Governing Laws for Trade Marks and Copyrights

Republic Act No 8293 (also known as the Intellectual Property Code of the Philippines, or the IP Code) establishes the statutory framework for the protection of intellectual property rights in the Philippines, including trade marks and copyrights.

The Philippine Intellectual Property Office (IPOPHL) has also issued several implementing rules and regulations that are relevant to the procedural aspects of trade mark and copyright prosecution, such as:

• the Rules and Regulations on Trademarks, Service Marks, Trade Names and Marked or Stamped Containers of 2023, replacing the Revised Trademark Regulations of 2017 (Memorandum Circular 2023-001);
• the Rules and Regulations on Inter Partes Proceedings, as amended by IPOPHL Memorandum Circular 2022-013;
• the Implementing Rules and Regulations on the Term of Copyright Protection and the Public Domain (Memorandum Circular 2023-021);
• the Revised Rules and Regulations on Copyright Registration and Recordation (Memorandum Circular 2020-025) and the Supplemental Guidelines on Bulk Copyright Registration and Recordation Fees (Memorandum Circular 2021-028); and
• the Revised Rules and Regulations on Accreditation of Collective Management Organizations (Memorandum Circular 2020-026).

The Supreme Court of the Philippines has also issued the following rules and regulations specifically affecting civil and/or criminal trade mark actions before the regular courts:

• the 2020 Revised Rules of Procedure for IP Rights Cases; and
• the Rules on Search and Seizure in Civil Actions for Infringement of IP Rights.

Protection for Common Law Trade Marks and Copyrights

Trade marks

In general, trade mark rights and ownership are acquired through valid registration under the IP Code.

In Zuneca Pharmaceutical v Natrapharm, Inc. (G.R. No. 211850, 8 September 2020), the Supreme Court clarified that prior use does not override prior registration for marks that were first used or registered after the IP Code came into effect on 1 January 1998.

However, for marks used before the IP Code came into effect, good-faith prior use remains a valid basis for claiming ownership under Section 236. In addition, the first-to-file and first-to-register principle assumes good faith on the part of the applicant/registrant. If the application/registration was made in bad faith or with knowledge that another has appropriated the unregistered mark for commercial use, such prior user shall be protected against the applicant/registrant.

Unregistered marks are also protected through unfair competition claims under Section 168 of the IP Code. To establish unfair competition, the following must be shown:

• the appearance of the marks involved is identical, or there is confusing similarity; and
• there was intent to deceive the public and defraud a competitor.

Section 159.1 of the IP Code protects a good-faith prior user of an unregistered mark from liability for infringement against the owner of a registered identical or similar mark.

Lastly, Section 165.2 protects trade names, whether registered or not, against unlawful acts by third parties, regardless of any registration requirements under other laws or regulations.

Copyright

The recognition and protection of creative works in the Philippines are primarily anchored in statutory law, particularly the IP Code, which states that creative works are protected from the moment of their creation. However, jurisprudence also plays a crucial role in shaping the interpretation and enforcement of these legal provisions. Legislation sets the framework by defining the rights, responsibilities and enforcement mechanisms for creators, while case law clarifies and applies these principles to specific disputes, offering practical guidance. In certain instances, judicial interpretations become the basis for developing codified regulations and implementing guidelines, further refining the legal landscape.

The Philippines is a signatory to the following key treaties and agreements relating to trade marks, copyright and related rights:

• the Paris Convention for the Protection of Industrial Property (acceded to in 1965);
• the Convention Establishing the World Intellectual Property Organization (ratified in 1980);
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (acceded to in 1994);
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (acceded to in 2012);
• the Berne Convention for the Protection of Literary and Artistic Works (acceded to in 1951);
• the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations (acceded to in 1984);
• the World Intellectual Property Organization (WIPO) Copyright Treaty (acceded to in 2002);
• the WIPO Performances and Phonograms Treaty (acceded to in 2002);
• the Beijing Treaty on Audiovisual Performances (acceded to in 2021);
• the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (acceded to in 2018);
• the Agreement Between WIPO and the World Trade Organization (acceded to in 1995); and
• the Association of Southeast Asian Nations Framework Agreement on Intellectual Property Cooperation (acceded to in 1995).

Protection for Trade Marks

Under the IP Code, a “mark” is any visible indication capable of distinguishing an enterprise’s goods (trade mark) or services (service mark), including a stamped or marked container of goods. As a result, any visual symbol, such as the following, can be registered as a trade mark in the Philippines:

• word marks;
• figurative marks;
• slogans;
• composite marks;
• colour marks;
• three-dimensional marks;
• position marks;
• hologram marks;
• motion marks; and
• collective marks.

Trade dress and certification marks

Trade dress, which is the overall visual appearance of a product or a service, is protected if it is distinctive and non-functional, and identifies the source. Non-distinct trade dress may still be protected if it has established secondary meaning and/or is well known.

Certification marks signify that goods or services meet specific standards and are protected in the Philippines under the 2023 Trademark Regulations (Memorandum Circular 2023-001).

Geographical indications

Geographical indications (GIs) are protected under the IP Code and the Rules and Regulations on Geographical Indications (IPOPHL Memorandum Circular 2022-022). GIs identify goods as originating from a specific region, with qualities, reputation or characteristics that are essentially attributable to their geographical origin. The Rules provide a sui generis system that allows producers, associations or government agencies to register their GIs with the IPOPHL and prevent their unauthorised use.

Colour marks

Colour marks defined by a given form may be registered. Otherwise, they require evidence of acquired distinctiveness.

Names

There are no specific rules for using one's surname as a trade mark in the Philippines, subject to the general rules of registrability under the IP Code, specifically Section 123.1(c), which states that a mark cannot be registered if it:

• consists of a name, portrait or signature identifying a particular living individual without their written consent; or
• uses the name, signature or portrait of a deceased President of the Philippines during the lifetime of their widow, unless the widow provides written consent.

Protection for Industrial Designs

Product shapes or packaging may be protected as trade marks or industrial designs. In both cases, if the shape or design is dictated essentially by technical or functional considerations to obtain a technical result, it shall not be protected in general. However, such work may be protected as a trade mark if it has acquired secondary meaning.

Protection for Specific Marks

Certain marks in the Philippines are afforded protection under specific laws or sui generis systems rather than general trade mark regulations. For instance, Republic Act No 10530 provides special protection to the Red Cross emblem and its derivatives, prohibiting the unauthorised use thereof, in order to safeguard their humanitarian significance and ensure they are not exploited for commercial purposes.

Protection for Famous Marks

The IP Code grants protection to marks that are recognised as being well known internationally and in the Philippines, whether registered in the country or not. The scope of protection depends on the mark’s status, as follows:

• for unregistered well-known marks, protection is limited to identical or similar goods or services for which the mark is well known; and
• for registered well-known marks, the exclusive right to use extends even to dissimilar goods or services, provided that such use suggests a connection to the registrant that may cause damage or prejudice.

