PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Maria Patricia Cruz and Kyle Gino Salazar, Villaraza & Angangco
7.5 Lawsuit Procedure Administrative actions for infringement are filed with the BLA and are governed by the Rules and Regulations on Administrative Complaints for Violation of Laws Involving IP Rights, as amended, supplemented by the Rules of Court. The filing fees for an administrative complaint depend on whether the complainant is a small entity or a big entity; a small entity complainant has assets worth PHP100 million or less, while a big entity complainant has assets over PHP100 million. The basic filing fee is PHP15,000 for small entities and PHP19,200 for big entities. An additional filing fee equivalent to one-tenth of 1% of the damages claimed must be paid if the damages claimed exceed PHP500,000. Meanwhile, the estimated costs for legal repre - sentation and related expenses may range from USD35,000 to USD50,000. A civil case for infringement is filed before the regional trial court designated as a special com - mercial court (SCC) having jurisdiction over the place where the plaintiff or the defendant resides or has its principal office, at the option of the plaintiff. The filing fee for a civil infringement action is 2% of the total amount of the claims. The estimated costs for legal representation and related expenses may range from USD45,000 to USD70,000. A criminal infringement case is instituted with the National Prosecution Service of the Department of Justice (DOJ) for the purposes of preliminary investigation. A criminal case will be filed with the SCC only if probable cause is found after preliminary investigation. The place of commis - sion of the offence or any of its elements deter - mines which SCC has jurisdiction to try the case.
A criminal action for violation of IP laws may be instituted with the DOJ or the Office of the Pros - ecutor by paying PHP5,000 as a basic filing fee. The estimated costs of legal representation and related expenses may range from USD50,000 to USD100,000. Regardless of the tribunal chosen, all litigious actions require legal representation. Foreign copyright owners can file for copyright infringement in the Philippines. The Philippines is a member of international copyright treaties, which extend copyright protection to foreign works without the need to register the copyright. A foreign owner of a registered mark in the Phil - ippines can file a trade mark infringement case based on international conventions and reci - procity. 7.6 Declaratory Judgment Proceedings and Other Protections for Potential Defendants There are no provisions or proceedings that allow a potential defendant to seek a declara - tion of non-infringement. All defences will have to be raised in the infringement action. However, a complainant’s plea for a preliminary injunction will require a bond from the trade mark owner to protect the defendant, and the defendant can seek to lift the preliminary injunction by posting a counter-bond. 7.7 Small Claims There are no specific alternative avenues for small trade mark or copyright claims in the Phil - ippines. However, mediation outside of litigation is available to the parties at any time, as well as other alternative dispute resolution methods.
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