July 22, 2016

In a decision promulgated on July 20, 2016, the Supreme Court of the Philippines affirmed the validity of the country’s accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”). The accession to the Madrid Protocol was assailed by the Intellectual Property Association of the Philippines (“IPAP”) via a Petition for Certiorari filed in December 2012.  IPAP argued that the said accession was unconstitutional for failing to meet the concurrence of at least two-thirds (2/3) of all the members of the Senate. IPAP further alleged that the implementation of the Madrid Protocol conflicts with the Intellectual Property Code (“IP Code”) as the former allows the processing of international trademark applications without the designation of resident agents, contrary to the clear provisions of the IP Code.

The Supreme Court disagreed with IPAP and ruled that the Madrid Protocol is in the nature of an “executive agreement,” not a “treaty,” and therefore it does not require Senate concurrence. The ruling upheld the “exercise of discretion” of the Secretary of Foreign Affairs to determine whether an agreement should be considered an executive agreement or a treaty, as provided under Section 9 of Executive Order No. 459, series of 1997.

As to the perceived conflict between the Madrid Protocol and the IP Code, the Court stated that the “difficulty, which the IPAP illustrates, is minimal, if not altogether inexistent.”  The Supreme Court clarified that the Madrid Protocol does not do away with the examination of foreign applications on the basis of the relevant national law.

The Madrid Protocol was ratified by former President Aquino on March 27, 2012. It entered into force in the Philippines on July 25, 2012.