When determining if a mark is well known, Philippine authorities consider the perception of the relevant sector of the public rather than the general public, including awareness gained through promotion of the mark in the Philippines.

The following criteria help assess whether a mark is well known:

• the duration, extent and geographic scope of the mark's use;
• the market share of the goods/services linked to the mark, both locally and globally;
• the degree of inherent or acquired distinctiveness;
• the reputation or image quality of the mark;
• the extent and exclusivity of registration worldwide;
• the extent and exclusivity of use worldwide;
• the commercial value attributed to the mark globally;
• the record of successful enforcement or protection of rights;
• the results of litigation on the mark’s well-known status; and
• the presence of identical or similar marks registered or used for similar goods/services by other entities.

No single factor is conclusive, and not all criteria need to be met for a mark to be considered well known; the mark’s use, promotion and market presence in the Philippines is just one factor among many.

A mark may be registered in the Philippines if it is both visible and distinctive. Non-visible marks (sound, taste, touch or scent) cannot be protected, nor can generic, commonplace or descriptive marks.

In some cases, however, non-distinctive marks such as descriptive, colour or functional marks, may be registrable if they have acquired secondary meaning. To prove acquired distinctiveness, the applicant must show that it has been using the trade mark exclusively and continuously in the Philippines for at least five years prior to the claim of distinctiveness and that, as a result, the public has come to associate the mark with the applicant’s goods only.

Acquired distinctiveness must be assessed in light of the actual or presumed perception of the relevant average consumer, which refers to the sector of consumers to whom the goods or services are addressed, including both actual and potential consumers.

The following evidence, among others, may be submitted to prove acquired distinctiveness:

• figures of turnover and sales in the country;
• figures of investment in advertising in the country;
• consumer and market surveys;
• reports from business associations and consumer organisations;
• reports on the type, scope and extent of advertising campaigns;
• documents evidencing the advertisements and promotional campaigns in the media;
• catalogues, price lists and invoices; or
• management reports.

Under the IP Code, the owner of a registered mark has the exclusive right to use said mark in connection with the goods and/or services and those related thereto specified in the certificate of registration, and to prevent all third parties from using marks that are identical or confusingly similar to its own. Only a registered trade mark owner may claim trade mark infringement against an identical or confusingly similar mark.

A trade mark registration is valid for ten years from its date of registration, during which time all the rights of the holder shall persist. Registration may be renewed every ten years.

A certificate of registration of a mark further serves as prima facie evidence of:

• the validity of the registration;
• the registrant’s ownership of the mark; and
• the registrant’s exclusive right to use the mark in connection with the goods and services listed and those related thereto.

Under the IP Code and the Revised Trademark Regulations of 2023, a trade mark owner is not required to prove use of the mark at the time of filing the application. However, they must prove use of the mark periodically after filing by submitting a notarised Declarations of Actual Use (DAU) and proof of use of the mark within the following periods:

• three years from the filing date;
• one year from the fifth anniversary of the registration date;
• one year from the renewal date; and
• one year from the fifth anniversary of the renewal date.

Failure to file the DAU will result in the refusal of the pending application or removal of the registration. Unjustified non-use of a registered mark for an uninterrupted period of three years may also be the basis of a third-party cancellation action.

The Revised Trademark Regulations list the following as acceptable proof of use of a mark:

• downloaded pages from the website of the applicant clearly showing that goods and services covered by the mark are made available in the Philippines;
• photographs (including digital photographs printed on ordinary paper) of the following:
1. labels or packaging bearing the mark as actually used on goods;
2. the stamped or marked container of the goods; or
3. signages bearing the mark on the facade or in any area in the establishment(s) where the mark is displayed;
• brochures or advertising materials showing the actual use of the mark on goods being sold or services being rendered in the Philippines;
• receipts or invoices of sales of goods or services rendered or other similar evidence of use, showing that the goods and the services covered by the mark are available in the Philippines;
• copies of contracts for services showing the use of the mark; or
• such other evidence of a similar nature that the IPOPHL may determine as being acceptable.

Symbols such as ®, TM, SM or their equivalents are not required for the use of trade marks in the Philippines. However, using a “registered mark” symbol (®) creates a presumption that the infringer was aware of the potential for confusion, which is essential to recover damages in an infringement suit.

There is no definite delineation between the scopes of trade marks and copyrights. What matters is that the requirements for each applicable IP right are fulfilled, even if the same object fulfils multiple criteria.

A logo or device, excluding its word elements, if any, can be eligible for copyright and trade mark protection separately. The exclusion of the word elements from copyright, however, avoids issues that may arise when copyrighting a word mark such as a surname.

Copyrightable Works

The IP Code provides a non-exhaustive list of literary and artistic works that are protected by copyright from the moment of their creation, including:

• books, pamphlets, articles and other writings;
• periodicals and newspapers;
• lectures, sermons, addresses and dissertations prepared for oral delivery;
• letters;
• dramatic or dramatico-musical compositions;
• choreographic works or entertainment in dumb shows;
• musical compositions;
• drawings, paintings, architecture, sculptures, engravings and lithography;
• models or designs for works of art;
• original ornamental designs or models for articles of manufacture;
• illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science;
• drawings or plastic works of a scientific or technical character;
• photographic works, including works produced by a process analogous to photography;
• lantern slides;
• audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audiovisual recordings;
• pictorial illustrations and advertisements; and
• computer programs.

Copyright protection also applies to derivative works, such as:

• dramatisations, translations, adaptations, abridgements, arrangements and other alterations of literary music works;
• collections of literary, scholarly or artistic works; and
• compilations of data and other materials that are original by reason of the selection, co-ordination or arrangement of their contents.

Industrial Designs

Under the IP Code, ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art are copyrightable as long as they are original. Meanwhile, designs dictated essentially by technical or functional considerations to obtain a technical result are not registrable as industrial designs.

Under the IP Code, original intellectual creations in the literary and artistic domain are protected from the sole fact of their creation, irrespective of their mode or form of expression and their content, quality and purpose.

Authorship in General

Authorship refers to creatorship and is distinguished from copyright ownership. The IP Code defines an “author” as “the natural person who has created the work”. Consequently, only works created by a human author are copyrightable under current laws.

In general, the author of a work is the owner of the copyright therein. However, unlike authorship, copyright ownership may be held by a juridical person. Where a work is created during the author-employee’s employment, the employer is automatically granted copyright ownership if the work results from the performance of the author-employee’s regularly assigned duties. In addition, original copyright ownership can pass to a corporate entity through assignment or other forms of transfer.

For commissioned works, the person other than an employer of the author who commissioned and paid for the work owns the work itself, but the copyright thereto remains with the author unless there is written stipulation to the contrary.

When a piece of work is created collaboratively by two or more authors, the co-authors are the original owners of the copyright, and their rights are governed by the principle of co-ownership. However, if the work consists of separate parts that can be independently used and attributed to an author, the author of each part will be the copyright owner of the part that they created.

