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Getting to know Intellectual Property Laws in the Philippines and where it is headed

Intellectual property protection in the Philippines is taking its form in a considerably welcoming fashion compared to other Asian neighbors and even other Western countries. This form of acceptance can be attributed to the fact that not only is this right protected through a special law but is one enshrined in the very fundamental law of the land, the Constitution itself. Article XIV, Section 13 of the 1987 Constitution of the Philippines provides that:  “The State shall protect and secure the exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations, particularly when beneficial to the people, for such period as may be provided by law.” And, even the 1973 Constitution of the Philippines, in a differently worded provision under Article XV, Section 9, par. 3 decrees that: “The exclusive right to inventions, writings, and artistic creations shall be secured to investors, authors and artists for a limited period. Scholarships, grants-in-aid, or other forms of incentives shall be provided for specially gifted children.”

Brief history of IP Law in the Philippines

 To understand the direction where IP laws are headed it is equally as important to know how it started in this country. According to the Chan Robles Virtual Library, the first laws protecting intellectual property rights were enacted in the Philippines in 1947[1], namely:

  • Republic Act No. 165 otherwise known as “An Act Creating a Patent Office, Prescribing its Powers and Duties, Regulating the Issuance of Patents and Appropriating Funds Therefor”.
  • Republic Act No. 166 otherwise known as “An Act to Provide for the Registration and Protection of Trade Marks, Trade Names and Service Marks, Defining Unfair Competition and False Marking and Providing Remedies Against the Same, and for other Purposes”.

Following the enumeration above, additional laws were enacted and issuances promulgated to further promote and protect intellectual property rights, to wit[2]:

  • Republic Act No. 422 transferring the examination of copyright applications to the Bureau of Public Libraries.
  • Republic Act No. 623 regulating the use of duly stamped or marked bottles, boxes, casks, kegs, barrels, and other similar containers;  providing, in the case of foreign applicants, for reciprocity and recognition of their priority rights; establishing, in the case of trademarks, principal and supplemental as well as interference proceedings;  extending protection of utility models and industrial designs under the patent system; and providing, in the case of trademark registration, for reciprocity arrangement with other countries.
  • Republic Act No. 5434 providing for a uniform procedure for appeals from the decision of quasi-judicial officers including the Director of Patents.
  • Administrative Order No. 94 [November 20, 1967] creating a committee to review the Philippine patent system and recommend amendatory laws to further upgrade it.
  • Presidential Decree No. 721 creating the Legal Services Division and the Research and Information Division in the Philippine Patent Office. Subsequently, major reorganization of the various Divisions was made in the 1980’s.  The General Organic Chemistry Division and the Chemical Technology Division were merged to form the Chemical Division.  The Mechanical-Electrical Division was merged with the Mechanical, Design, Utility Model Division and Electrical Division to form the Mechanical and Electrical Examining Division.
  • Presidential Decree No. 1263 amending Republic Acts Nos. 165 and 166, granting authority to the Philippine Patent Office to increase its fees and to spend a portion of its income for priority projects; exempting indigent inventors who filed their application for patent through the Philippine Inventor’s Commission from all fees charged by the Philippine Patent Office; and shortening the period for the grant of a compulsory license from one hundred eighty [180] days to one hundred twenty [120] days from the date the petition is filed in cases where the compulsory license applied for is on a patented product or process involving  any project approved by the Board of Investments [BOI].
  • Executive Order No. 133 [February 27, 1987] merging the Philippine Patent Office with the then Technology Transfer Board thereby creating the Bureau of Patents, Trademarks and Technology Transfer  [BPTTT].
  • Executive Order No. 60 was issued in 1993 creating the Inter-Agency Committee on Intellectual Property Rights [IAC-IPR] under the Office of the President of the Philippines.
  • Department Administrative Orders Nos. 5 and 6 introduced amendments to the Rules of Practice in Patent and Trademark Cases and the Rules of Procedures of the Technology Transfer Registry effective on March 15, 1993.cralaw
  • Republic Act No. 8293 otherwise known as the Intellectual Property Code of the Philippines (IP Code for brevity) was enacted and signed into law in 1997.  It took effect on January 1, 1998.

