Innovation at WIPO: spotlight on alternative dispute resolution at IP offices

An exclusive guest post on how WIPO has been working with global IP offices to promote the advantages of alternative dispute resolution services.

Innovation at WIPO: spotlight on alternative dispute resolution at IP offices
Enforcement data reveals destination shift for counterfeits originating in China
7 Aug 2020

Enforcement data reveals destination shift for counterfeits originating in China

The true scope of the illicit trade of fake goods is hard to define, but analysis by Rouse indicates that Southeast Asia is a fast-rising hotspot.

St Andrews Links Trust lands in trademark bunker; new Benelux online tools; Gleissner covid-19 donation – news digest
15 May 2020

St Andrews Links Trust lands in trademark bunker; new Benelux online tools; Gleissner covid-19 donation – news digest

In our latest edition, we look at Hard Rock International acquiring the rights to Hard Rock Hotel & Casino, the KIPO president getting dunked with flowers, and more.


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11 Mar 2020

Call for more cooperation between government and brands to curb counterfeits in Philippines

Joy Belmonte, mayor of Quezon City, has vociferously opposed the alleged distribution of over 1,000 fake trainers to local athletes and, crucially, has taken action to bolster the work of anti-counterfeiting agencies. Read more

10 Jan 2020

Panda Express lawsuit threat, BTS dispute resolved, and Philippines and Laos registry cooperation: news digest

In our latest round-up, we look at the worst year on record for British retail, the Norway IPO warning of dodgy invoices, Romania implementing an upgrade to its design e-filing system, and much more. Read more

27 Sep 2019

INTA’s Brands Manifesto, Liverpool trademark blow, fighting scammers: news digest

In our latest news digest, we look at INTA’s release of a Brands Manifesto, the Paraguay IP Office conducting another counterfeit crackdown, fee changes in New Zealand, and much more. Read more

1 Jul 2019

Use requirements for international registrations in the Philippines - what mark owners should know

By the end of 2018, the Philippines had received nearly 30,000 Madrid applications. Once protection has been granted, maintenance of the registration may be tricky as the timeframes for filing a declaration of actual use are confusing. Read more


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19 Mar 2019

Louis Vuitton victory, Apple Pencil confusion, and brand loyalty declining: news digest

In our latest edition, we look at a call for post-Brexit partnerships to combat fakes, looking ahead to the WIPO elections, the IP Office of the Philippines seeking to regulate Facebook sellers, and much more. Read more

23 Nov 2018

IPOPHL celebrates record haul, Rospatent promotes benefits of GIs, and emoji-tions run high in China: news round-up

In our latest round-up, we look at $7 million worth of counterfeit condoms being seized in China, Canada Goose opening an additional office in Beijing, and much more. Read more

24 May 2018

Procedures and strategies for anti-counterfeiting: Philippines

The Intellectual Property Office of the Philippines (IPOPHIL) continues to be at the forefront of activities geared towards providing adequate, reliable and effective protection and enforcement of IP rights. Read more

18 May 2017

Procedures and strategies for anti-counterfeiting: Philippines

The Philippines IP Office (IPOPHIL) has vigorously pursued many programmes aimed at providing adequate and efficient ways to enforce trademark rights. It has also taken many initiatives to pursue legal reforms to create stronger IP rights and to build a regime that values and respects intellectual property. IPOPHIL has worked with other government agencies and organisations to facilitate the exchange of information and to find cost-effective methods of enforcing IP rights. Read more

Brand management

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7 Nov 2018

Compulsory conundrum: debate surrounds mandatory mediation for IP disputes

The introduction of mandatory mediation in Greece has faced criticism which eventually led to its suspension; a move that has left question marks over whether wider adoption of such a model is viable. Read more

2 Oct 2018

Philippines IP Office to begin mandatory mediation, Donuts adds rights protection feature, and KFC versus KKFC: news round-up

In our latest round-up, we look at the USPTO collaborating with Saudi IP authorities, a reported rise in fake Irish whiskey, the Kenyan government blaming border countries for its fakes problem, and much more. Read more