The IP Code outlines both the exclusive economic and moral rights of an author and copyright owner in a copyrighted work.

Economic Rights

Economic rights consist of the exclusive right to carry out, authorise or prevent the following:

• reproduction of the work or substantial portion of the work;
• dramatisation, translation, adaptation, abridgment, arrangement or other transformation of the work;
• the first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership;
• 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;
• public display of the original or a copy of the work;
• public performance of the work; and
• other communication to the public of the work.

Moral Rights

Independent of the economic rights, the author of a work is entitled to:

• require that the authorship of the works be attributed to them;
• make any alterations to the work prior to publication, or to withhold it from publication;
• object to any distortion, mutilation or other modification of, or other derogatory action in relation to, their work; and
• restrain the use of their name for work not their own or for distorted versions of their work.

Unlike economic rights, moral rights cannot be assigned or licensed. The right of attribution persists in perpetuity and may be exercised by an author’s heirs, while all other moral rights are coterminous with the economic rights.

The duration of copyright protection in the Philippines depends on the type of work involved, as follows.

• For artistic, literary and derivative works, protection lasts for the lifetime of the author plus 50 years after their death. In the case of joint authorship, the period depends on the last surviving author.
• Works of applied art are protected for 25 years from the date of their creation.
• Photographic works are protected for 50 years from the date of publication. If the work is unpublished, the period is counted from the date of creation.
• Audiovisual works are protected for 50 years from the date of publication or, if unpublished, from the date of creation.
• Performances not incorporated in recordings are protected for 50 years from the end of the year in which the performance occurred.
• Sound or image and sound recordings, as well as performances incorporated therein, are protected for 50 years from the end of the year the recording took place.
• Broadcasts are protected for 20 years from the date on which the broadcast occurred.

Copyrightable works are protected from the moment of their creation without need for registration. Unlike trade marks and patents, there are no maintenance requirements to ensure the full term of copyright protection. Protection is lost usually only once the term of protection ends and the work falls into the public domain.

Section 183 of the IP Code allows copyright and related rights owners, or their heirs, to appoint a collective management organisation (CMO) – which includes societies of artists, writers, composers and other rights holders – to manage their economic and moral rights. These CMOs must be accredited by the IPOPHL in order to effectively enforce the rights of their members.

The following CMOs, among others, are currently accredited by the IPOPHL to administer and enforce the rights of their members:

• the Filipino Society of Composers, Authors and Publishers handles the public performance rights of song composers and authors;
• the Filipino Visual Arts and Design Rights Organization is the recognised CMO for Philippine visual arts and design;
• the Performers' Rights Society of the Philippines manages the rights of performers (eg, actors, musicians, dancers) whose works are used for commercial broadcast and other communications to the public;
• Philippines Recorded Music Rights represents producers and performers of sound recordings;
• Independent Music Producers of the Philippines represents members who own or control the rights in sound recordings in the Philippines – it jointly manages the single equitable remuneration granted to performers and producers of sound recordings with the PRM; and
• the Sound Recording Rights Society represents record labels and producers in the Philippines.

The Philippines does not require registration to protect works under copyright. Nevertheless, the IP Code provides the option to deposit and/or register original works for a fee with either the IPOPHL’s Bureau of Copyright and Related Rights (BCRR) or the National Library of the Philippines, and with the Supreme Court for law-related works. Registration creates a formal claim in public records, which may prove useful in resolving disputes involving conflicting ownership or authorship claims.

The use of copyright notices (eg, the © symbol, year of creation, and name of the owner) is optional but is recommended to assert rights publicly and deter potential infringers.

In general, authors, their authorised representatives, heirs or assigns may file the application for copyright registration/deposit. In the case of foreign juridical persons, their applications must be accompanied by a certificate of registration issued by the Securities and Exchange Commission (SEC) or equivalent government agency in the foreign jurisdiction in charge of registration of proprietorships, partnerships and corporations.

To file an application for registration/deposit with the BCRR, the following documents must be submitted by email, to copyright_registration@ipophil.gov.ph:

• a duly completed registration and deposit form;
• the original or a certified true copy of the ownership document, such as a deed of assignment, waiver of copyright ownership or will transferring the copyright;
• proof of authority of the applicant, such as:
1. a special power of attorney if the applicant represents a natural person; or
2. a board resolution if the applicant represents a juridical person;
• identification documents, such as:
1. a valid government ID if the owner is natural person; or
2. a certificate of registration with the SEC or business name registration with the Department of Trade and Industry if the owner is a legal person;
• an electronic copy of the music sheet, 5R photographs or source code (for computer programs and games) submitted in an approved storage medium; and
• payment of the copyright registration/recordation application filing fee.

For applications filed with the BCRR, the assessed filing fee will depend on the size of the entity and whether the application was filed within or outside the National Capital Region (NCR).

For NCR applications, the BCRR charges the following per application:

• PHP635 for big entities; and
• PHP460 for small entities.

For applications outside the NCR through IPOPHL satellite offices, the application fee is:

• PHP760 for big entities; and
• PHP560 for small entities.

Each application will cover only one work. The IPOPHL, however, accepts bulk registrations covering not less than ten works at a discounted fee of PHP210 per application, provided that all works fall under the same category and are created by the same author or joint authors.

An application for copyright registration may be denied by the BCRR director if:

• the work does not fit within the statutorily defined categories of a “work” under the IP Code; or
• the work is the subject of prior registration.

Under IPOPHL Memorandum Circular 2020-040, in relation to IPOPHL Memorandum Circular 2020-025, a decision of the BCRR director to deny the application for copyright registration can be appealed to the Office of the Director General (ODG) of the IPOPHL. The appeal may be taken by filing an appeal memorandum within 30 days of notice of a decision or final order appealed from.

The decision of the ODG becomes final and executory 15 days after receipt of a copy thereof by the parties, unless appealed to the Court of Appeals. No motion for reconsideration of the decision or order of the ODG is allowed.

Amendments/corrections of the application are allowed only if they are substantial in nature and upon written request and payment of the required fee.

Certain copyrightable works can also be protected by other forms of IP rights, such as trade marks and industrial designs. A name or advertising slogan that falls squarely under trade marks, logos and figurative devices can be protected under both copyright and trade marks if it complies with the requirements of each protection.

In the Philippines, trade mark rights are primarily established through registration. A trade mark owner acquires through valid registration the exclusive right to use a mark for specific goods and/or services, and to prevent others from using the same or similar mark for the same or related goods and/or services. Only a registered trade mark owner can file a trade mark infringement claim against the unauthorised use of an identical or confusingly similar mark.

Prior use is no longer recognised as a means of claiming ownership over a mark that was first used after the IP Code came into effect. Nonetheless, prior use can be the basis of a claim of fraudulent or bad-faith registration, and unfair competition.

