilled. To be valid, it must provide for effective control by the licensor of the quality of goods and services of the licensee in connection with which the mark is used. It must be recorded with the BOT to affect third parties. Similarly, a copyright licence must be in writ - ing. However, recordal with the BCRR is mere - ly optional and not mandatory for validity or enforceability, nor to affect third parties. In the Philippines, trade mark and copyright licences can be structured for extended peri - ods, subject to the actual terms of protection granted by law. There is no express legal prohibi - tion against creating perpetual licences. Parties are typically free to set the terms of the licence, whether exclusive, non-exclusive or otherwise. Thus, a trade mark or copyright may be licensed in whole or in part, either exclusively or non- exclusively. 6.3 Registration or Recording of an Assignment or Licence For trade mark assignments and licences, recordal with the BOT is required to affect third parties, including the IPOPHL. As a result, the licensee or assignee cannot assert any rights to the trade mark against others, and there is a risk that a subsequent, recorded assignment may take precedence over an unrecorded one. In contrast, recordal of copyright assignments and licences is optional and has no effect on
454 CHAMBERS.COM
Powered by FlippingBook