PHILIPPINES Trends and Developments Contributed by: Susan D. Villanueva, Patricia A. O. Bunye, Rowanie A. Nakan and John Patrick M. Santos, Cruz Marcelo & Tenefrancia
Under Section 21(e) of the ITA, e-marketplac- es now have the obligation, among others, to prohibit the sale of regulated goods unless the online merchant provides the necessary permits and licence information and contractually obli- gates its affiliates to comply with sale procedures and limitations and other relevant conditions for the sale as may be imposed by any relevant law or local government regulation. E-marketplaces must now exercise diligence to ensure that all online sellers operating under their platform comply with their obligations under the ITA as the e-marketplace may be held subsidiarily liable to the online consumer provided that the follow- ing circumstances are present: • The digital platform or e-marketplace failed to exercise ordinary diligence in complying with its obligations under the ITA, resulting in loss or damage to the online consumer. • If the digital platform or e-marketplace failed, after notice, to act expeditiously in removing or disabling access to goods or services that either infringe on another’s intellectual prop- erty rights or are subject to a takedown order by an appropriate government agency. • The online merchant has no legal presence in the Philippines and the digital platform or e-marketplace failed to provide the contact details of the merchant despite the notice. Promulgation of Rules Strengthening IP Rights Enforcement through Administrative Complaints On 15 July 2024, the Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights (Rules) took effect, seeking to streamline administrative pro- cedures and IP rights enforcement in the Philip- pines in the following ways, making the IPOPHL an attractive venue for patent litigation cases:
• First, it mandates that administrative com- plaints for violations of the IP Code, succeed- ing pleadings, motions, other submissions, and verified answers to complaints, be filed through electronic mail. • Second, the government fees required to file complaints for IP violations and peti- tions for cancellation of patents, inventions, utility models, and industrial designs (inter partes cases), range from as low as around USD200.00 (at least for inter partes cases). • Third, since the Philippines is a party to the Apostille Convention, parties abroad can easily have the documents required to be notarised duly authenticated wherever they may be before the case is filed. • Fourth, the Rules allow parties to stipulate on their consent to be served with decisions and/or final orders via electronic means and to have hearings be conducted via online video conference. The ability to attend hear- ings online opens numerous opportunities for inventors and designers worldwide. This is a big step towards modernising patent litigation proceedings in the Philippines. Other Avenues for IP Rights Enforcement Though the IPOPHL and special commercial courts are the traditional venues for enforcing IP rights, various laws and issuances tap oth- er government agencies to assist in IP rights enforcement. First, IP rights owners may request the recorda- tion of their IP rights with the BOC to monitor and prevent the entry of counterfeit goods in the Philippines during the inspection stage of importations. Second, both the NBI and the PNP have IP divisions which are empowered to inves- tigate violations of IP rights. Third, the IPOPHL has executed a memorandum of understanding with various e-commerce platforms, whose plat-
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