Trademark Disputes Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern trademark litigation in your jurisdiction?

Republic Act 8293, known as the IP Code, is the primary law governing IP rights – including trademarks – in the Philippines. It establishes the legal framework for the registration, protection and enforcement of trademark rights in the country.

In addition, the Philippine Intellectual Property Office (IPOPHL) has issued several implementing rules and regulations relevant to the procedural aspect of administrative trademark litigation, including:

• the Rules and Regulations on Inter Partes Proceedings as amended by IPOPHL Memorandum Circular 2022-013;
• the Rules and Regulations on Administrative Complaints for Violation of Laws involving IP Rights as amended by IPOPHL Memorandum Circular 2024-021;
• the Revised Rules on Mediation as amended by IPOPHL Memorandum Circulars 2020-047 and 2024-007;
• the Rules of Procedures for IPOPHL Mediation Outside Litigation as amended by IPOPHL Memorandum Circular 2020-048;
• the Uniform Rules on Appeal in the Office of the Director General as amended by IPOPHL Memorandum Circular 2020-041; and
• the Revised Rules of Procedure on Administrative Enforcement of IP Rights as supplemented by the Rules on Voluntary Administrative Site Blocking.

The Supreme Court of the Philippines has also issued the following rules and regulations specifically affecting civil and/or criminal trademark actions before the regular courts:

• the 2020 Revised Rules of Procedure for IP Rights Cases;
• the Rules on Search and Seizure in Civil Actions for Infringement of IP Rights; and
• the Guidelines on Submission of Electronic Copies of Pleadings and Other Court Submissions Being Filed Before the Lower Courts Pursuant to the Efficient Use of Paper Rule.

1.2 Which bilateral and multilateral agreements with relevance to trademark litigation have effect in your jurisdiction?

The Philippines is a signatory to the following key treaties and agreements relating to trademarks and trademark litigation which impact on the recognition, enforcement and management of trademark rights in the country through embodiment in national legislation and/or regulation:

• the Paris Convention for the Protection of Industrial Property (acceded to in 1965);
• the Convention Establishing the World Intellectual Property Organization (ratified in 1980);
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (acceded to in 1994); and
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (acceded to in 2012).

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the trademark laws? What is the framework for doing so?

The National Committee on Intellectual Property Rights (NCIPR) is the interagency body that formulates and implements plans and policies for the protection of IP rights; and coordinates efforts among various agencies to combat IP violations.

It is composed of 15 member agencies:

• the Department of Trade and Industry;
• IPOPHL;
• the Department of Justice (DOJ);
• the Bureau of Customs (BOC);
• the Food and Drug Administration;
• the National Bureau of Investigation (NBI);
• the Philippine National Police (PNP);
• the Optical Media Board;
• the National Book Development Board;
• the Office of the Special Envoy on Transnational Crime;
• the Department of Interior and Local Government;
• the National Telecommunications Commission;
• the Department of Information and Communications Technology;
• the Bureau of Internal Revenue; and
• the Bureau of Immigration.

IPOPHL is the vice chair of the NCIPR and is the primary authority for trademark policymaking and implementation, registration, administration, management and protection. Within IPOPHL:

• the Trademark Division handles the examination and registration of trademarks; and
• the Bureau of Legal Affairs (BLA) adjudicates disputes related to trademarks, including oppositions, cancellations and administrative actions for trademark infringement and/or unfair competition.
• The IP Enforcement Office exercises IPOPHL's enforcement functions and visitorial power by implementing – on its own or in coordination with administrative enforcement agencies –actions against counterfeit and pirated goods.

The DOJ oversees the National Prosecution Service, which handles the filing and prosecution of criminal infringement cases in courts. Civil and/or criminal cases involving IP rights fall within the jurisdiction of regional trial courts designated by the Supreme Court as special commercial courts.

Raids and investigations are conducted by:

• the NBI's IP Rights Division; and
• the PNP's Criminal Investigation and Detection Group.

The BOC's IP Rights Division handles the monitoring and seizure of counterfeit and other infringing imports into the country.

2 Forum

2.1 In what forum(s) is trademark litigation heard in your jurisdiction? Are trademark infringement and validity decided in the same forum or separate forums?

