Stronger IP rights

The Intellectual Property Office of the Philippines (IPOPhl) is hoping that this time around, Congress will be able to approve the proposed amendments to the Intellectual Property Code of the Philippines.

Rep. Christopher de Venecia has filed House Bill 2672 which is basically the same as the version he previously filed. HB 2672 is currently pending with the committee on trade.

The bill seeks to respond to the advances in technology since the last amendment of the IP Code, to adopt some of the current best practices in the international community, and to fortify government efforts against piracy and counterfeiting.

Some of the salient amendments include recognition of non-visible marks and certification marks as trademarks, recognition of extended collective licenses, inclusion of orphan works (those still protected by copyright but the author or right holder is not known or cannot be located) as protected copyright work, transferring back the copyright registration and deposit function to the IPOPhl from the National Library and the Supreme Court, balancing of rights in commissioned works specifically in photographs, films and paintings, giving the IPOPhl the power to take down infringing materials, and increased criminal and civil penalties for violations.

But before I discuss the specific proposed amendments for copyright, trademark, and patents, let us first take a look at the provisions governing the IPOPhl, which is the agency tasked to enforce the provisions of the IP Code as well as IP rights.

The bill gives the IPOPhl director general the power to issue provisional and final takedown orders or cease-and-desist orders to internet service providers, domain name registries and registrars, website owners, online intermediaries, online platforms, social media platforms either as a component of injunctive reliefs or as a relief granted to address alleged violation of IP rights, as well as the power to hold in contempt those who disregard orders or writs issued.

The Intellectual Property Rights Enforcement and Coordination group under the Office of the Director General will have jurisdiction over administrative complaints against counterfeiting and piracy covering production, offering for sale and sale of counterfeit goods or content, as well as the sale, offering for sale, streaming, broadcasting to make available to the public these pirated goods or content via electronic, digital, or online means, provided there is no pending case before any other office or court involving the same issue or subject matter.

The IPOPhl DG is given the power to impose a fine of not less than P100,000 to not more than P1 million plus an additional fine of not less than P5,000 per day of continuing violation.

Meanwhile, the bill proposes to give the Bureau of Copyright and Related Rights original jurisdiction to resolve disputes relating to copyright and related rights except those falling within the jurisdiction of the Bureau of Legal Affairs (BLA). At present, the Bureau of Copyright’s jurisdiction is limited to resolving issues involving terms of copyright protection.

The BLA’s jurisdiction will also be expanded. As proposed, it will have jurisdiction over petitions for declaration as true and actual inventor and revocation of such declaration in the case of patents and petitions for declaration of ownership or having the right to intellectual property or having the right to IP and revocation of such declaration.

It will also have original and exclusive jurisdiction in administrative complaints for violation of IP laws although its jurisdiction will still be limited to complaints where the total damages claimed are not lower than P200,000. The said bureau will likewise have the power to impose fines of not less than P5,000 to not more than P10,000.

In the case of patents, some good news for inventors. The bill will allow a provisional patent or temporary application which will give the applicant priority under the first-to-file rule. The said provisional patent application will be confidential and will not be published in the IPOPhl Gazette.

The term of a patent will still be 20 years from the filing date of the application, except that if a patent was originally filed under a provisional patent application, the protection period shall begin from the filing date of the said provisional application.

For marks, the bill seeks to expand what can be registered as trademarks or service marks to include non-visible signs such as sound marks provided that they are capable of distinguishing the goods or services of an enterprise.

Lack of distinctiveness is also listed as an additional ground for non-registrability of a mark.

There will also be landlord liability provision in the trademark infringement so that those who permit the use of their premises for the sale, offering for sale, manufacturing, or distribution of infringing counterfeit or pirated goods or content will be solidarily liable provided that they profit or benefit unless however the landlord can prove that he has no knowledge of such fact and has no participation in the infringing act of the tenants.

The present version of the IP Code considers as copyright infringement acts of landlords who benefit from the copyright infringing activity, who have knowledge of such, and who have the power to control such activity. There is no similar provision in the case of trademark infringement, which would explain why only the tenants selling goods with infringing trademarks and not the lessors or the mall and store owners can be sued for trademark infringement.

A similar solidary liability is imposed on internet service providers, website owners, online and social media platforms where infringing, counterfeit or pirated goods are being sold or offered for sale to the public, unless they can prove that they did not know and they had no participation in the infringing act.

In the case of copyright, the bill seeks to adopt the so-called freedom of panorama so that incidental inclusion of copyrighted works in an artistic work shall not be considered as copyright infringement. So the next time that a film maker or photographer happens to catch in the background a copyrighted work such as a building, he or she does not have to ask permission nor pay royalties from the copyright owner even if his film or photograph is for profit.

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