27 Mar 2018

BARCELONA collective mark rejected, battle for Prudential name and Philippines fakes crackdown: news round-up

In our latest round-up, we look at the Philippines government pledging to crackdown on counterfeit goods, a national IP office’s anti-fakes video featuring a naked man atop a tortoise, and much more. Read more

23 Mar 2018

Enforcement and termination of franchise agreements in the Philippines

We take a close look at the Philippines legislation governing the enforcement and termination of franchise agreements, as part of our series on franchising in Asia and South America. Read more

Enforcement and Litigation

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28 Jan 2019

Litigation procedures and strategies: Philippines

The special commercial regional trial courts have jurisdiction over civil actions involving IP rights violations with damages claims of any amount. Read more

21 Dec 2017

Litigation procedures and strategies: Philippines

Any person who believes that he or she would be damaged by the registration of a mark may file an opposition to the trademark application within 30 days of its publication. Opposition proceedings are summary in nature; thus, there is no trial and the parties must submit the necessary evidence to prove their positions. Read more

17 May 2017

Dominancy test determines trademark similarity

A recent Supreme Court decision shows how the Philippines courts must look at elements of the dominancy test to determine trademark similarity. In <i>Seri Somboonsakdikul vs Orlane SA</i>, the Supreme Court ruled that LOLANE was not a colourable imitation of ORLANE due to distinct visual and aural differences that were discerned using the dominancy test.

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15 Dec 2016

Philippine Action Plan on IP Rights Enforcement

The Intellectual Property Office of the Philippines (IPOPHL) recently held the sixth Philippine Anti-counterfeiting and Piracy Summit with representatives from various member agencies of the National Committee on Intellectual Property Rights in attendance. The IPOPHL presented the NCIPR’s 2017–2022 Action Plan on IP Rights Enforcement.

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27 Oct 2016

Philippines aims high and targets enhanced anti-counterfeiting measures with latest IP rights action plan

The IP Office of the Philippines unveiled its five-year strategic agenda this week, hoping to continue the country’s progress on addressing its deep-set counterfeiting and piracy problems.

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14 Sep 2016

Supreme Court of the Philippines affirms Madrid Protocol

The Supreme Court of the Philippines has affirmed accession to the Madrid Protocol, following a petition filed by the Intellectual Property Association of the Philippines against the president’s ratification of the treaty.

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6 Nov 2014

Philippines moves ahead with IP reforms for ASEAN Economic Community

The Philippines has announced its intention to accede to several IP agreements, including the Nice Agreement and the Vienna Agreement, as part of its plans to get ready for the ASEAN Economic Community in 2015. The Intellectual Property Office also announced plans to further amend the Intellectual Property Code.

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1 Jun 2012

New opportunities for brands as the Philippines joins the Madrid Protocol

The Filipino IP Office (IPOPHL) announced last week that the Philippines has joined the Madrid Protocol - the 85th country to sign up to the agreement. According to IPOPHL, accession to the protocol will help to make the Philippines globally competitive and ease costs for Filipino companies doing business overseas.

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IP Offices

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26 Sep 2016

Revised rules of procedure for IP cases

The Philippine Intellectual Property Office has issued the IPOPHL Memorandum Circular 16-007 introducing further amendments to the Rules and Regulations on <i>Inter Partes</i> Proceedings, which apply to trademark opposition and cancellation cases, cancellation of patents, utility models and industrial designs and petition for compulsory licensing of patents.

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14 Dec 2010

IPO signs rules of procedure for mediation proceedings

In the spirit of promoting and encouraging the use of alternative dispute resolution, the Intellectual Property Office of the Philippines has signed the Rules of Procedure for IPO Mediation Proceedings. The rules, which took effect on October 21 2010, introduce compulsory mediation in certain cases.

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22 Nov 2004

'' domain may become a boon for cybergripers

DotPh, the Philippine domain name registrar, has started offering anonymous
registrations under the '' domain, the world's first anonymous domain. ''
is intended to support bloggers and individuals who maintain websites for personal
purposes. However, the fact that registrants will not be identifiable means
that mark owners will have little recourse against abusive use of their marks.

