News & Events, Federis & Associates Intellectual Property Firm

Counterfeit SHIMANO products raided in Cebu

Working alongside the agents of the National Bureau of Investigation’s Intellectual Property Rights Division, Atty. Montini Felicilda and Mr. Isaias Villanueva of Federis and Associates conducted two (2) simultaneous raids on May 25, 2023 against the warehouses of Starbright Bicycle Trading and Edlimbros Bicycles in Mandaue City, Cebu, suspected sellers of counterfeit SHIMANO products.

An assortment of 3,328 pieces of bicycle parts, fittings, and accessories bearing the mark “SHIMANO” were seized from Starbright Bicycle Trading while 388 bicycle parts, fittings, and accessories bearing the mark “SHIMANO” were confiscated from Edlimbros Bicycles.

The seized products were certified as counterfeit by a representative of Neo Zigma, Shimano’s official supplier in the Philippines, who was present at these raids. Complaints for infringement against Rolly Gica Gomez and Kirsten Sarena Lim, owners of Starbright Bicycle Trading and Edlimbros Bicycles, respectively, will follow.

These recent raids follow an earlier raid conducted on March 22, 2022 by SHIMANO against Hyx Enterprises of Guiguinto, Bulacan, which yielded 10,506 pieces of assorted counterfeit SHIMANO bicycle parts.

This series of raids is a clear indication that SHIMANO is serious in its efforts to rid the Philippine market of counterfeit SHIMANO products. It is closely monitoring the market for any counterfeiting activities and will continue to work closely with the NBI, Neo Zigma, and the Federis Law Office in implementing its anti-counterfeiting activity in the country.

Geographical Indication System in the Philippines

Registration of Geographical Indications is now available in the Philippines. The Rules and Regulations on Geographical Indications (GI-RR), which issued on 5 October 2022, establishes a GI registration system. Any interested party may now apply to register a GI with the IP Office of the Philippines (IPOPHL).

Under this system GI is defined as any indication which identifies a good as originating in a territory, region or locality, where a given quality, reputation, or other characteristics of the good is essentially attributable to its geographical origin, and/or human factors.

GI receives protection in the Philippines only if registered under the GI-RR. A registered GI is protected against: (1) third party uses of geographical names other than the true place of origin in a manner that can mislead the public, (2) use of GI which falsely represents that the goods originate in another territory, (3) and use of a GI on a good that does not originate from the place indicated in the GI even if accompanied by the name of the place where the goods originates from, or even if accompanied by expressions such as “kind”, “type”, “style”, imitation”, “method”, “as produced in” or other similar qualifying terms, (4) use of a GI which constitutes an act of unfair competition within the meaning of Art. 10bis of the Paris Convention.

The Bureau of Trademarks will maintain a Register of Protected Geographical Indications. The registration includes publication and allows for the filing of third-party observations or objections.

Foreign applicants must be a national of, or a juridical entity organized in or has an effective commercial or industrial establishment in a country which is a party to the World Trade Organization or other international conventions concerning the protection of GI to which the Philippines is also a party.

Along with other standard application requirements, an applicant must submit a government certification validating the causal link between the specific quality, reputation or other characteristics of the goods and the geographic area which it originated and a technical information pertaining to the product specifications.

A foreign applicant will be required to submit a certification from the competent government agency in the country of origin that the GI is a registered or protected GI in that country.

The system will protect homonymous GI’s but may require owners to comply with certain conditions to differentiate one GI from another to avoid misleading the public. The principle of first in time first in right will apply. Full text of the rules is here: https://tinyurl.com/GIregulations/

Additional Accolades for Our Managing Partner

Cheers to our Managing Partner, Mila Federis, for making it once again to the “Philippines Top 100 Lawyers 2022” and for being included in the Asian Legal Business “Asia Top 15 IP Lawyers 2022” ranking.

The Asian Legal Business ranking highlights the top 15 IP lawyers across Asia “who have consistently delivered high-quality IP work and set high standards in the IP space, while earning accolades from their colleagues, superiors, and clients.” Full details can be found here. Asian Legal Business Online is published by Thomson Reuters.