Trademark infringement and unfair competition cases may be administrative, civil and/or criminal in nature. In any action to enforce the rights to a registered mark, the court or administrative agency involved may also:

• determine the right to registration;
• order cancellation; and
• otherwise rectify the register with respect to the registration of any party to the action.

The Philippine Intellectual Property Office (IPOPHL) Bureau of Legal Affairs (BLA) exercises quasi-judicial authority over various IP disputes. The BLA is responsible for hearing and deciding trademark opposition and cancellation cases, or inter partes cases, which determine: (1) the registrability of a pending trademark application; and/or (2) the validity of an existing trademark registration.

The BLA also exercises original jurisdiction over administrative complaints involving IP rights violations, such as trademark infringement and unfair competition, where the total damages claimed are at least PHP 200,000.

Meanwhile, civil and criminal complaints involving violations of IP rights – including trademark infringement and unfair competition – are lodged in the regional trial courts (RTCs) designated as special commercial courts (SCCs).

2.2 Who hears and decides trademark disputes (eg, a judge, a panel and/or a jury)?

Trademark disputes filed with the BLA are heard and decided by a hearing/adjudication officer, whose decision or final order may be appealed to the director of the BLA. The decision of the BLA director is appealable to the Office of the Director General (ODG) of IPOPHL.

Cases filed with the RTCs designated as SCCs are heard and decided by the presiding judge therein.

Decisions of the IPOPHL ODG in the exercise of its appellate jurisdiction with respect to decisions of the BLA director and decisions of the SCCs in exercise of their original jurisdiction are appealable to the Court of Appeals. The decision of the Court of Appeals may be further appealed to the Supreme Court.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

Section 151.2 of the IP Code prohibits the subsequent filing of a petition to cancel a registered mark that is being enforced in a pending infringement action. Conversely, a pending petition to cancel a mark does not preclude the subsequent filing of an action for infringement and/or unfair competition. Section 2, Rule 2 of the IP Rights Violation Rules clarifies that administrative actions for IP violations may be filed independently of civil or criminal actions filed with the regular courts, as these are considered distinct proceedings and the commencement of one does not preclude filing in other forums.

Nonetheless, a certificate of non-forum shopping is mandatory for all infringement actions to prevent forum shopping. The required certification must state that:

• the party commencing the action has not filed any other action or proceeding involving the same issue/s before any tribunal, agency or quasi-judicial body; and
• no such action or proceeding is pending in other tribunals, agencies or quasi-judicial bodies.

If any such action is pending, its status must be stated; and if knowledge of such action is acquired after filing, the party concerned must notify the relevant tribunal, agency or quasi-judicial body within five days of obtaining such knowledge.

Lack of proper certification is grounds for dismissal and deliberate forum shopping can lead to summary dismissal with prejudice and penalties for direct contempt.

3 Parties

3.1 Who has standing to file suit for trademark infringement? What requirements and restrictions apply in this regard?

Only the owner of a mark registered in the Philippines has standing to file a trademark infringement action, whether administrative, civil and/or criminal. However, the owner of an infringed mark that is not registered in the Philippines may file an action for unfair competition.

Foreign natural or legal persons that do not engage in business in the Philippines but are nationals of, are domiciled or have a real and effective industrial establishment in a country that is a party to any treaty, convention or agreement relating to IP rights or the repression of unfair competition to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, may file the same actions, whether or not they are licensed to do business in the Philippines. In contrast, foreign corporations transacting business in the Philippines without a licence cannot intervene in any action, suit or proceeding in any court or administrative agency of the Philippines but may be sued or proceeded against.

3.2 Can a trademark infringement suit be brought against a defendant which is a foreign entity with only a residence or place of business outside the jurisdiction?

A civil infringement suit may be brought against a foreign private legal entity which has transacted or is doing business in the Philippines but has no local residence or place of business. To obtain jurisdiction over the defendant, service of summons may be made:

• on its resident agent; or
• if there is none, on:
• • the government official designated by law to that effect; or
  • any of its officers, agents, directors or trustees in the Philippines.