As a general rule, the IPOPHL applies the same requirement of distinctiveness for the registrability of marks. However, additional requirements may apply to certain types of marks. Non-traditional marks often need to demonstrate acquired distinctiveness to qualify for registration.

For trade dress, the appearance of products or packaging must be non-functional apart from being distinctive. Applicants often need to prove secondary meaning, showing that the trade dress has become recognised as a source identifier.

Colour marks can be registered if the colour or combination is defined by a given form. Otherwise, it must be proven to have acquired distinctiveness through extensive use.

Position marks also require non-functionality to be registrable.

The IPOPHL Trademarks Registry is publicly accessible through the WIPO Global Brand Database at branddb.wipo.int. There is no supplemental register.

A trade mark search is not required before filing a trade mark application, but it is recommended in order to ensure that there are no obvious impediments to the mark’s registration. Notably, the online application system of the IPOPHL includes an automatic cursory search as well.

A trade mark registration is valid for ten years from the date of registration. It may be renewed perpetually every ten years by filing a Request for Renewal of Registration and paying the prescribed fees within six months before the expiration of the original term. The Request for Renewal may be also filed within six months after the expiration of the term of the mark, subject to the payment of a surcharge equivalent to 50% of the required government fees.

Proof of continued use in commerce is not required at the time of filing the Request for Renewal. However, it is required within one year from the date of renewal. Otherwise, the registration will be removed, even if renewal has been granted.

An expired trade mark registration can no longer be revived. The remedy of the applicant is to file a new trade mark application for the same mark.

Documentary Requirements for Trade Mark Applications

A trade mark application is filed online via the IPOPHL’s eTMFile system. The following are required:

• the applicant’s name, address, nationality or place of incorporation;
• a list of goods/services with Nice Classifications;
• priority claims, if any, with documentation;
• details for marks with colour, 3D features or device components;
• clear mark copy in JPEG format; and
• a signed Special Power of Attorney (SPA), if applicable.

Marks must be reproduced as used or intended for use with the specified goods/services. Multiple-class applications are allowed, with the filing fee multiplied based on the number of classes included.

Application Procedure

After filing, the application undergoes examination within two months. If allowed, a Notice of Allowance is issued; otherwise, an office action is sent, requiring a response within two months (extendible for another two). Permitted applications are published in the IPOPHL e-Gazette for opposition. If unopposed within 30 days, the mark proceeds to registration upon payment of fees.

A straightforward application (no office actions or oppositions) typically registers within six months, with fees of around USD115 per class.

Trade Mark Applicants

Applications can be filed by individuals or juridical entities. Non-residents must appoint a Philippine-based representative. Applications may be signed by the applicant, joint owners or an authorised agent/representative, as required.

An applicant is not required to use the mark in commerce before the registration is issued.

The Philippines grants priority rights to foreign applicants under the Paris Convention. Therefore, a Philippine trade mark application can benefit from the earlier filing date of a foreign application. However, the mark cannot be registered in the Philippines until it has been registered in the applicant’s home country.

A trade mark application may be amended to correct formalities and overcome objections made by the examiner, or for other reasons arising in the course of examination.

Amendments pertaining to the reproduction of the mark will not be permitted if the mark or the nature of the mark is substantially altered. Amendment by the addition of goods and/or services related to those originally filed and which fall under the same class may be allowed. Amendment by deletion is likewise allowed.

In every amendment, the exact word or words to be stricken out or inserted must be specified, and the precise point where the erasure or insertion is to be made must be indicated.

The IP Code allows the creation of “divisional applications”. This is typically done when an application covering multiple classes meets objections to specific classes or goods/services and the applicant needs to separate the problematic parts from the rest to expedite their registration.

The applicant can distribute the classes from the original application into different divisional applications, and a single class can be divided into multiple applications by paying the corresponding fees. The request for division must be made before the application is registered.

Once a request for division is submitted along with the necessary payment, the IPOPHL will assign new application numbers to the divisional applications, but the filing date for the divisional applications will remain the same as the original.

In cases where a multi-class application is based on a foreign application or registration, the applicant may divide the application into two parts – one covering goods/services eligible for convention priority and another covering the remaining goods/services. Only the divisional application related to the foreign registration can retain the convention priority.

The amendment of incorrect information is within the jurisdiction of the trade mark examiner. If the examiner identifies reasonable grounds to question the accuracy of any part of the application, they may request that the applicant submits supporting evidence to clarify the issue. If a mistake occurs in the registration due to the applicant's fault made in good faith, the IPOPHL can issue a certificate of correction upon payment of the necessary fee. However, such a correction cannot involve any changes that would require the mark to be republished.

A trade mark cannot be registered if it falls under any of the following absolute grounds for refusal:

• immoral, deceptive or scandalous matter, or matter that disparages or falsely suggests a connection with persons, institutions, beliefs or national symbols;
• the flag, coat of arms or insignia of the Philippines or any foreign nation, or simulations thereof;
• a name, portrait or signature identifying a living individual, or the name, signature or portrait of a deceased Philippine President during the life of his widow;
• generic signs;
• signs customary or usual in everyday language or established trade practice;
• signs indicating the kind, quality, quantity or geographical origin of the goods/services;
• shapes dictated by technical factors or the nature of the goods;
• colour alone;
• signs likely to mislead the public regarding the nature, quality or origin of the goods/services; or
• signs contrary to public order or morality.

The examiner must state the grounds for objections in the Registrability Report, and the applicant has two months from its mailing date to respond. If the refusal is upheld, the applicant can file a notice of appeal to the Director of Trademarks. A decision of the Director can then be appealed to the ODG.

The Philippines adheres to the Madrid Protocol, which permits the holder of an international trade mark registration to designate another country for trade mark protection.

To file an international application, the applicant must electronically submit the following via efiling.madrid.wipo.int:

• the name, address and contact details of the applicant or the address and contact details of the applicant’s representative, if any;
• the designated contracting parties;
• reproduction of the mark; and
• an indication of the goods and services for which registration of the mark is sought.

Filing through the Madrid System offers several benefits. A single application in one language with one fee can cover multiple territories, eliminating the need for multiple national applications, translations or local representatives. It also streamlines trade mark management and expansion, and provides global protection in more than 80% of the world.

Trade Mark Opposition

Once an application is allowed, it is published in the IPOPHL e-Gazette, and an opposition can be filed against it within 30 days from its publication date. This deadline can be extended once, for 45 days, through a proper motion with payment of the extension and opposition fees.

If the case proceeds, it is referred to mandatory mediation, where parties are encouraged to settle through compromise. Initially, parties have 60 days from referral to resolve the matter, with the possibility of extending the period through joint request and the payment of fees.

Even after the case moves to adjudication, parties may continue negotiations and enter into a compromise agreement before a final order or decision is issued.

Trade Mark and Copyright Cancellation

A trade mark cancellation case may be filed either within five years from the registration of the mark or at any time, depending on the grounds raised.

Copyright cancellation may be filed by any interested party at any time during the validity of the copyright.