Known as the “A-List”, the Asia Business Law Journal ranking “is based on extensive research conducted and nominations received from in-house counsel in the Philippines and elsewhere, as well as Philippines-focused partners in international law firms.” Further details can be found here

Thank you Thomson Reuters, and thank you to all our clients that continue to enable our firm’s CULTURE OF SERVICE®.

NBI seizes over 10,000 counterfeit SHIMANO goods

On 15 March 2022, lawyers of Federis & Associates accompanied agents of the National Bureau of Investigation’s Intellectual Property Rights Division in searching and raiding the premises of HYX Enterprises, suspected seller of counterfeit SHIMANO products located in Guiguinto, Bulacan.

The raid yielded thousands of of SHIMANO-marked bike parts, accessories and fittings, which were later confirmed to be counterfeit by product experts from SHIMANO’s authorized local distributor, Neo Zigma Cycle Corporation.

The counterfeit products included the following:

FIVE THOUSAND SEVEN HUNDRED (5,700) pieces of (Altus) Shifter Lever;
THREE THOUSAND EIGHT HUNDRED (3,800) pieces of Rear Derailer;
FIFTY PIECES OF (50) pieces of Front Derailer;
NINE HUNDRED TWENTY-ONE (921) pieces of Chain;
THIRTY-FIVE (35) Shopee Pouches containing assorted bike parts and accessories.

A complaint for trademark infringement will soon be filed against Mark Mendoza, owner/proprietor of HYX Enterprises.

PHILIPPINES: COVID-19 UPDATE (Posted: April 28, 2020)

IPOPHIL will resume operations on May 18, 2020.

Case hearings and trials are suspended until further notice.

Extended Deadlines
May 31, 2020 is the new deadline when original deadlines fell on March 16 to March 31, 2020.
Original deadlines of April 1 to May 15, 2020 are extended for 60 days.

No Extended Deadlines
No extensions for submission of Third Party Observation and Adverse Information for utility model and design applications for PPR, medical/healthcare equipment/devices and pharmaceutical products urgently needed to address the COVID-19 health situation.
Voluntary surrender of patents, utility models and industrial designs. The formal requirement on verification shall be complied with upon resumption of normal operations on May 18, 2020
Priority Rights Claims. Applications claiming priority must be filed within the prescribed priority date.

Online Filings for New Applications. Only online filings are allowed during the lockdown.
When online filings resulted in multiple identical online applications, applicants must notify IPOPHIL by email to [email protected]which application will be given due course. Absent this notice, the IPOPHIL will consider the first application.

Fictitious Online Applications. Applications for inventions, utility models, and industrial designs containing highly-questionable entries (e.g. title, name, address) and/or unintelligible specification details not compliant with Sec. 32 of the IP Code, indicating lack of bona fide intention to seek protection, shall be considered fictitious applications. Such fictitious applications shall be filtered, removed, and removed from the system.

Payments. Payment of filing fees for online filings is extended for 60 dates but the official filing date if the date that it was filed online.

PHILIPPINES: COVID-19 UPDATE

Following President Duterte’s declaration of state of public health emergency and the imposition of an “enhanced community quarantine” for Metro Manila effective March 15, 2020 to April 14, 2020, the Philippine Intellectual Property Office (IPOPHIL) announced changes in the way it will operate during the quarantine period. These are:

All new applications for patents, utility models, industrial designs and trademarks will only be accepted if filed online.
Due dates falling within the quarantine period for annuities and maintenance fees, responses to office actions, declarations of use, renewals, motions for extensions, notices of opposition, answers to oppositions, cancellations, intellectual property violations, position papers, appeals, comments, and all other types of written submissions for the IPOPHIL are automatically extended for 30 calendar days counted from the due dates.
All hearings, including mediations, preliminary conferences, and trials, that were scheduled during the quarantine period are suspended.
Access to mailboxes at the IPOPHIL will be allowed during the quarantine period.
All previously announced events at the IPOPHIL during the quarantine period will be rescheduled.

