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Border Enforcement Measures Increase The Protection Of IP Rights In The Philippines

In its attempt to administer the implementation of state policies on the protection, utilization and enforcement of Intellectual Property Rights (IPRs) in the Philippines, the Intellectual Property Office of the Philippines (IP Philippines) convened the Intellectual Property Rights Enforcement Action Panel (IP-REAP) in 2002. This panel, a joint government and private sector body, was established to co-ordinate the co-operation among the various government enforcement agencies and the private sector to strengthen IPR protection. One of these enforcement agencies is the Bureau of Customs (BOC), which in its commendable attempt to combat the proliferation of counterfeit goods, has accounted for about 50% of seized goods in its country for the past few years.

The BOC, way back in 2002, issued the Customs Administrative Order No. 06-2002 (CAO 06-2002) which provided administrative guidelines to expedite the handling and disposition of infringing goods in line with the IP Code and provisions on border measures of the TRIPS Agreement. Following on from that, the BOC created a permanent Intellectual Property Unit to further strengthen their customs border control and centralize border policy development and implementation in 2003.

The CAO 06-2002 basically defined all items that constituted prohibited importation; examples of which were those that:

copied or simulated marks or trade names registered with the IP Philippines without the authority or consent of the registrant or its authorized agent;

copied or simulated well known marks without the authority or consent of the registrant or its authorized agent;

copied or simulated any patented machine, article, or product without the authority or consent of the registrant or its authorized agent;

were judicially determined to be unfairly competing with products bearing marks either registered or not;

constituted copyrighted/pirated work, whether published or not;

used false or misleading descriptions, symbols or labels that were likely to cause confusion, mistake or deception with regards to the affiliation, connection or association of the imported goods with another person’s goods; or

misrepresented the nature, characteristics, qualities or geographical origin of the person’s goods

Registration Procedure

In order to register one’s products with the BOC, an IPR holder/Owner, or his authorized agent, must submit the prescribed Application Form to the Bureau of Customs’ Intellectual Property Unit (IPU) Secretariat together with the following requirements:

1. Affidavit stating that:

a. the applicant is the rightful owner of the IPR; or

b. a representative or agent is authorized by the IPR Holder/Owner to make the application;

and

c. the entities in the submitted list are authorized to make the importation or distribution of

the products covered by the IPR, together with a sufficient description of the products

covered by the IPR and samples of the products if possible.

2. Documentary requirements

a. IPR Registered with IP Philippines – 3 certified true copies of the Certificate of

Registration issued by the said office

b. IPR not registered with the IP Philippines – 3 certified true copies of a decision or

resolution of a court or other competent authority declaring or recognizing the claim to an

IPR

c. Copyright and related rights – an affidavit executed by the IPR Holder/Owner or authorized

representative stating that:

i. at the specified time, the copyright subsists in the work or other subject matter

ii. he or the person named is the owner of the copyright; and

iii. the copy of the work or other subject matter annexed is a true copy

d. Special Power of Attorney (executed by the IP owner, notarized, but need not be

legalized) , showing that it is authorized by the IP owner to effect the recordal of its IP

rights with the BOC.

3. Payment of recordation fee of P 2,000.00 (USD $45.00) per product but in no case to exceed

P 20,000.00 (USD $450.00) per IPR Holder/Owner

After furnishment of the required documentation, the IPU Secretariat will prepare, for the Commissioner’s signature, a Customs Memorandum Circular addressed to all Collectors of Customs setting forth the fact or recordation together with a description or model of the registered product/s (Certificate of Recordation).

Border Enforcement Measure (Figures)

The table below shows the extent to which the BOC’s implementation of border control laws has improved for the years 2005, 2006 and 2007 (January to August).

2005 (Jan – Aug) 2006 (Jan – Aug) 2007 (Jan – Aug)
Approx. value $USD

8, 825, 224.27

16, 241, 928.31
18, 511, 455.53
Warrants, Seizures
& Detention orders
26
26
28
Pieces seized

68, 475

416, 392
890, 699
Boxes seized
3, 092
5, 771
2, 651
Containers seized
1
0
4

 

The amount collected just in 2007 (About USD 19 million) constituted about 36% of the grand total value of seizures by IP enforcement agencies in the Philippines. This amounts to about 5.3 million pieces, or 4,683 boxes, of counterfeit goods. Seized items include mobile phone casings and accessories, tools, bags, men and women’s clothing, pharmaceutical goods, alcohol and cigarettes, watches, DVDs and many more.

For potential and present investors, this serves to show that the astounding implementation of the CAO 06-2002 proves the value and importance of having one’s IPRs recorded with the BOC in order to ensure that counterfeit items do not enter the Philippines market. For example, a Certificate of Recordation with the BOC is valid for two years from the date of recording and renewable every two years. Border control enforcement has proved to be a very effective measure in overcoming the entry of counterfeit products into the Philippines and continues to recognize and protect the rights of IP holders.

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