Despite the enhanced monsoon and widespread flooding experienced in Metro Manila, the Intellectual Property Office of the Philippines (IPOPHL) successfully held the first-ever Trademark Conference in the country (TMCon Philippines) on July 24-26, 2024 at the SMX Convention Center, SM Aura in Taguig City.

The Federis team, comprised of Atty. Montini Felicilda and Atty. Monica Bugayong, conducted product identification seminars for its longtime clients SHIMANO, SEIKO EPSON CORPORATION, and FAST RETAILING CO., LTD. These seminars aimed to highlight the significance of distinguishing genuine products from counterfeits, curb counterfeiting, and encourage the public to report incidents of infringement.

Booths displaying genuine and counterfeit SHIMANO (bicycle parts), EPSON (ink), and UNIQLO (apparel) products were featured throughout the three-day event. Representatives of the firm further educated the attendees and government authorities on how to verify the authenticity of these products.

Themed “Leveraging Trademarks, Beyond Branding,” the TMCon is a landmark three-day event that gathered key stakeholders to explore the trademark ecosystem and encourage brand owners to maximize their trademark rights. The TMCon also explored significant emerging trends, best practices, and the latest updates on trademark-related jurisprudence in the Philippines. It likewise featured discussions between international and local trademark experts on topics of registration, protection, enforcement, valuation, and commercialization. Speakers included representatives from the World Intellectual Property Organization (WIPO), European Union Intellectual Property Office (EUIPO), ASEAN IP Association, and notable practitioners from the Philippines.

The firm congratulates the IPOPHL on this landmark event and looks forward to the next trademark conference.

By: Ernest Luigi A. Manzanares

Earlier this year, the Intellectual Property Office of the Philippines (IPOPHL) Rules on Voluntary Administrative Site Blocking, or Memorandum Circular No. 2023-025, became effective. This legally enables internet service providers (ISPs) to block websites that distribute infringing content or pirated material. By restricting access to these pirate sites, the initiative also aims to steer consumers towards legitimate sources. This is one of several measures targeting still rampant online piracy in the Philippines.

The IPOPHL’s site-blocking mechanism is lauded as the Asia-Pacific’s pioneer voluntary site-blocking mechanism, and second in the world. This regulation promises substantial advantages, particularly for the film and television industries, which incurred a staggering USD700 million loss in 2022 from illicit streaming. Authors, publishers and other creatives stand to benefit as well. The challenge, however, lies in the continual monitoring required, as pirates can swiftly migrate to new online servers to evade detection and enforcement. More sophisticated consumers can also access international pirate sites through VPNs.

Currently, the new blocking mechanism is voluntary in nature, but backing legislation that would otherwise give the IPOPHL more teeth is currently pending in Congress. House Bill No. 7600, which amends the IP Code of the Philippines, has been approved by the lower house on the third reading, while the counterpart Senate Bill No. 2150 is still pending.

If enacted, these measures will authorise the IPOPHL itself to receive complaints and issue site-blocking orders, and ISPs will be required to comply within 48 hours. The bills would grant the IPOPHL more enforcement functions such as gathering of intelligence information and conducting investigations.

Meanwhile, research reveals that about 44% of Filipinos engage with pirated content on social media platforms. While the above-mentioned site-blocking rules and pending legislation facilitate the blocking of websites associated with e-retailers such as individual sellers and merchants, these measures do not extend to e-marketplaces including Facebook, Shopee and Lazada, where the piracy threat is exponentially greater. Pirates exploit the expansive reach and influence of social media to promote illicit products and distribute pirated materials with ease.

Joint Administrative Order 22-01 (JAO 22-01) defines an e-retailer as “an organisation selling products or services directly to consumers online”. Meanwhile, an e-marketplace refers to “an online intermediary that allows participating merchants to exchange information about products or services to enter into an electronic commerce transaction, which may or may not provide information/services about payments and logistics”. JAO 22-01 defines online sellers/merchants as an “organisation or retailer selling products or services to customers through an e-marketplace”.

A cursory survey of popular e-marketplaces in the Philippines suggests piracy and the unauthorised distribution of copyrighted material, ranging from e-books to computer software, continue unabated.

Worse, the algorithms of these e-marketplaces themselves often direct consumers to this pirated and infringing content. The timeliness of responses to takedown requests varies. While there has been an increase in the application for and issuance of Certificates of Copyright Registration by the IPOPHL, demonstrating copyright ownership may also pose a challenge to the copyright holders.

JAO 22-01 lays some of the basic principles that online businesses should observe, such as “take consumer complaints seriously, establish a fair and transparent system to address complaints” and “refrain from illegal, fraudulent, and/or unethical business practices”. But the reality is the internet harbours bad-faith actors whose very business is to profit from the copyrighted works of others.

In COSAC Inc v FILSCAP (G.R. No. 222537, February 28, 2023), the Supreme Court ruled that sections 216 and 216.1 of the IP Code, as amended by RA 10372, contemplate two kinds of copyright infringers: primary infringers, or those who directly commit the infringing acts; and secondary infringers, or those who induce, materially contribute to or benefit from an infringing act of another.

Secondary infringement through contributory infringement happens when a person, with knowledge of infringing activity, materially contributes to the infringing conduct of another. Hence, e-marketplaces such as Facebook may not escape liability by arguing they are mere online intermediaries. An e-marketplace that has been notified of the piracy but refuses or fails to take down the infringing/pirated material may be held liable for secondary infringement.

