PHILIPPINES Law and Practice Contributed by: Katrina Doble, Danielle Francesca San Pedro, Maria Patricia Cruz and Kyle Gino Salazar, Villaraza & Angangco
Unless parties opt to arbitrate, they cannot choose or influence the choice of adjudicating officers. Cases in the BLA are raffled randomly, while the presiding judge for civil or criminal cases depends on which SCC has jurisdiction over the case. 8.2 Effect of Registration Registration is required to file a trade mark infringement case. The registrant’s exclusive right, however, is limited to the goods/services specified in the Certificate and those related thereto. Philippine jurisprudence recognises that identical or similar marks may co-exist if they are applied to different and unrelated goods/services because purchasers are unlikely to confuse the goods/services or their origin. As an exemption, a famous or well-known mark registered in the Phil - ippines may be protected from dilution caused by the use of the mark for unrelated goods/services. Copyright registration is not a prerequisite for filing an infringement action; it merely creates an official record of the registrant’s claim of owner - ship over the work and puts others on notice of such a claim. 8.3 Costs of Litigating Infringement Actions Please see 7.5 Lawsuit Procedure . 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement The following defences against trade mark infringement are explicitly recognised by the IP Code. • Innocent infringement in certain cases, where the only remedy is an injunction:
(a) if the defendant is solely involved in print - ing the infringing mark or materials for others; or (b) if the defendant is a publisher or distribu - tor, and the infringement occurs in a paid advertisement in a periodical or electronic communication. • Good-faith use of a mark prior to its filing or priority date. Other defences may be raised and recognised on the basis of jurisprudence, such as equity, non-use and satire/parody. 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Fair use is not a recognised defence for trade mark infringement per se. However, infringement will not lie, against third parties who legitimately use their names, addresses or pseudonyms, a geographical name, or exact indications of the kind, quality, quantity, destination, value, place of origin or time of production or of supply of their own goods or services for mere identifica - tion or information, provided that such use can - not mislead the public as to the source of such goods/services. The IP Code provides for a general fair use clause and specific or statutory fair use pro - visions in relation to copyright infringement. In general, fair use of a copyrighted work for criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, research and similar purposes is not considered an infringement of copyright. To determine whether the use of a work is fair, the following factors are considered: • the purpose and character of the use, includ - ing whether such use is of a commercial
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