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New Rules In The Philippines

new_rules_in_the_philippinesThe Supreme Court of the Philippines announced new Rules of Procedure for IP rights cases on October 18 2011.

The Rules took effect on 8 November 2011 and govern new and pending civil and criminal actions for IPR violations lodged before the Special Commercial Courts designated by the Supreme Court.  The Rules aim to eliminate aspects of the general rules of procedure which do not apply to IPR cases.

The salient features of the new Rules are:

(1) Authority is conferred to the Special Commercial Courts in Quezon City, Manila, Makati and Pasig to issue search and seizure warrants enforceable nationwide. Additionally, the Special Commercial Courts in other jurisdictions can also so issue warrants but the writs will be applicable only in their jurisdictions.

(2) Orders issued under the Rules are immediately executory even pending appeal.

(3) Cases may be submitted for decision on the basis of each party’s position papers immediately after pre-trial, clarificatory hearing or trial.  Generally a decision has to be rendered within 45 days (from e.g. receipt of the last position paper) or 60 days after receipt of the final pleading, if trial ensues.

(4) There are presumptions under the Rules, set out below with other important points.  In general, fraudulent intent on the part of the defendant is already presumed.

1.Trademark infringement and unfair competition cases:

  • Certificate of registration is considered prima facie evidence of the validity of registration, registrant’s ownership of the mark and registrant’s exclusive right to use it;
  •  Criteria for recognising well-known marks and likelihood of confusion are now part of the Rules;
  •  Likelihood of confusion is presumed where an identical sign/mark is used for identical goods/services;
  •  Intent to defraud is presumed:

• for passing off a product by using imitative devices, signs or marks in the general appearance of the       goods thereby misleading prospective purchasers;
• for making any false statement in the course of trade to discredit the goods or business of another;
• where striking similarity in the appearance of the goods as packed and offered for sale.

2. Copyright Cases:

  •  Copyright is presumed to subsist in the words or in the subject matter to which the action relates; ownership is presumed to belong to the complainant if so claimed through affidavit evidence (unless defendant disputes and proves to the contrary);
  •  Registration and deposit of a work with the National Library or the Intellectual Property Office does not raise presumption of ownership, nor is it an indispensable condition for a claim of infringement;
  •  There is the presumption of ownership by the person whose name is indicated on a work in the usual manner as author and by the person or body corporate whose name appears on audio-visual work in the usual manner.

3. There is the availability of order of destruction any time after filing of complaint or information, and retention of representative samples which lead to savings in storage costs.