The Philippine digital economy reached a value of USD17 billion in 2021 and is expected to further grow to USD40 billion by 2025. Beyond the clear pecuniary damage, piracy disincentivises and demoralises our creatives. Efforts to curb, if not eliminate, piracy must be concerted and responsive.

Originally posted by the Asia Business Law Journal via this link. 

The firm had the fantastic opportunity to host a segment of this year’s AIPLA Women in IP Law: Cultivating Leaders Global Networking Event. We had a diverse turnout of over 23 lawyers coming from 11 law firms and from a public service agency.

The interactive discussion focused on leadership, where we shared our different perspectives on the qualities of a good leader and how we, as women members of the IP community, can embody these qualities. Through a Zoom call moderated by AIPLA, we connected with other women IP lawyers in India, the United States, China, and Brazil.

Attendees feasted on hot breakfast, just like the popular breakfast that is usually served by the Women in IP Committee during AIPLA conferences.

Thank you to AIPLA for initiating this unique way of connecting women in IP law worldwide.

The IPOPHL recently released Amendments to the Revised Rules on Mediation. The salient points are as follows:

1. Mediation proceedings at the level of appeals with the Office of the Director General (ODG) are no longer mandatory.
2. The pre-mediation conference has been renamed as follows: Alternative Dispute Resolution (ADR) Conference.
3. At the ADR Conference and again if the mediation proceedings are terminated, the parties will be briefed of their option to submit the dispute to arbitration in accordance with existing IPOPHL arbitration rules and guidelines.
4. If the parties do not settle, once a Non-Settlement of Dispute has been furnished by the Bureau of Legal Affairs- Alternative Dispute Resolution Services (BLA-ADRS), the adjudication proceedings will immediately resume.

These amendments reflect the IPOPHL’s commitment to furnish IP rights holders with a variety of options in the settlement of IP-related disputes. These also show the BLA’s resolve to facilitate speedier resolution of cases.

The Amendments will take effect on March 29, 2024.

The firm, in behalf of its clients, Fast Retailing Co., Ltd., and COGI Pty. Ltd., recently cooperated with the Bureau of Customs in the seizure and destruction of counterfeit UNIQLO and Cotton On goods. These goods were seized from a shipment inspection conducted at the Subic Bay Port on July 2023. After prompt notification by the Customs authorities, members of the firm were able to certify that these goods were counterfeit, resulting in the destruction of 3,852 Cotton On and 2,161 Uniqlo items. This collaboration signals the joint effort of the private and public sectors to eliminate the proliferation of pirated goods, solidifying the status of the IPOPHL as a leader in ASEAN anti-piracy efforts.

On November 15, 2023, members of the firm joined longtime client, Fast Retailing Co., Ltd., in the IPOPHL Enforcement Summit. The IPOPHL Enforcement Summit is a three-day event showcasing the various initiatives of a number of notable brands, in conjunction with the government, in combating counterfeits. The Summit allowed the firm’s representatives, along with other mainstays in the field, to discuss best practices and future plans.

AVP Legal Atty. Ana Singcol, assisted by the firm’s Atty. Montini Felicilda, presented Fast Retailing’s anti-counterfeit actions, including the seizure of counterfeit items in coordination with the Bureau of Customs and the conduct of test buys to ascertain the authenticity of UNIQLO products found on e-commerce websites.

Atty. Singcol and Atty. Felicilda likewise met with the IPOPHL’s Director General Rowel S. Barba, among other key government officials, to discuss these initiatives moving forward, including the possibility of joining the IPOPHL’s Memorandum of Understanding with various e-commerce websites to address challenges in enforcement.

The firm congratulates the IPOPHL on a successful event and looks forward to more events furthering brand protection and awareness.

We support the creativity of artists and their works in all forms. Federis Law Firm is the proud Counsel of Georcelle Dapat-Sy, the most sought-after choreographer in the Philippines today, having created some of the most riveting dance choreographies performed by popular singers and actresses in sold-out concerts in the country.

Ms. Dapat-Sy is the first to record copyright for choreographic works at the IPOPHL. Copyright law recognizes choreographic works as protected intellectual creations under Sec. 172.1(e) of the IP Code. Ms. Dapat-Sy runs a successful dance studio, inspiring hundreds of young artists to follow their passion for dancing. Her decision to deposit for recordation many of her new choreographies is a personal statement that just like any other works, the creations of dancers must be recognized and protected under the copyright laws.

Complaints for trademark infringement were filed against the proprietors of Edlimbos Bicycle Trading and Starbright Bicycle Trading before the Prosecution Offices in Mandaue City and Cebu Province respectively. These follow the raids conducted by the firm, in coordination with the National Bureau of Investigation and Neo Zigma, Shimano’s official distributor in the Philippines, which yielded a total of 3,716 bicycle parts, fittings, and accessories bearing the mark “SHIMANO”.

These recent filings reflect Shimano’s resolve to do what it takes to minimize, if not eradicate, all counterfeiting activities in the Philippines. It will continue to work with NBI, Neo Zigma, and Federis Law Office in all investigations and raid actions against infringement of Shimano products wherever they occur in the Philippines.