Furthermore, the Philippine government did not only limit itself to the local enactment and enforcement of IP laws but also played an active role in the worldwide effort to protect intellectual property. In fact, in as early as 1980, the Philippines became a member of the World Intellectual Property Organization (WIPO). It also became a signatory to several international treaties and conventions on intellectual property rights, namely[3]:

  • Berne Convention for the Protection of Literary and Artistic Works (since 1951)
  • Paris Convention for the Protection of Industrial Property (since 1965)
  • Convention Establishing the World Intellectual Property Organization (since 1980)
  • Budapest Treaty on the International Recognition of the Deposit of Microorganisms for Purposes of Patent Procedure (since 1981)
  • International Convention for the Protection of Performers, Producers of Phonographs and Broadcasting Organizations (since 1984)
  •  Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)

In the General Assembly of the World Intellectual Property Organization (WIPO) that was held in Geneva in Switzerland from 23 September to 02 October 2013, Philippines and Mexico signed an agreement to establish mechanisms for the bilateral development and protection of industrial property. Among the activities that the two countries will be partnering for are the following[4]:

  • Exchange of best practices, experiences and knowledge on IP awareness;
  • Exchange of best practices, experiences and knowledge on intellectual property rights;
  • Exchange of experts for providing advice to human resources on specialized industrial property fields;
  • Exchange and dissemination of best practices, experiences and knowledge on IP with the industry;
  • Development of automation and modernization projects, new documents and information classification systems, and procedures management;
  • Technical assistance for patent application through the exchange of search reports and patentability opinions for faster processing of applications and for licensing opportunities; and
  • Collaboration on IP-related trainings for the local IP and business communities.

Current applicable IP laws in the Philippines, identified

The main source of present day Intellectual Property protection in the country is the Intellectual Property Code of the Philippines (Republic Act No. 8293), which was enacted in 1997. The IP Code protects the following rights:

  1. Copyright and related rights;
  2. Trademarks and service marks;
  3. Geographic indications;
  4. Industrial designs;
  5. Patents;
  6. Layout designs [topographies] of integrated circuits; and
  7. Protection of undisclosed information.

Some of the other main IP laws in the country are the following:

  • Republic Act No. 10372 – An Act Amending Certain Provisions of Republic Act No. 8293, otherwise known as the ‘Intellectual Property Code of the Philippines’, and for other purposes (2013)
  • Republic Act No. 10055 – Philippine Technology Transfer Act of 2009 (2010)
  • Republic Act No. 9168 – Philippine Plant Variety Protection Act of 2002 (2002)
  • Republic Act No. 9150 – An Act for the Protection of Layout-Designs (Topographies) of Integrated Circuits, Amending for the Purpose Certain Sections of Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines and for other purposes (2001)
  • Republic Act No. 8792 – Electronic Commerce Act (2000)

Common forms of infringement under the IP laws and its relevant jurisprudence

Copyright Infringement

 In a nutshell, the Law on Copyright under Part IV of RA 8293 protects the following rights:

a. Economic Rights, which consists of the exclusive right of the copyright owner to carry out, authorize or prevent the following acts: (1) reproduction of the work or substantial portion of the work; (2) dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work; (3) the first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership; (4) rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental; (5) public display of the original or a copy of the work; (6) public performance of the work; and (7) other communication to the public of the work.

b. Moral Rights, which refers to the rights of the author: (1) to require that the authorship of the works be attributed to him; (2) to make any alterations of his work prior to, or to withhold it from publication; (3) to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and (4) to restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work.

 In an early case in 1999 (two years after RA 8293 was enacted), the Supreme Court reiterated along with a long line of similar cases its strict enforcement of copyright protection in the case of Habana vs. Robles (G.R. No. 131522) where it held that:

“In cases of infringement, copying alone is not what is prohibited. The copying must produce an “injurious effect”. Here, the injury consists in that respondent Robles lifted from petitioners’ book materials that were the result of the latter’s research work and compilation and misrepresented them as her own. She circulated the book DEP for commercial use did not acknowledged petitioners as her source.”

Taking things to the ordinary setting, a Facebook user who unwarily grabs a photo from another and posts it without attributing the owner may be held liable of copyright infringement because attribution is one of the moral rights protected under the law. A small business owner who plays music in his business establishment without the authority of the copyright owner or paying therefore may also be held liable for copyright infringement. A mall owner or landlord who knowingly leases space to a merchant who sells pirated DVDs can be held liable under the law.

Trademark Infringement

Section 155 of RA 8293[5] enumerates the acts which constitute trademarks infringement. Among these are the use in commerce of any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or to reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.

One of the well celebrated trademark infringement cases in the Philippines was that of Citigroup suing Online Broker CitisecOnline in 2006. According to Businessweek.com[6], Citigroup Inc. (C) of New York instituted a trademark infringement suit in Makati City Regional Trial Court.

