Weekly Trademark Update – Dec 2021 (2 of 3)

“Information to help you protect, manage and enforce your intellectual property (IP) rights in the Philippines.

This page provides practical information to help you make the most of your IP when doing business in?the Philippines.

If you plan to do business in?the Philippines,?or if you are already trading there, it is essential to know how to manage and enforce your IP as private property rights.

British businesses looking for access to intellectual property advice and support should contact our?South East Asia attaché team, based in the High Commission in Singapore

The Intellectual Property Office of the Philippines (IPOPHL) is the body responsible for operating the patent, industrial design and trade mark system in the Philippines.

Trade marks

The Philippine trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’ products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in the Philippines you can:

apply online via IPOPHL

make an international trade mark application and select the Philippines as a designated country. More information on international trade mark can be found in the international trade mark protection page

Good to know

Applications can be made in English or Filipino.

Non-residents must be represented by a local authorised individual e.g., a lawyer.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in the Philippines. The Philippines also provides protection for utility models for up to 7 years. Utility models are sometimes called “mini-patents” and require a lower level of inventiveness. All patent rights in the Philippines are subject to the payment of annual fees after they’ve been granted.

To protect your innovation with a patent in the Philippines you can:

File an application directly to IPOPHL.

File an international patent application and select the Philippines as a designated country. This can reduce the cost and effort of applying for patents in multiple countries. More information on international patents can be found in the international patent protection page.

File an ASEAN application via ASEAN Patent Examination Co-operation (ASPEC). This can reduce cost and effort of applying for patents in multiple ASEAN countries.

Good to know

The Philippines operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent. The Philippines does operate grace period where you can register a patent within 12 months of any public disclosure.

Applications can be made in English or Filipino.

Non-residents must be represented by a local authorised individual e.g., a lawyer.

Designs

In the Philippines, design protection initially last for 5 years and can be extended for two consecutive periods i.e. protection can last for a maximum of 15 years.

To protect your design in the Philippines you can:

File an application directly to IPOPHL.

File an international design application and select the Philippines as a designated country. This can reduce the cost and effort of applying for designs in multiple countries. More information on international designs can be found in the international design protection page.

Good to know

The Philippines operates a ‘first to file’ principle. If two people apply for an identical design, the first one to file the application will be awarded the protection. The Philippines does operate grace period where you can register a patent within 6 months of any public disclosure.

Applications can be made in English or Filipino.

Non-residents must be represented by a local authorised individual e.g., a lawyer.

Copyright

As in the UK,?copyright is an automatic right under?Filippino?law.??

Copyright in the Philippines protects original literary, scientific, and artistic work.

The length of protection varies but generally lasts for 50 years counted from 1 January of the year following the author’s death.?

Good to know?

Although protection is automatic, you may want to register your work with IPOPHL or the National Library. Registration is voluntary but helps to provide evidence of copyright ownership before a court or relevant enforcement authority.

Non-residents must be represented by a local authorised individual e.g., a lawyer.

Enforcing your rights

Businesses mention IP infringement and IP enforcement as issues when operating in the Philippines.

If your rights are infringed, there are 4 main options you can consider: administrative action, civil litigation, criminal prosecution, and customs however mediation is often an effective and lower cost option where possible.

Administrative enforcement can initiated through filing a complaint with IPOPHL. The process is similar to civil litigation action and authorities can impose fines and damages.

In practice, counterfeiting and piracy are typically dealt with via criminal prosecution. Raid action is possible with the national police or bureau of investigation and while their involvement is not required to start criminal proceedings it is advised to make any following actions easier.

If you suspect infringing goods are being imported into the Philippines, you can register their IP with customs official who have the power to monitor counterfeit or pirated goods at the border. The recordal is effective for 2 years and can be extended for a further 2 years.

More information

For specific support on IP enforcement, we have developed a manual including details on the laws and regulations as well as the IP enforcement procedures in Philippines.

Visit these pages for more information about doing business in the Philippines.

To report a market access barrier on IP in the Philippines.

UK ASEAN Business Council (UKABC) provides awareness on the latest opportunities in the region for UK companies looking to expand their operations into markets across Southeast Asia including Philippines.

British Chamber of Commerce in Philippines provide a variety of business advice, services and support to businesses in the Philippines.

The British High Commission in Philippines supports UK businesses in the Philippines.”

“Information to help you protect, manage and enforce your intellectual property (IP) rights in Indonesia.

If you plan to do business in?Indonesia,?or if you are already trading there, it is essential to know how to manage and enforce your IP as private property rights.

British businesses looking for access to intellectual property advice and support should contact our?South East Asia attaché team, based in the High Commission in Singapore

The Directorate General of Intellectual Property (DGIP) is the body responsible for operating the patent, industrial design and trade mark system in Indonesia.

Trademarks

The Indonesian trade mark system is similar to the UK’s. Trade marks protect symbols, colours or other devices used to identify a business’ products or services. A trade mark is valid for ten years, then may be renewed indefinitely for further ten-year periods.

To protect a trade mark in Indonesia you can:

Apply direct to DGIP

Make an international trade mark application and select Indonesia as a designated country. More information on international trade mark can be found in the protecting your trade mark abroad page.

Good to know

Applications must be made in Bahesa Indonesian. It is recommended to use a local lawyer to submit your application.

Patents

Like in the UK, patents for inventions can be protected for up to 20 years in?Indonesia. Indonesia?also provides protection for utility models for up to 10?years.?Utility models are sometimes called “mini-patents” and require a lower level of inventiveness.?All patent rights in Indonesia are subject to the payment of annual fees after they’ve been granted.???

