Philippines Sees Stronger IP System
12 October 2012
In 2010, the Philippines Intellectual Property Office (IPO) embarked on an ambitious programme of development aimed at bringing the country’s intellectual property system into line with international standards. Recent initiatives under the programme include the introduction of arbitration rules and proposed amendments to the Intellectual Property Code. Lawyers at Rouse recently highlighted changes in a Client Alert.
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 WIPO and the Philippine Dispute Resolution Center. Rules of Procedure for Arbitration Proceedings 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,” Rouse says.
“Unlike the compulsory mediation procedure introduced last year, 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,” the firm said.
In May 2011, the House of Representatives passed a Bill containing a number of important amendments to the Intellectual Property Code. When 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.
Rouse lawyers note that some of the proposed changes include:
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 organizations 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 benefiting 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, e.g. Greenhills Shopping Mall and 168 Mall in Metro Manila, which must currently be sued for ‘aiding and abetting’ infringement, making it difficult to establish liability since ‘aiding and abetting’ is not defined in the IP Code.
