'Suspicious' Court of Appeals decision highlights risks of going to court

Philippines

Araneta Center Inc sued Erico Perez in November 2009 for misuse of its trademark in the domain name ‘www.aranetacenter.com’. Perez is the owner of the domain name ‘www.aranetacenter.com’, while Araneta Center runs a large residential and commercial property in Quezon City, including the sports venue the Araneta Coliseum.

The case started at the Bureau of Legal Affairs. Perez lost initially, but appealed to the courts. Four years later, in October 2013, the case was decided by the Court of Appeals. The judges reversed the Bureau of Legal Affairs’ decision.

Perez had made a number of arguments - which should have been irrelevant - about his constitutional right to free speech and the fact that Araneta Center had no exclusive control over the use of the words ‘araneta center’. He had also argued that the case should not have been brought in the Bureau of Legal Affairs, but before the courts.

The court made an odd decision:

"[Araneta Center], being a domestic corporation, does not enjoy the right... (to) administrative proceeding before the [Intellectual Property Office/Bureau of Legal Affairs] for violation of Section 169, precisely because its rights are given under Section 163 of the [Intellectual Property Code], and that is to file their suit in the regular courts.”

The court essentially overruled the right to sue in the Bureau of Legal Affairs on the non-existent grounds that the plaintiff was not foreign. This interpretation is inaccurate and the combination of sections erroneous. According to some commentators, the language used and the incorrect application of the Intellectual Property Code is ‘suspicious’.

The case underlines a risk that litigants must manage in the Philippines civil courts, namely the predilection of judges to go off on procedural tangents at the expense of substantive decisions and, therefore, actual justice. This occurs when a judge wants to avoid deciding he actual case. The plaintiff is now stuck having to appeal.

The case also emphasises the importance of the Bureau of Legal Affairs to IP justice in the Philippines. Unfortunately, the right of appeal to the courts is a risk, which suggests that parties should take strategic steps to avoid appeals wherever possible.

Nick Redfearn, Rouse, Indonesia

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