The Supreme Court has also suspended all hearings in all courts during the quarantine period. All written submissions that are due during this period are given an automatic extension of 30 days counted from April 15, 2020.

Based on the latest government announcement, everyone is mandated to stay home and all private businesses are mandated to close down operations until 12:00 A.M. on April 13, 2020.

Our firm will continue to deliver services to all our clients during the quarantine period.We have a system in place that would allow all the members of our firm to work from home. Once we are permitted to return to our office we will continue to implement our internal rules of conduct intended to keep our members and their families safe. We are happy to inform our friends and colleagues around the world that all of our members and their families are safe and doing well at this time.

Thank you for your support and understanding. We also hope for your health and safety in your respective countries during this challenging time.

We will continue to monitor the local situation and update you as necessary. Please email us at [email protected]if you have any questions.

Supreme Court affirms a second time the well-known status of PHILIPS

May 30, 2017

The Philippine Supreme Court has handed down to giant Dutch company, Koninklijke Philips Electronics N.V. (KPENV), a win in the latter’s long battle to keep a local businessman from getting a registration for the trademark PHILITES and P Device.

PHILIPS has been a leading brand in lighting products and has had presence in the Philippines for many years. In 2006, a business establishment operating as Philites Electronic and Lighting Products (PELP) applied to register PHILITES & P Device in connection with fluorescent bulbs and related products under Class 11. KPENV opposed claiming that PHILITES is barred from registration under Section 123.1(d) of the IP Code because it is confusingly similar to PHILIPS, a trademark that as been previously registered and used in the Philippines. KPENV claimed that PHILIPS has been officially declared as a well-known trademark and is therefore protected against the copying of any parts or elements in the mark.

KPENV has separately filed a criminal complaint for trademark infringement and unfair competition against the same applicant.

IPOPHL Revised Fee Structure of 2017

Please be advised that a directive has been issued by our Intellectual Property Office increasing the official fees by 20%. The increased fees will take effect on January 1, 2017. Below is a table showing the current rates of official fees, alongside with the corresponding increased fees for 2017.

Industrial Design: The Inseparability of Priority from Novelty

November 10, 2016

The essence of prior art as a bar to the registrability of a design lies not only in its similarity with the disputed design but also in the fact that it enjoys precedence. As the adage goes, “first in time, first in right”. The case of KPI Manufacturing, Inc. doing business under the name and style Key Largo Car Accessories Center v. Alwin T. Go (IPC Case No. 13-2015-00523) is instructive of the value of establishing priority in one’s bid to cancel a patented design on the ground of lack of novelty.

The controversy stemmed from a petition for cancellation filed by KPI Manufacturing, Inc. (“KPI”) against the “CAR MAT” design registered under Alwin T. Go (“Go”). KPI averred that Go is not the true and original designer of the disputed car mat product. To substantiate its claim, KPI presented images of actual car mats allegedly imported from another manufacturer in China, similar to that of Go’s car mat. KPI claimed that these car mats imported from China constitutes prior art, which effectively prove that the disputed design was not novel and thus, must not have been registered in the first place. KPI further questioned the novelty of the disputed design as it has alleged that Go committed a prejudicial disclosure to third persons when he bought the mold for his car mat design prior to its application.

IPOPHL Launches Industrial Design Electronic Filing System

November 9, 2016

The Philippine Intellectual Property Office launched an electronic filing system for industrial design on November 2, 2016 called EIDFILE.

Under the system, applicants seeking protection for industrial design can file his application by the use of a computer terminal with latest versions of web browsers. Applicants may file applications for industrial design with any of the satellite offices of the Intellectual Property Office. Any applicant not yet familiar with the system can get assistance in those offices.

An applicant is not required to register to be able to file the application online. A cover letter is also not needed for his online application. Once the applicant proceeds with the online filing, he will be guided by the system on how to submit the application.