Grounds

Opposition

The IP Code does not specify grounds for filing an opposition. It is sufficient that the opposing party alleges that they may be adversely affected by the registration of the opposed mark.

Cancellation

A petition for cancellation may be filed if:

• the registration of a mark will cause/has caused damage to another;
• either the whole mark or a portion thereof has become generic;
• the mark has been abandoned;
• the mark’s registration was obtained fraudulently or contrary to the provisions of the IP Code;
• the mark is being used by the registrant or with their permission to misrepresent the source of the goods or services covered by the mark; or
• the mark has not been used in the Philippines for at least three years, or longer with legitimate reason.

Defences to Trade Mark Revocation/Cancellation Action

Good faith is an available defence where bad-faith registration and/or fraudulent intent is raised.

A registered mark shall not be deemed generic solely because it is also used as a name of or to identify a unique product or service. The test is the primary significance of the registered mark to the relevant public rather than purchaser motivation.

If the ground raised is non-use of the mark, it may be excused if caused by circumstances arising independent of the will of the trade mark owner, except for a lack of funds.

Any person who believes that they would be damaged by the registration of a mark can oppose or cancel it. Ownership of a registered mark in the Philippines is not necessary. Based on reciprocal rights, foreign brand owners may also oppose an application or cancel a registration made in bad faith, regardless of whether or not they are engaged in business in the Philippines and with or without local trade mark registrations.

The registrant may also voluntarily cancel their own trade mark registration by filing a verified petition with the Bureau of Trademarks (BOT). No specific grounds must be raised.

Opponents in opposition or cancellation proceedings, including foreign parties, must be represented by a licensed attorney.

The estimated government fee for opposition is USD400, with attorney fees estimated to be around USD15,000.

For copyright, the certificate may be cancelled by the BCRR Director upon a written request by an interested party and payment of a fee equivalent to the application fee, based on the following grounds:

• a final court decision;
• a final order from the Bureau of Legal Affairs (BLA) in a copyright infringement case; or
• a recordation of assignment or transfer of copyright.

Both opposition and cancellation proceedings are administrative and are brought before the BLA. However, in any action involving a registered mark, including civil or criminal infringement actions before the courts, the relevant adjudication body also has jurisdiction to determine the right of registration, order the cancellation of a registration, and rectify the Trademarks Register.

Opposition/Cancellation Procedure

Both opposition and cancellation cases begin with the filing of a verified initiatory pleading and supporting evidence. If the pleadings are complete, the BLA will issue a Notice to Answer. If answered, the case proceeds to mandatory mediation for a period of 60 days. If mediation fails, the case returns to adjudication, where hearings are held. The parties’ position papers must be submitted within ten days from termination of the hearings, but the case shall be deemed submitted for decision upon the lapse of the period provided. The BLA Adjudication Officer generally issues a decision within 20 calendar days, and no motion for reconsideration shall be allowed.

Partial Revocation/Cancellation

Where the ground for cancellation is that the mark has become generic, a petition can be filed to cancel the registration for specific goods or services. Partial cancellation is generally available only where specific goods/services and/or classes are problematic while the rest are unaffected by the alleged infirmity.

Decisions of a trade mark examiner relating to the registrability of a mark may be appealed to the Director of Trademarks by filing a notice of appeal within two months from the mailing date of the Notice of Refusal, extendible by two months. The applicant must submit an appeal brief within two months from the filing of the Notice.

Decisions of a BLA Adjudication Officer in an opposition/cancellation case may be appealed to the Director of Legal Affairs by filing an Appeal Memorandum within 15 days from receipt, extendible by 15 additional days. No motion for reconsideration of the decision of the Director is allowed.

The decision of the Director of Trademarks and Director of Legal Affairs may be appealed to the ODG by filing an Appeal Memorandum within 30 days from notice, extendible by 15 days.

The decision of the ODG may be appealed to the Court of Appeals by filing a petition for review under Rule 43 of the Rules of Court within 15 days from notice.

The decision of the Court of Appeals may be appealed to the Supreme Court through a petition for review on certiorari under Rule 45 of the Rules of Court within 15 days from notice.

Trade mark registrations can be amended as part of a settlement agreement reached during mediation. However, changes should not materially alter the essential characteristics or identity of the mark, nor broaden the coverage of the mark beyond its original scope. The amended mark may be republished for the public’s information.

A cancellation action and an infringement action are independent proceedings. A pending cancellation case is not a prejudicial question for an infringement action but a defendant is prohibited from filing a cancellation case if there is a pending infringement case. The defendant may instead raise the registration’s invalidity as a defence and plead for its cancellation in the infringement case. The adjudication body handling the infringement case also has jurisdiction to determine the validity of the registration of all parties involved in the action.

Applications filed with fraudulent intent will not be granted registration and, if erroneously registered, will not ripen into ownership nor confer rights on the registrant.

The main remedy is to oppose the application or cancel the registration based on bad faith. It can also be raised in an infringement or unfair competition case with a plea to cancel the fraudulent registration.

Nonetheless, during examination of an application, the examiner can require the applicant to explain or submit favourable evidence if there is reason to doubt the veracity of any element, including ownership or origin of the mark. If the examiner is not satisfied with the applicant’s response, they can refuse the application.

If the fraudulent mark was discovered because it was cited against the real owner of the mark, the owner can request the suspension of the examination of their own application pending the filing and resolution of an opposition or cancellation case against the fraudulent cited mark.       

Trade Mark Assignment

The IPOPHL recognises the transfer only of pending trade mark applications and registered trade marks in the Philippines. The assignment must be in writing, signed by both parties, duly notarised and, if executed abroad, duly authenticated or apostilled. To ensure enforceability against third parties, the assignment must be recorded with the BOT.

Trade mark rights may pass to heirs through succession. For enforceability, the transfer as evidenced by supporting documents should be recorded with the BOT. A partial trade mark assignment involving the transfer of specific rights or interests in a trade mark is allowed.

Copyright Assignment

Copyright can be transferred, either entirely or partially, through a written agreement.

Within the terms of the assignment, the assignee gains the same rights and legal remedies as the original copyright holder. However, granting certain rights does not equate to a full transfer of copyright. While the assignee obtains ownership of the rights granted, the original copyright owner retains any unassigned rights.

To ensure proper documentation and to notify third parties, the assignment may be recorded with the BCRR.

In the event of the copyright holder's death, the heirs inherit both the moral and economic rights associated with the work, and may apply for the recordation of the transfer by succession.

Under the old Rules, licensing IP rights such as trade marks and copyright were considered “technology transfer arrangements” (TTAs), requiring compliance with provisions of the IP Code for mandatory and prohibited provisions, and clearance and/or registration with the Documentation, Information and Technology Transfer Bureau (DITTB) of the IPOPHL. Although not mandatory for TTAs that are compliant with the IP Code, registration and exemption from the DITTB is necessary for enforceability if the TTA is non-compliant.