To protect your innovation with a patent in Indonesia you can:

File an application?directly?to DGIP

File?an international?patent?application and select Indonesia as a designated country. This can reduce the cost and effort of applying for?patents?in multiple countries.?More information on international patents can be found in the protecting your patents abroad page.

File an ASEAN application via ASEAN Patent Examination Co-operation (ASPEC). This can reduce cost and effort of applying for patents in multiple ASEAN countries.

Good to know

Indonesia operates a ‘first to file’ principle. If two people apply for a patent on an identical invention, the first one to file the application will be awarded the patent. Indonesia does operate grace period where you can register a patent within 6 months of any public disclosure.

Applications should be made in Bahesa Indonesian. DGIP does offer a translation service however this can often cause delays.

It is recommended to use a local lawyer to submit your application.

Designs

In Indonesia, design protection initially last for 10 and cannot be extended.

To protect your design in the Indonesia you should file an application directly to DGIP.
?

Good to know?

Indonesia operates a ‘first to file’ principle. If two people apply for an identical design, the first one to file the application will be awarded the protection. Indonesia does operate grace period where you can register a patent within 6 months of specific public disclosures.

Applications must be made in Bahasa Indonesia and can be made either by the designer or an individual on your behalf e.g., a lawyer.

Copyright

As in the UK,?copyright is an automatic right under?Indonesian law.??? ? Copyright in Indonesia protects original?literary, artistic, and scientific works including computer programmes.

?The length of protection varies but generally lasts for?70 years counted from 1 January of the year following the author’s death.

Good to know?? ??

? Although protection is automatic, you may want to register your work with DGIP. Registration is voluntary but helps to provide evidence of copyright ownership before a court or relevant enforcement authority.

Declarations of copyright must be made in Bahasa Indonesian and can be made either by yourself or another individual on your behalf for example a lawyer.

Enforcing your rights

Businesses mention IP infringement and IP enforcement as issues when operating in Indonesia.

If your rights are infringed, there are 3 main options you can consider: civil litigation, criminal prosecution, and customs seizures however mediation via legal professionals is often an effective and lower cost option.

IP infringement is a criminal offence however enforcement is often difficult. In practice, only minor fines are given for IP crimes. IP infringement is a complaint-based crime where the IP holder needs to file a complaint with the police or DGIP before any action such as raids is taken.

If you suspect goods infringing your trade mark or copyright are being imported into Indonesia, you can notify the customs via the courts of suspected shipments however in practice seizures are rare.

More information

For specific support on IP enforcement we have developed a manual including details on the laws and regulations as well as the IP enforcement procedures in Indonesia.

Visit these pages for more information about doing business in Indonesia.

To report a market access barrier on IP in?Indonesia.

UK ASEAN Business Council (UKABC) provides awareness on the latest opportunities in the region for UK companies looking to expand their operations into markets across Southeast Asia including Indonesia.

British Chamber of Commerce in Indonesia provide a variety of business advice, services and support to businesses in Indonesia.

The British High Commission in Indonesia supports UK businesses operating in Indonesia.”

“Under the previous Ecuadorian legal framework, border measures and criminal liability for the trade in counterfeit merchandise have been practically unenforceable for more than five years. During this time, the Ecuadorian marketplace was flooded with products that violate intellectual property (IP) rights, particularly trademarks.

On August 30, 2021, the “Law that Reforms Several Legal Bodies to Reinforce the Prevention and Fight against Illicit Commerce, Strengthen the National Industry and Promote Electronic Commerce” (Law) was enacted, finally providing adequate statutory provisions for the enforcement of border measures and criminal liability.

Regarding border measures, before the Law came into force, the National Customs Service of Ecuador (SENAE) was expected to implement a process through which it would provide IP rights holders with importation and exportation data that they could use to identify infringing merchandise. They would then need to request the ordering of border measures before the Ecuadorian Intellectual Property Office (also known as the Ecuadorian National Service of Intellectual Rights (SENADI)). However, SENAE failed to implement such a process and as a consequence, IP rights holders were unable to obtain border measures.

A key feature of the Law is that it enables SENAE to order border measures ex officio. As a result, SENAE is obligated to monitor merchandise, alert owners of IP rights about merchandise that could be violating their rights, provide all relevant information, and suspend customs operations that contain products that in any way violate IP rights.

On the criminal front, before the Law came into force, the Ecuadorian Organic Criminal Code only established fines—not imprisonment—for certain violations of protected copyrights and trademarks, where the value of the infringing merchandise totals at least US $56,800. This made it difficult to enforce IP rights through this action.

The new Law represents a huge step forward in regard to criminal actions for IP rights protection. It now covers additional IP rights, such as patents, utility models, and industrial designs. The previously existing condition that the merchandise needed to amount to a minimum value is eliminated, and in its place, it is now required that the acts must be executed on a “commercial scale” to be considered a crime. The Law, however, establishes a condition of a minimum value of US $20,000 for criminal liability in cases of importation and exportation operations. This amount is calculated by considering the value and/or price of the original products. Criminal liability requires that the IP rights infringements were committed with intent.”

“CNIPA issued the finalised revisions to the Trade Mark Examination & Trial Guidelines on 22 November, taking effect from 1 January 2022. As in the previous draft, the guidelines are split into two parts. Part I clarifies the general requirements of formal examination and providing procedural details of trade mark registration, opposition, review and cancellation. Part II regulates the substantive examination of trade marks illustrating what cannot be used as trade marks, criteria for judging distinctive features and similarity of trade marks etc. The most notable change in the guidelines is perhaps the clarification of ‘bad faith applications without intent to use’ in Article 4 of the Trade Mark Law, factors to be considered with guiding cases and examples provided. Read CNIPA Trade Mark Examination and Trial Guidelines in Chinese”