If the foreign private legal entity is not registered in the Philippines or has no resident agent but has transacted or is doing business in the Philippines, service may, with leave of the court, be effected outside of the Philippines through any of the following means:

• by personal service through the appropriate court in the foreign country with the assistance of the Department of Foreign Affairs (DFA);
• by publication once in a newspaper of general circulation in the country in which the defendant may be found and by serving a copy of the summons and the court order by registered mail at the last known address of the defendant;
• by fax;
• by electronic means with the prescribed proof of service; or
• by such other means as the court, at its discretion, may direct.

Should either personal or substituted service fail, summons by publication is allowed. In the case of a legal entity, the names of its officers or their duly authorised representatives must likewise be published. Extraterritorial service of summons, as provided for in international conventions to which the Philippines is a party, is also allowed.

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

A single infringement action can be brought against multiple defendants, provided that a common cause of action exists against all of them. Rule 3, Section 6 of the Rules of Court (Philippines) allows for the joinder of parties as defendants where:

• there is a common question of law or fact involved in the action; and
• the claims arise from the same transaction, occurrence or series of transactions.

Although the IP Code itself does not specifically outline the rules for joinder, the procedural rules mentioned in Rule 3 of the Rules of Court will govern IP infringement cases.

3.4 Can a third party seek cancellation of a national or international trademark in your jurisdiction? If so, how and on what grounds?

Under Section 151 of the IP Code, any person that believes it has been or will be damaged by the registration of a mark in the Philippines may file a verified petition for cancellation with the Philippine Intellectual Property Office Bureau of Legal Affairs (BLA) within the following periods:

• within five years of the date of the registration of the mark; or
• at any time if:
• • the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered;
  • the registered mark has been abandoned;
  • the registration of the mark was obtained fraudulently or contrary to the IP Code;
  • the registered mark is being used by, or with the permission of, the registrant to misrepresent the source of the goods or services on or in connection with which the mark is used; or
  • the registered owner of the mark fails to use or to cause it to be used in the Philippines by virtue of a licence during an uninterrupted period of at least three years without legitimate reason.

3.5 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

There are no provisions or proceedings by which a third party may seek a declaration of non-infringement. However, a third party can question the validity of a trademark registration in an action to enforce the same trademark registration.

4 Trademark infringement

4.1 What constitutes trademark infringement in your jurisdiction?

Section 155 of the IP Code provides that the use in commerce of an identical copy or colourable imitation of a registered mark, or a dominant feature thereof, by another person without the consent of the registered owner of that mark, where such use is likely to cause confusion, constitutes trademark infringement.

4.2 How is infringement determined?

To establish trademark infringement, the following elements must be shown:

• The trademark being infringed has been registered with the Philippine Intellectual Property Office;
• The trademark has been reproduced, counterfeited, copied or colourably imitated by the infringer;
• The infringing mark has been:
• • used in connection with the sale, offering for sale or advertising of any goods, business or services; or
  • applied to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used upon or in connection with such goods, business or services;
• The use or application of the infringing mark is likely to cause confusion or mistake or to deceive purchasers or others as to the goods or services themselves or as to the source or origin of such goods or services or the identity of such business; and
• The trademark being infringed has been used without the consent of the trademark owner or the assignee thereof.

The element of likelihood of confusion is the gravamen of trademark infringement. Likelihood of confusion is presumed where an identical sign or mark is used for identical goods or services. Otherwise, the court will consider the general impression of the ordinary purchaser:

• buying under the normally prevalent conditions in trade; and
• giving the attention that such purchasers usually give in buying the relevant class of goods.

4.3 Is wilful infringement recognised? If so, what is the applicable standard?

Although the infringer's intent to deceive or defraud is immaterial with regard to its liability for infringement, Section 158 of the IP Code states that profits or damages cannot be recovered unless the infringing acts were committed with knowledge that such imitation was likely to cause confusion or mistake, or to deceive. Section 156.3 of the IP Code adds that where actual intent to mislead the public or to defraud the complainant is shown, the courts may, in their discretion, double the damages claimed.