Based on the Revised Voluntary Licensing Rules, however, IP rights transfers that do not involve the transfer of systematic knowledge are not considered TTAs. Therefore, simple trade mark and copyright licences do not need to comply with the requirements for TTAs.

A trade mark licence involving a registered mark or an application therefor should be in writing, duly signed, notarised and, if appropriate, authenticated or apostilled. To be valid, it must provide for effective control by the licensor of the quality of goods and services of the licensee in connection with which the mark is used. It must be recorded with the BOT to affect third parties.

Similarly, a copyright licence must be in writing. However, recordal with the BCRR is merely optional and not mandatory for validity or enforceability, nor to affect third parties.

In the Philippines, trade mark and copyright licences can be structured for extended periods, subject to the actual terms of protection granted by law. There is no express legal prohibition against creating perpetual licences. Parties are typically free to set the terms of the licence, whether exclusive, non-exclusive or otherwise. Thus, a trade mark or copyright may be licensed in whole or in part, either exclusively or non-exclusively.

For trade mark assignments and licences, recordal with the BOT is required to affect third parties, including the IPOPHL. As a result, the licensee or assignee cannot assert any rights to the trade mark against others, and there is a risk that a subsequent, recorded assignment may take precedence over an unrecorded one.

In contrast, recordal of copyright assignments and licences is optional and has no effect on their validity, enforceability or effectivity. At most, recordal provides public notice. However, if the transaction is not recorded, there may be risk of confusion, such as when another party records an assignment or licence after the unrecorded transaction.

Trade mark and copyright infringement may be administrative, civil or criminal in nature.

No damages may be recovered under the IP Code after the elapse of four years from the time the cause of action arose.

Meanwhile, since the IP Code does not specify the prescriptive period of a criminal action for infringement, the rules under Act No 3326 apply based on the prescribed penalty:

• four years if punishable by imprisonment for more than one month but less than two years;
• eight years if punishable by imprisonment for two years or more but less than six years; and
• twelve years if punishable by imprisonment for six years or more.

The equitable principles of laches, estoppel and acquiescence, if applicable, may be considered and applied.

Trade Mark Infringement

The IP Code provides that the use in commerce of an identical copy or colourable imitation of a registered mark, or a dominant feature thereof, by another person without the consent of the registered owner of that mark, where such use is likely to cause confusion, constitutes trade mark infringement. The following elements must be shown:

• the trade mark is registered with the IPOPHL;
• the trade mark has been reproduced, counterfeited, copied or colourably imitated by the infringer;
• the infringing mark has been:
1. used in connection with the sale, offering for sale or advertising of any goods, business or services; or
2. applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services;
• the use or application of the infringing mark is likely to cause confusion, mistake or deception as to the goods/services themselves or their source; and
• such acts are without the consent of the trade mark owner.

Dilution is not found in the IP Code per se but is an accepted claim based on jurisprudence for marks that are deemed to be famous or well known.

If the infringed mark is not registered, the owner may raise an action for unfair competition under Section 168 of the IP Code, which protects the goodwill of a proprietor.

Cybersquatting or the acquisition in bad faith of a domain name that is identical or confusingly similar to a registered mark is proscribed by R.A. No. 10175 or the Cybercrime Prevention Act of 2012.

Copyright Infringement

Under the Revised IP Code, copyright infringement can occur through direct infringement, beneficial infringement or contributory infringement. Beneficial infringement assumes that the infringer knew of the infringing activity and can control the activities of the direct infringer. Contributor infringement applies where the infringer knowingly induces, causes or materially contributes to the infringing activity of another.

The removal or alteration of any electronic rights management information from a copy of a work, sound recording or fixation of a performance knowingly and without authority, or the distribution, importation, broadcast or communication to the public knowingly of works with their electronic rights management information removed or altered without authority, will result in the imposition of the maximum penalty for copyright infringement and the doubling of the awarded damages.

Piracy over the internet is separately punishable under Republic Act No 8792, also known as the Electronic Commerce Act of 2000. The same law prescribes the grounds for liability of service providers for infringing content.

The Cybercrime Prevention Act provides a separate penalty for violations of the IP Code committed by, through or with the use of information and communications technologies, which is one degree higher than the penalty provided in the IP Code.

Under Republic Act No 11967, also known as the Internet Transactions Act of 2023, e-retailers and online merchants are primarily liable for indemnifying online consumers in civil actions or administrative complaints arising from internet transactions. Meanwhile, the e-marketplace or digital platform that facilitated the transaction shall be subsidiarily liable if it failed, after notice, to remove or disable access to infringing goods/services/content.

The element of likelihood of confusion is the gravamen of trade mark infringement. It is presumed where an identical sign or mark is used for identical goods or services. Otherwise, the court will consider the general impression of the ordinary purchaser buying under the normally prevalent conditions in trade, and giving the attention that such purchasers usually give in buying the relevant class of goods.

In copyright infringement cases, copyright will be presumed to subsist in the work, and its ownership is presumed to belong to the complainant unless questioned by the defendant. Infringement occurs where any of the exclusive economic rights of the owner is exercised by another without consent. While it is not necessary that the whole or even a large portion of the work is used or copied, if so much is taken that the value of the original is sensibly diminished, or the labours of the original author are substantially and to an injurious extent appropriated by another, it shall constitute piracy.

Prior notification to the alleged infringer is not required before an IP infringement case can be instituted, but it is common practice to do so. It creates an opportunity to resolve the issue without costly and time-consuming litigation, and serves as notice to the infringer, which plays into the complainant’s entitlement to damages. Notably, mediation outside of litigation is now available through the IPOPHL but it is not a prerequisite to filing an infringement case.

Administrative actions for infringement are filed with the BLA and are governed by the Rules and Regulations on Administrative Complaints for Violation of Laws Involving IP Rights, as amended, supplemented by the Rules of Court.

The filing fees for an administrative complaint depend on whether the complainant is a small entity or a big entity; a small entity complainant has assets worth PHP100 million or less, while a big entity complainant has assets over PHP100 million. The basic filing fee is PHP15,000 for small entities and PHP19,200 for big entities. An additional filing fee equivalent to one-tenth of 1% of the damages claimed must be paid if the damages claimed exceed PHP500,000. Meanwhile, the estimated costs for legal representation and related expenses may range from USD35,000 to USD50,000.

A civil case for infringement is filed before the regional trial court designated as a special commercial court (SCC) having jurisdiction over the place where the plaintiff or the defendant resides or has its principal office, at the option of the plaintiff. The filing fee for a civil infringement action is 2% of the total amount of the claims. The estimated costs for legal representation and related expenses may range from USD45,000 to USD70,000.

A criminal infringement case is instituted with the National Prosecution Service of the Department of Justice (DOJ) for the purposes of preliminary investigation. A criminal case will be filed with the SCC only if probable cause is found after preliminary investigation. The place of commission of the offence or any of its elements determines which SCC has jurisdiction to try the case.

