IP system is further strengthened
Legal updates: case law analysis and intelligence
Last year the Philippines Intellectual Property Office (IPO) embarked on an ambitious programme of development aimed at bringing the country’s IP system into line with international standards.
First, consistent with the aim of establishing a comprehensive alternative dispute resolution system for the resolution of IP disputes, an arbitration mechanism has been established in cooperation with the World Intellectual Property Organisation and the Philippine Dispute Resolution Centre. The Rules of Procedure for Arbitration Proceedings (Office Order 61 - series of 2011) were introduced on April 5 2011.
The Arbitration Rules apply to all IP disputes that may be submitted to the IPO for determination under existing laws, which include opposition and cancellation proceedings, as well as certain infringement and unfair competition actions. Unlike the compulsory mediation procedure introduced last year (Office Order 154 - series of 2010), arbitration is voluntary.
Because arbitration is voluntary, it is unlikely to be effective in actions against hardened infringers. For other actions, however, it may well lead to a speedy and cost-effective resolution, bypassing the difficulties that continue to plague traditional forms of dispute resolution in the Philippines.
In addition,in May 2011 the House of Representatives passed a bill containing a number of important amendments to the Intellectual Property Code. If a similar bill drafted by the Senate is ultimately passed, any conflicting provisions must be resolved by a bicameral conference committee and the committee’s proposals approved by the Senate, the House of Representatives and the president before the bill becomes law. It is unlikely that this process will be completed before the end of the year.
Some of the important changes proposed are summarised below:
- The IPO will have certain powers of entry and enforcement in relation to infringers. Although this would strengthen the IPO’s role in IP protection, it is not clear how it would work in practice, given that the IPO does not have - nor does the bill provide for - the necessary budget or personnel.
- A Bureau of Copyright is established within the IPO, with the power to accredit collective copyright management organisations and the obligation to maintain a database of copyrighted works deposited with the National Library and the Supreme Court Library. It is also empowered to exercise original jurisdiction in relation to disputes over public performance right licence terms.
- Secondary liability is imposed on entities benefitting financially from the infringing activity of others, provided they have been given notice of the infringement and that they have the right and ability to control the activities of the infringer. This provision will be particularly relevant in relation to the lessors of commercial premises notorious for selling counterfeit goods (eg, Greenhills Shopping Mall and 168 Mall in Metro Manila), who must currently be sued for ‘aiding and abetting’ infringement, making it difficult to establish liability, since ‘aiding and abetting’ is not defined in the Intellectual Property Code.
Laxmi Rosell, Taw & Associates (local Philippines law firm working closely with Rouse), Manila
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