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25 Mar 2004

PLDT denied preliminary injunction for ''

In what appears to be the first domain name dispute to have reached
a Philippine court, the Quezon City Regional Trial Court has denied Philippine
Long Distance Telephone Company Inc's request for a preliminary injunction enjoining
Philippine League for Democratic Telecommunications Inc from using the domain
name ''.

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6 Nov 2003

National Telecommunications Commission set to oversee '.ph' ccTLD

The government of the Philippines has issued a memorandum order stating
that the National Telecommunications Commission will oversee the administration
by private company dotPH of the '.ph' country-code top-level domain. The order
also directs the creation of an advisory board, due to convene later this month,
which will assist the NTC in the exercise of its new functions.

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11 Apr 2003

Filipino Senate considers anti-cybersquatting bill

The Senate of the Philippines is considering an anti-cybersquatting
bill, designed to prevent bad-faith domain name registrations. If approved,
Senate Bill 470 will allow the courts to impose criminal sanctions and it will
also strengthen the civil remedies available against cybersquatters.

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Portfolio Management

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18 Sep 2015


In the Philippines, the rights to a mark are acquired through registration under the IP Code. Nevertheless, the owner of an unregistered trademark can file an action for unfair competition with reference to the passing off of the goods or business of one party as the goods or business of another with the intention of deceiving the public.

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5 Jun 2015

Too well known for its own good, Apple fails to block MY/PHONE in the Philippines

In a trademark case which has attracted attention in the local media, the IP Office of the Philippines has dismissed an opposition filed by Apple against a Manila company’s attempt to register MY/PHONE. The tenor of press coverage provides yet another example of the challenges faced by a mega-company enforcing its brand against a local ‘David’. Read more

21 Mar 2014

EAGLE case - the setting of the cement wars?

A series of disputes concerning the EAGLE trademark for cement appears to be coming to an end. The Bureau of Legal Affairs, confirming that registration is only a presumption of ownership, held that the evidence clearly showed that Republic Cement and Lloyds Richfield had coined, appropriated and used the mark on cement products before Eagle Cement adopted and filed applications for the same mark for use on identical goods.

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6 Feb 2014

Supreme Court: registration creates only prima facie presumption of ownership

The Supreme Court has held that German corporation Birkenstock was the true and lawful owner of the mark BIRKENSTOCK, despite the existence of the earlier device mark BIRKENSTOCK. The court held that registration, by itself, is not a mode of acquiring ownership of a trademark - it merely creates a <i>prima facie</i> presumption of ownership.

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Trademark law

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14 May 2015

Multi-agency IP taskforce supports IP rights holders in enforcement activities

The establishment of the National Committee on IP Rights, a multi-agency IP taskforce, is proving very helpful to IP rights holders in conducting enforcement activities. The committee shows how a national IP office can take on the multi-agency problem of IP enforcement and provide a usable solution.

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6 Dec 2013

Supreme Court decision puts an end to 20-year-old dispute

The Supreme Court has put an end to a 20-year-old dispute between a French cookery school and a Philippine restaurant over the use of the mark CORDON BLEU. The restaurant, as first registrant, had successfully opposed the registration of CORDON BLEU by the cookery school, but the Supreme Court held that first registration must be by the legitimate owner of the mark.

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19 Nov 2013

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

In a dispute between Araneta Center Inc and the owner of the domain name ‘’, the Court of Appeals has ruled, in what some commentators are calling a ‘suspicious’ decision, that Araneta Center was not entitled to sue in the Bureau of Legal Affairs because it was a domestic corporation.

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23 Jul 2013

New rules on trademark use introduced

The Philippines is somewhat unique in Asia in having strict use requirements for trademarks. New trademark rules now clarify several areas: for example, online use is clearly defined to be valid proof of use, and use of some goods in a class is sufficient to maintain the registration for the whole class.

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Chanille Carswell
Co-Chair Litigation
Southfield MI, United States
Brooks Kushman PC