A criminal action for violation of IP laws may be instituted with the DOJ or the Office of the Prosecutor by paying PHP5,000 as a basic filing fee. The estimated costs of legal representation and related expenses may range from USD50,000 to USD100,000.

Regardless of the tribunal chosen, all litigious actions require legal representation.

Foreign copyright owners can file for copyright infringement in the Philippines. The Philippines is a member of international copyright treaties, which extend copyright protection to foreign works without the need to register the copyright.

A foreign owner of a registered mark in the Philippines can file a trade mark infringement case based on international conventions and reciprocity.

There are no provisions or proceedings that allow a potential defendant to seek a declaration of non-infringement. All defences will have to be raised in the infringement action. However, a complainant’s plea for a preliminary injunction will require a bond from the trade mark owner to protect the defendant, and the defendant can seek to lift the preliminary injunction by posting a counter-bond.

There are no specific alternative avenues for small trade mark or copyright claims in the Philippines. However, mediation outside of litigation is available to the parties at any time, as well as other alternative dispute resolution methods.

In the Philippines, decisions made by specialised administrative bodies, such as the IPOPHL, are typically given substantial weight by the courts in deference to their expertise in their respective fields. When evaluating infringement claims, courts may consider similar IPOPHL rulings as precedents. The courts also seldom disturb the factual findings of the IPOPHL in case of appeals.

Counterfeiting is considered a subcategory of trade mark infringement but is not explicitly defined by the IP Code. However, IPOPHL Memorandum Circular 2020-049 defines “counterfeit goods” as “any goods or materials including packaging bearing without authorisation a trademark which is identical to a trademark validly registered with the IPOPHL or already declared as a well-known mark internationally and in the Philippines by a competent authority in respect of such goods or which cannot be distinguished in its essential aspects from such a trademark and which thereby infringes the rights of the owner of the trademark in question”.

Similarly, piracy is a form of copyright infringement that refers to the act of illegally distributing or reproducing copyrighted content, typically on a large scale and often for profit. Piracy over the internet is separately punishable under Republic Act No 8792 (the Electronic Commerce Act of 2000). The same law prescribes the grounds for liability of service providers for infringing content.

IPOPHL Memorandum Circular 2020-049 as revised by Memorandum Circular 2023-025 provides remedies specific to counterfeit goods and pirated content through the Enforcement Office of the IPOPHL, including site blocking.

Notably, House Bill 7600 is currently pending in the Senate, and seeks to give the IPOPHL additional powers to prevent the entry and circulation of counterfeit or pirated goods or content in the market. The IPOPHL has also been pushing to increase the penalties provided in the IP Code to mitigate piracy and counterfeiting through Senate Bills 2150, 2385 and 2326.

Bootlegging is the act of recording live performances or studio recordings without the copyright holder’s consent. In the Philippines, there are currently no laws or rules that explicitly define and address “bootlegging”. The most relevant issuance is Republic Act No 10088 (the Anti-Camcording Law of 2010), which penalises the unauthorised recording of cinematographic films and audiovisual works.

The IPOPHL has established rules for IP litigation, including the Regulations on Inter Partes Proceedings for trade mark oppositions and cancellations, the Rules on Administrative Complaints for IP Violations for trade mark and copyright infringement cases, and the Uniform Rules on Appeal for internal IPOPHL appeals.

In regular courts or SCCs, infringement cases are governed by the Rules of Procedure for Intellectual Property Rights Cases issued by the Supreme Court.

Unless parties opt to arbitrate, they cannot choose or influence the choice of adjudicating officers. Cases in the BLA are raffled randomly, while the presiding judge for civil or criminal cases depends on which SCC has jurisdiction over the case.

Registration is required to file a trade mark infringement case. The registrant’s exclusive right, however, is limited to the goods/services specified in the Certificate and those related thereto. Philippine jurisprudence recognises that identical or similar marks may co-exist if they are applied to different and unrelated goods/services because purchasers are unlikely to confuse the goods/services or their origin. As an exemption, a famous or well-known mark registered in the Philippines may be protected from dilution caused by the use of the mark for unrelated goods/services.

Copyright registration is not a prerequisite for filing an infringement action; it merely creates an official record of the registrant’s claim of ownership over the work and puts others on notice of such a claim.

Please see 7.5 Lawsuit Procedure.

The following defences against trade mark infringement are explicitly recognised by the IP Code.

• Innocent infringement in certain cases, where the only remedy is an injunction:
1. if the defendant is solely involved in printing the infringing mark or materials for others; or
2. if the defendant is a publisher or distributor, and the infringement occurs in a paid advertisement in a periodical or electronic communication.
• Good-faith use of a mark prior to its filing or priority date.

Other defences may be raised and recognised on the basis of jurisprudence, such as equity, non-use and satire/parody.

Fair use is not a recognised defence for trade mark infringement per se. However, infringement will not lie against third parties who legitimately use their names, addresses or pseudonyms, a geographical name, or exact indications of the kind, quality, quantity, destination, value, place of origin or time of production or of supply of their own goods or services for mere identification or information, provided that such use cannot mislead the public as to the source of such goods/services.

The IP Code provides for a general fair use clause and specific or statutory fair use provisions in relation to copyright infringement. In general, fair use of a copyrighted work for criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, research and similar purposes is not considered an infringement of copyright. To determine whether the use of a work is fair, the following factors are considered:

• the purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
• the nature of the copyrighted work;
• the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
• the effect of the use upon the potential market for or value of the copyrighted work.

The specific statutory fair use provisions are listed in Chapter IV of the IP Code under Section 184, while additional limitations are listed in Sections 186 to 189.

Philippine jurisprudence recognises parodies as a permissible exception to copyright infringement, provided that they conform to the factors constituting fair use and are deemed “transformative”, which means that they add new elements without damaging the original work.

It appears that copyright is considered a limitation to free speech. Arguably, the effect of copyright on free speech is negligible since copyright protects only the expression or form and not the idea. Similarly, the validity of trade mark rights against free speech has not been resolved, but limitations exist under the IP Code that allow the use of a registered mark for information and identification only.

The IP Code is silent as to the trade mark owner’s right to prevent the re-sale of authentic goods by third parties. It is generally understood that infringement applies only to non-genuine goods.

Similarly, Section 177.3 of the IP Code gives a copyright owner exclusive control over only the first public distribution of their work and copies thereof. After the first lawful sale or transfer, the purchaser can resell, donate or give away the work, in line with the first-sale or exhaustion doctrine.

In cases involving the violation of intellectual property rights, a complainant may seek a temporary restraining order (TRO) or preliminary injunction to prevent further infringement or damage while the case is ongoing by establishing any of the following:

• the applicant is entitled to the relief demanded, and the whole or part of such relief consists in restraining the commission or continuance of the act(s) complained of, or in requiring the performance of an act(s) either for a limited period or perpetually;
• the commission, continuance or non-performance of the act(s) complained of during the litigation would probably cause injustice to the applicant; or
• a party is doing, threatening or attempting to do an act in violation of the rights of the applicant, which tends to render the judgment ineffectual.

