While securing IP rights is an initial step, enforcement, coupled with commercializing the IP asset, will complete the spectrum of IP protection. Susan Villanueva, Patricia Bunye, Divina Gracia Pedron and Rowanie Nakan detail effective enforcement mechanisms in the Philippines and recent digital advancements. 

In the dynamic landscape of global commerce, the protection of intellectual property rights stands as a cornerstone of innovation and economic growth. As businesses continue to expand and innovate, it becomes increasingly crucial for them to prioritize IP rights. This includes protecting their brands, inventions and creative works through trademarks, patents and copyrights to safeguard their competitive edge, build trust among consumers and unlock new opportunities in the global marketplace. 

In 2023, the Philippines saw a 2.5 percent year-on-year increase in the country’s overall IP filings. The Intellectual Property Office of the Philippines (IPOPHL) credits this growth to increased awareness of IP and the innovation output of colleges and universities. 

As the importance of IP rights continues to be emphasized, individuals and businesses must be vigilant in protecting their creations and innovations. While securing IP rights is an initial step, enforcement, coupled with commercializing the IP asset, will complete the spectrum of IP protection.  

The World Intellectual Property Office (WIPO) defines IP enforcement as the “act of taking legal action when IP rights … have been infringed.” IP rights holders conduct IP enforcement measures with the end goal of “stop[ping] the infringement, prevent[ing] further violations of IP rights and remedy[ing] the prejudice caused by these actions.” 

This definition captures the interrelatedness of the concepts of IP protection, utilization and commercialization, and enforcement, and that to maximize an IP right, an IP owner must prioritize each of these stages in the IP cycle and avoid the pitfall of neglecting one in favour of the others. 

On January 1, 1998, in compliance with the country’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the Philippine Intellectual Property Code (IP Code) took effect. The TRIPS Agreement provided the minimum civil and criminal remedies needed to safeguard IP rights within its member-states, which the country then adopted in its IP Code. These IP enforcement remedies include provisional measures, civil and administrative procedures, border measures, and criminal procedures and penalties. 

Being at the forefront of mainstreaming IP, the Philippines, through a whole-of-government approach and building on the IP Code, has established an enforcement system which makes IP rights holders preferred litigants and right enforcers in the Philippine legal system. 

Under the IP Code, IP rights holders have multiple remedies: civil, criminal and/or administrative.  

The Supreme Court of the Philippines issued A.M. No. 03-03-03-SC transferring jurisdiction of IP cases to Special Commercial Courts to streamline court procedure and promote expediency and efficiency in resolving IP cases. The Supreme Court, through its Philippine Judicial Academy, ensures that the judges assigned to special commercial courts receive continuous IP training to improve their capability in handling IP cases.  

Administrative remedies for IP rights violations can be filed in the Bureau of Legal Affairs of the IPOPHL. The Supreme Court, in a landmark case, has upheld the jurisdiction of the IPOPHL over administrative cases for IP rights violations (In-N-Out Burger v. Sehwani, G.R. No. 179127 (December 24, 2008). 

The Supreme Court has also issued special rules in IP litigation. The Rules of Procedure for Intellectual Property Rights Cases (Rules) (A.M. 10-3-10-SC) were issued in 2011 and revised in 2020, applicable to Special Commercial Courts handling civil and criminal cases involving IP rights. The Rules are intended to expedite IP cases by, among others, providing for the issuance of summons via email and prohibiting the filing of certain motions. The Rules also provided a specific timeline or period of action of Special Commercial Courts on certain motions and orders or decisions. Special Commercial Courts were also given discretion to resolve IP cases without trial. It also provided for the executory nature of orders issued by the Special Commercial Courts. Thus, unless restrained by the Supreme Court or the Court of Appeals, orders issued under the Rules are immediately executory. 

The Rules likewise provided Special Commercial Courts in the City of Manila, Quezon City, Makati City, Pasig City, Baguio City, Iloilo City, Cebu City, Cagayan de Oro City and Davao City a special authority to issue writs of search and seizure in civil cases and search warrants in criminal cases of IP infringement which are enforceable nationwide.  

The Supreme Court also issued a special Rule on Search and Seizure in Civil Actions for Infringement of Intellectual Property Rights (A.M. No. 02-1-06-SC) governing the provisional seizure and impounding of documents and articles in pending and intended civil actions for the purpose of preventing infringement and preserving relevant evidence in connection therewith. Thus, in addition to criminal search warrants, IP rights holders may also avail of civil writ of search and seizure in enforcing their IP rights. 

As shown above, IP rights holders occupy a privileged position within the legal landscape, with a broad array of remedies, specialized courts and special rules designed to protect and enforce IP rights. Whether through courts or the IPOPHL, IP holders benefit from a wide framework of legal protections and enforcement options.  

Notably, safeguarding IP rights is more accessible and efficient compared to common litigation, from courts possessing exceptional power to issue writs of search and seizure and search warrants enforceable nationwide to having a special set of Rules which provide Special Commercial Courts with the ability to act swiftly and effectively, these underscore the commitment of the Philippine legal system to the protection of IP rights. 

