11 May 2021
The Intellectual Property of the Philippines (“IPOPHL”) recently issued Revised Rules of Procedure on Administrative Enforcement of Intellectual Property Rights (“Rules”).
Implications for business in the Philippines
The Revised Rules of Procedure on Administrative Enforcement of Intellectual Property Rights effective March of 2021 govern the procedure in the exercise of enforcement functions and visitorial power of the Intellectual Property Office on the basis of complaint for counterfeit and pirated goods and information or report for violations of Intellectual Property Rights.
Due to the broadened powers granted to the IPOPHL, the regulatory framework for the protection of Intellectual Property Rights in the Philippines has been further strengthened, consequently providing business owners and intellectual property rights holders more safeguards and barriers for added protection. Unlike the old Rules, IPOPHL has now been given the authority to conduct operations and protect intellectual property rights violations done online, in electronic and other digital means.
Significant provisions of the Rules
The new Rules broadens the scope of the enforcement powers to digital, electronic and online platforms
Under Section 3 of the Rules providing for the Covered Intellectual Property Rights Violations, the IPOPHL’s enforcement powers shall cover manufacturing, production, importation, exportation, distribution, trading, displaying, broadcasting, streaming and offering for sale, including other preparatory steps necessary to carry out the sale of counterfeit and pirated goods or contents to the public, including electronic, digital or online means.
Filing of complaints may be done electronically
The Rules also introduced new modes of filing a verified complaint. A verified complaint may be filed by any right holder or authorised representative through the IPOPHL’s electronic filing portal, or any other electronic transmission or through the internet i.e. email, and the old means of registered mail and physical filing before IPOPHL offices.
IPOPHL are not given more enforcement actions
Upon due evaluation and finding of evidence of violation of Intellectual Property Rights, the following enforcement actions may be recommended by the proper officials:
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issuance of notice/warning to the respondent/s to observe compliance with the provisions of the law;
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issuance of visitorial order on the subject premises. A visitorial order is an order to conduct visit to establishments, business premises, and other similar areas subject of a complaint allegedly violating intellectual property rights and/or any provisions of the law;
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issuance of compliance order against respondents. A compliance order is an issuance directed to any person or business to comply with the provisions of the law to avoid being subjected to an administrative action;
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conduct of enforcement monitoring to verify compliance against respondents;
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request the local government unit concerned and/or other government agencies or tribunals to implement the decisions of the IPOPHL pursuant to their mandate;
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request for the removal of counterfeit goods or pirated goods or content, or block access thereto, in coordination with the appropriate agency, body, or intermediary service provider;
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refer the case to a law enforcement agency for investigation or application for search warrant;
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dismissal of the complaint;
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refer the case to other government agencies for filing of charges for violation by the respondent of their respective rules, or regulations;
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issue enforcement order such as but not limited to an order requesting for the removal of counterfeit goods or pirated goods or content, including advertisements in relation to such goods or content, or the blocking of access thereto, in coordination with the appropriate agency, body, or intermediary service provider; a cease and desist order; an order to remove counterfeit and pirated goods or content from physical establishments; an endorsement or a referral to other government offices for cancellation of permits and licenses; or
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other actions necessary to ensure compliance with the provisions of the law.
Conclusion
The rules further gives the Intellectual Property Code teeth to allow businesses to enjoy their respective intellectual property rights especially with the steep rise in the use of online market places due to restrictions on physical movement brought about the COVID-19 pandemic. At present, intellectual property rights owners are given the appropriate avenue to voice out and proceed with their complaints for the violations of their intellectual property rights effected online in digital and electronic modes.
For more information, please contact:
Felix T Sy, Partner, Insights Abodago Philippines (a member of ZICO Law)
felix.sy@insights-law.com