With regard to site blocking, a copyright owner or right holder or its duly authorised representative may file an application with the IPOPHL Enforcement Office for the issuance of a Request to an ISP to block or disable access against a pirate website.

Trade Mark

Actual or constructive notice of the trade mark’s registration is required to obtain damages from an infringer.

Exemplary or punitive damages may be claimed where the infringement was committed in a fraudulent or wilful manner. A claim for exemplary damages must be supported by convincing evidence of the acts constituting the fraud involved in the infringement. Where actual intent to mislead the public or to defraud the complainant is shown, the court may double the damages awarded.

The measure of the damages suffered will be either:

• the reasonable profits the complaining party would have made had the defendant not infringed its rights; or
• the profits the defendant actually made out of the infringement.

If such measure of damages cannot be readily determined with reasonable certainty, the court may award damages as a reasonable percentage based on:

• the defendant’s gross sales; or
• the value of the services in connection with which the mark was used.

Copyright

In a copyright infringement case, the copyright owner may be awarded:

• actual damages, including legal costs and other expenses incurred due to the infringement; and
• profits made by the infringer as a result of the infringement.

To prove profits, the plaintiff need only show sales, while the defendant must prove the costs they claim. Damages may be doubled if the defendant:

• circumvents technological protection measures; or
• removes or alters electronic rights management information without authority, or distributes works with such information removed, knowing it was done unlawfully.

Before the final judgment, the copyright owner may choose to recover statutory damages of not less than PHP50,000 instead of actual damages and profits. When awarding statutory damages, the court will consider factors such as the severity of the infringement, the defendant’s bad faith and the need for deterrence. If the infringer was unaware or had no reason to believe their actions were infringing, the court may reduce the statutory damages to a maximum of PHP10,000.

The losing party will bear the costs. If the defendant prevails, attorneys' fees and litigation expenses, aside from judicial costs, generally cannot be recovered unless specifically agreed upon. Regardless, these may be awarded in the following situations:

• when exemplary damages are granted;
• if the defendant’s actions forced the plaintiff to litigate with third parties or incur expenses to protect their interests;
• in criminal cases of malicious prosecution against the plaintiff;
• in cases where a civil action against the plaintiff is clearly baseless;
• when the defendant acts in gross bad faith by refusing to settle a valid and demandable claim;
• in cases involving legal support claims;
• for the recovery of wages for household helpers, labourers and skilled workers;
• in actions for indemnity under workers' compensation or employer liability laws;
• in civil actions seeking to recover civil liabilities arising from a crime;
• if double judicial costs are awarded; and
• in any other case where the court finds it just and fair to allow the recovery of attorneys' fees and litigation expenses.

Prior notification is not required before an IP infringement case is instituted. This is because all legal reliefs require the participation of the defendant, who will have an opportunity to defend themselves.

Under the Rules & Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights, a temporary restraining order valid for 72 hours may be issued ex parte in cases of extreme urgency where the applicant faces grave injustice or irreparable harm. Within the 20-day period of the temporary restraining order, the party or person sought to be enjoined shall show cause why the injunction should not be granted, and the complainant may thereafter present evidence to the contrary. If the applicant's right is clear, the invasion is substantial and there is an urgent need for the injunction in order to prevent serious harm, the preliminary injunction will be issued.

Trade Mark

An IP rights holder may record their rights with the Bureau of Customs (BOC), on the basis of which the BOC will monitor and inspect suspect imports on its own initiative, to determine whether they are liable for seizure and forfeiture pursuant to the law.

To record IP rights with the BOC, the following documents are required:

• a notarised Power of Attorney authorising the agent to act for the IP owner;
• an affidavit and application form, listing the details of the IP rights and distributors;
• proof of ownership in the form of registration certificates, an affidavit of ownership, or a court decision indicating ownership; and
• two product samples or digital photos/manuals if the products are bulky or expensive.

The process takes about two weeks and the outcome is valid for two years, and is renewable thereafter.

However, Customs Administrative Orders 6-2002 and 9-2008 prohibit only the entry of infringing, counterfeit and pirated goods. The IP Code is likewise silent with regards to the trade mark and copyright owner’s right to prevent the importation of genuine goods that have been lawfully placed in the market abroad. Therefore, parallel importation for trade marked and copyrighted goods remains a grey area that is currently allowed in the Philippines.

Decisions issued by the BLA director in administrative IP rights violation cases may be appealed to the ODG within 30 days from notice. Appeals can address errors of both law and fact. ODG decisions can be further appealed to the Court of Appeals via a petition for review under Rule 43 of the Rules of Court within 15 days from notice, based on questions of fact and law.

For civil infringement cases, decisions and final orders of the SCC must be appealed to the Court of Appeals within 15 days from notice through a Rule 43 petition, addressing both fact and law.

In criminal cases, any party may file an appeal, except where it would result in double jeopardy for the accused. The appeal is initiated by submitting a notice of appeal to the SCC within 15 calendar days of judgment or notice under Rule 122 of the Rules of Court. The SCC clerk will then transmit the complete case record to the Court of Appeals.

The Court of Appeals' decisions on appealed cases may be elevated to the Supreme Court through a petition for review on certiorari under Rule 45 of the Rules of Court, raising only questions of law.

Please see 11.1 Appellate Procedure.

The Philippines currently does not have specific laws or jurisprudence that explicitly address the interaction between trade mark and copyright law with AI systems.

However, speaking at the 2nd Philippine International Copyright Summit held from 21–25 October 2024, IPOPHL Director General Rowel Barba announced the IPOPHL’s plans to release guidelines that will ensure copyright protections remain applicable and relevant amidst technological advancements.

The IPOPHL issued Memorandum Circular 23-025, also known as the Rules on Voluntary Administrative Site Blocking, on 20 September 2023, and it came into effect on 14 January 2024. It empowers the IPOPHL to issue site blocking or takedown orders to ISPs hosting infringing content. A pirated website is defined as one primarily designed to infringe or facilitate copyright violations, containing unauthorised goods, materials or content. Upon a valid complaint, the Supervising Director of the IPOPHL’s Intellectual Property Rights Enforcement Office (IEO-IPOPHL) may request ISPs to block or disable access to such sites. Non-compliance by ISPs will result in the referral of the matter to the National Telecommunications Commission (NTC) for appropriate action.

In addition, Republic Act No 11967 (the Internet Transactions Act) was enacted on 24 July 2023 and established the E-Commerce Bureau to regulate business-to-business and business-to-consumer online transactions involving Philippine markets or participants. Under Section 26(b), the law imposes subsidiary liability on digital platforms that fail to promptly remove or block services infringing on intellectual property rights following a notice or takedown order from a relevant government agency. This provision aligns with IPOPHL Memorandum Circular 2023-025, emphasising the role of site blocking to combat copyright violations online.