Due to these special Rules, IP rights holders benefit from expedited legal processes and enhanced safeguards against infringement.  

Complementing this effort from the judiciary are the Rules issued by the IPOPHL involving inter partes and IP violation cases that have been streamlined to expedite the resolution of cases.  

Notably, the IPOPHL has digitalized its processes, which include the submission of pleadings and receipt of decisions and orders issued by the IPOPHL. Hearings and mediation sessions may also be conducted online. For inter partes cases, cases are resolved through documentary and pleading submissions. Alternative dispute resolution mechanisms are also institutionalized to expedite mutually acceptable resolution of inter partes and IP violation cases. 

A special office in the IPOPHL called the IP Rights Enforcement Office was also established and given administrative power to enforce IP rights in instances of counterfeiting and piracy. In this regard, the Revised Rules on Administrative Enforcement of Intellectual Property Rights (Revised Rules) issued by the IPOPHL took effect in 2021. 

Under the Revised Rules, the IP Rights Enforcement Office was given the jurisdiction and power to issue reliefs under administrative remedy, which include issuance of warning letters and compliance orders, cease and desist orders, notice of takedown, conduct of visits and inspection of establishments, referral of cases to law enforcement authorities, request for cancellation of permits, licences from other government agencies and request for site blocking from ISPs. 

Meanwhile, the IPOPHL Rules on Voluntary Administrative Site Blocking (Site Blocking Rules) (Memorandum Circular No. 2023-025), which allow the blocking of pirate websites by internet service providers, became effective on January 14, 2024, after its publication last November 14, 2023. 

Under the Site Blocking Rules, a copyright owner or a right holder, through a verified complaint, may file an application with IPOPHL’s IP Rights Enforcement Office for the issuance of a Request to an ISP to Block or Disable Access to Pirate Websites. Notably, this is the first voluntary site-blocking mechanism in Asia-Pacific (second in the world). 

Nevertheless, while the IPOPHL and Special Commercial Courts are the traditional venues for enforcing IP rights, there are many other remedies available to IP owners in the Philippines.  

Aside from traditional venues, IP rights holders also have other options for the enforcement of IP.  

Securities and Exchange Commission (SEC) 

Corporations or partnerships execute an undertaking to change their name upon receipt of notice or directive from the Securities and Exchange Commission that another corporation, partnership or person has acquired a prior right to the use of that name or that name has been declared as misleading, deceptive, confusingly or similar to a registered name. Thus, a trademark or trade name owner may file a Petition for Change of Corporate Name with the SEC should it discover that another corporation/partnership has appropriated its previously registered mark or trade name. 

Department of Trade and Industry (DTI) 

The DTI protects IPR owners by prohibiting the registration of business names registered as trade names, trademarks or business names by any government agency authorized to register names or trademarks. IPOPHL is an attached agency of the DTI. 

Bureau of Customs (BOC) 

Under Philippine customs rules and regulations, IPR owners may request the recordation of their IPR with the BOC to enable the BOC to monitor and prevent the entry of counterfeit goods into the Philippines. The recordation would put the IPR on the BOC’s radar when they inspect imports. 

National Bureau of Investigation (NBI) IPR Division or Philippine National Police (PNP) IP Section 

NBI and PNP can investigate IPR violations. Filing a complaint with these law enforcement agencies may be an effective deterrent against infringers. 

World Intellectual Property Office (WIPO) 

A trademark owner whose mark is being misused in a domain name may enforce its IP right by filing a complaint with WIPO under its Domain Name Dispute Resolution mechanism.  

Ecommerce IP policy platform 

Increased ecommerce has unfortunately increased IP infringement. The IPOPHL, however, through its memorandum of understanding among ecommerce platforms, has helped strengthen enforcement mechanisms within these ecommerce marketplaces by requiring them to have IP violation report mechanisms including takedowns. The popular ecommerce sites in the Philippines with IP violation reporting platforms are listed below: 

• Lazada; 

• Shopee; 

• Zalora; 

• Temu; 

• Facebook; 

• Instagram; 

• X (formerly Twitter); 

• TikTok and TikTok Shop; and 

• Carousell 

Enforcing IP rights in the Philippines offers a remarkable degree of flexibility, enabling IP rights holders to craft a tailored enforcement strategy based on key factors such as goals, timeline and budget, and the specific nature of the IP rights involved. This approach grants IP rights holders comprehensive control over how they safeguard their IP, whether the situation requires swift intervention, enduring protection or strategic deterrence. With an array of remedies available in the Philippines, IP litigants have the autonomy to select and fine-tune the options that best align with their unique needs and objectives. An IP expert can assist in optimizing remedies and ensuring that the enforcement strategy aligns perfectly with the IP owner’s objectives. 

If you wish to know more about how to enforce your IP, you may reach out to Asia IP experts from our firm.