In a separate report published in The Philippine Star[7], Citigroup and Citibank N.A. claimed that CitisecOnline’s use of the trademarks bearing the mark “Citi” constitute trademark infringement of its registered CITI marks which include among others, Citibank, Citicard, Citicorp, citidirect, citi financial, citigroup, citiphone, citiservice, cititreasury, talk of the citi and citigold.

CitisecOnline reasoned out that the Securities and Exchange Commission has approved their corporate name, as well as that of Citisecurities Inc.and also stressed that there are more than 350 duly registered corporations with the SEC bearing corporate names beginning with the mark Citi, more than half of which use Citi conjoined together with other words just like Citigroup and Citibank. It further argued that it is engaged solely on the stockbrokerage business while the Citibank group is not engaged solely in the same business. “The position of the corporation is that CitisecOnline, Citisec and Citisecurities are not identical nor confusingly deceptively similar to Citigroup’s registered marks.

The end result was that Citisec.com was ordered by the court to comply with an agreement to adopt and register certain names for its operations in the Philippines and Hong Kong without using “citi” as part of the names, the publication reported.

In the landmark case of Emerald Garment Manufacturing Corp. vs CA (G.R. No. 100098), the high court decreed that in determining whether colorable imitation exists, jurisprudence has developed two kinds of tests — the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals (224 SCRA 437) and other cases and the Holistic Test developed in Del Monte Corporation v. Court of Appeals (181 SCRA 410) and its proponent cases.

“As its title implies, the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should suggest an effort to imitate. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers.”

 “On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. In determining whether the trademarks are confusingly similar, a comparison of the words is not the only determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other.”

Identifying the challenges of IP Laws

I couldn’t agree more as to how Lawrence Lessig, a founding board member of Creative Commons and one of the world’s leading activist in the field of IP law, puts it – that “what we share is way too little” and that “too much of what we share, we share illegally”.[8]

Most of our IP laws have existed for decades with only minor amendments that fail to keep abreast of the changing society. IP Laws were founded in a time where the internet was scarce if not inexistent yet. It was a time when people were passive and did not take an active role in the creation of new things to share. The result of this failure to update with the change in culture and technology is the existence of laws that prevent the creation, recreation and sharing of creativity in various mediums.

But more importantly, the political willingness of any government in combating infringement intellectual property rights plays a key role in the success of this fight. The proliferation of piracy and counterfeit merchandise in Quiapo and Divisoria speaks for what the present and even the past government stand for.

Conclusion

Indeed, the Philippines has a long way to go in fighting for Intellectual Property rights. The Filipinos need to step up and take an active role in educating each other on matters surrounding the need to promote laws that suit the changing society. The advent of the culture spurred by avenues like Creative Commons should be the start of a culture that respects the creator and encourages others to create and share their creations.

Our laws should be one that promotes and protects, not obstruct the flow of creativity and sharing.


[1] Chan Robles Virtual Law Library. BRIEF BACKGROUND ON PHILIPPINE INTELLECTUAL PROPERTY RIGHTS. Viewed October 16, 2013 http://www.chanrobles.com/legal7history.htm#.UmDo3dKnpsF

[2] Ibid.

[3] Chan Robles Virtual Law Library. IPR TREATIES TO WHICH PHILIPPINES IS A PARTY, viewed October 16, 2013. http://www.chanrobles.com/legal7iprtreaties.htm#IPR%20TREATIES%20TO%20WHICH%20PHILIPPINES%20IS%20A%20SIGNATORY

[4] Intellectual Property Office of the Philippines. 03:19 October 4,2013, viewed October 17, 2013.  http://www.ipophil.gov.ph/

[5] Section 155. Remedies; Infringement. – Any person who shall, without the consent of the owner of the registered mark:

155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. (Sec. 22, R.A. No 166a)

[6] Slind-Flor, Victoria. Monsanto, Apple, Hermes, Elsevier: Intellectual Property. Bloomberg Businessweek. February 28, 2012 viewed October 16, 2013. http://www.businessweek.com/news/2012-02-28/monsanto-apple-hermes-elsevier-intellectual-property

[7] Dela Peña, Zinnia B. Citibank accuses CitisecOnline of trademark infringement. The Philippine Star.  By | 12:00am  July 5, 2006 viewed  October 16, 2013. http://www.philstar.com/business/345521/citibank-accuses-citiseconline-trademark-infringement

[8] Conferencia de Lawrence Lessig: “Leyes que limitan la creatividad” – August 23, 2013. http://www.youtube.com/watch?v=RIV1UE_RZ-c

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