19 February 2021
A Manila Prosecutor has thrown out a utility-model infringement and unfair competition complaint. A criminal case was filed by TouchPay payment system owner Manila Express Payment Systems Inc against the officers of BTI Payments Philippines and Electronic Transfer Advance Processing Inc. (eTAP). Both are online payment and processing companies.
The case began with a raid by the National Bureau of Investigation (NBI) after a court granted search warrants against the two defendants in July 2020 on the basis of confusing similarity in the appearance of the automated payment machines.
The case passed to the Department of Justice but the Prosecutor rejected the complaint as prematurely filed. Criminal actions for utility model infringement may only be filed for repeated breaches of Section 76 (which covers Civil Infringement) of the IP Code (Republic Act 8293), after a civil judgment.
Under the unfair competition charges, the defendants were accused of misrepresenting the IP owner’s goods or services as their own. More specifically, they were passing off eTAP’s Pay&Go automated payment terminal as the IP owner’s TouchPay machine. The prosecutor decided there was not sufficient evidence as the physical appearance of eTAP’s Pay&Go machine looks different so no end consumers were misled.
Utility model and unfair competition cases are extremely hard cases to press through any criminal system. A number of Souteast Asian countries allow criminal remedies in such cases, but in most developed countries a case like this would be filed through civil courts for an injunction and damages. Technicalities need a more detailed examination that prosecutors and criminal courts should be expected to spend time on.
Nick Redfearn, Deputy CEO, Rouse
nredfearn@rouse.com