The concept of bad faith or fraudulent intent in trademark registration generally pertains to prior knowledge of the creation, use and/or registration by another of an identical or similar mark. This is a factual matter that must be decided by the adjudicator based on the allegations and evidence provided. However, displaying a mark with the words ‘Registered Mark' or the ‘®' symbol creates a presumption of knowledge.

5 Bringing a claim

5.1 What measures can a trademark owner take to enforce its rights in your jurisdiction?

A trademark owner has several options to protect and enforce its rights in the Philippines:

• sending demand/cease and desist letters;
• filing complaints under the IP policies of relevant online platforms to remove the infringing products and/or content;
• filing a complaint for counterfeit goods/content with the IP Enforcement Office to obtain administrative relief such as the issuance of compliance orders and site blocking;
• recording its rights with the Bureau of Customs (BOC), on the basis of which the BOC will monitor and inspect on its own initiative suspect imports to determine whether they are liable to seizure and forfeiture pursuant to the law;
• filing an application for the issuance of a writ of search and seizure to seize counterfeit goods or infringing materials and gather evidence for a pending or intended civil trademark infringement case.
• raising the following administrative IP violation cases before the Philippine Intellectual Property Office (IPOPHL) Bureau of Legal Affairs (BLA), which are independent from and without prejudice to the filing of any action with the regular courts:
• • false designation of origin;
  • false or fraudulent declaration (in the procurement of a trademark registration);
  • trademark infringement; and
  • unfair competition; and
• filing a civil and/or criminal case for trademark infringement and unfair competition before the regional trial courts designated as special commercial courts (SCCs).

5.2 What is the limitation period for bringing a trademark infringement claim in your jurisdiction?

The prescriptive period for administrative actions and civil actions based on the IP Code is four years from the time that the cause of action arose. Criminal actions prescribe after eight years, beginning from either:

• the date of commission of the violation; or
• if the date is unknown, the date of discovery of the violation.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

Prior notification to the alleged infringer is not required before an IP infringement case is instituted. However, it is common practice to send a cease and desist letter or a demand letter to the alleged infringer to attempt a resolution before initiating formal legal proceedings.

5.4 What are the procedural and substantive requirements for bringing a claim for trademark infringement? How much detail must be presented in the complaint?

Infringement may take the form of administrative, civil or criminal actions. The applicable procedural rules depend on the type of case:

• Administrative actions for infringement are filed with the BLA and are governed by the Rules and Regulations on Administrative Complaints for Violation of Laws Involving IP Rights, as amended, supplemented by the Rules of Court.
• A civil case for trademark infringement is filed before the SCC with jurisdiction over the place where the plaintiff or the defendant resides or has its principal office, at the option of the plaintiff.
• For a criminal infringement case, the complaint must be instituted with the National Prosecution Service of the Department of Justice for the purposes of preliminary investigation. A criminal case will be filed with the SCC only if probable cause is found after preliminary investigation. The place of commission of the offence or any of its elements determines which SCC has jurisdiction to try the case.

Both civil and criminal infringement actions are governed by the Rules of Procedure for IP Rights Cases, while the Rules of Court may apply supplementarily.

In general, an infringement complaint must:

• be verified; and
• contain a concise statement of:
• • the ultimate facts and evidence constituting the complainant's cause of action; and
  • the specific relief/s sought.

The judicial affidavits and the relevant evidence form part of the complaint.

Moreover, the facts showing the following must be averred:

• the capacity of the party to sue or be sued;
• the authority of a party to sue or be sued in a representative capacity; or
• the legal existence of an organised association of persons that is made a party.

In the case of legal entities, proof of capacity to sue must be attached to the complaint.

5.5 Are interim remedies available in trademark litigation in your jurisdiction? If so, how are they obtained and what form do they take?

A complainant may seek a temporary restraining order (TRO) or preliminary injunction to prevent further infringement or damage while the case is ongoing by establishing any of the following:

• The applicant is entitled to the relief demanded and the whole or part of such relief involves:
• • restraining the commission or continuance of the act(s) complained of; or
  • requiring the performance of an act(s) either for a limited period or perpetually;
• The commission, continuance or non-performance of the act(s) complained of during the litigation would probably cause injustice to the applicant; or
• A party is doing, threatening or attempting to do an act in violation of the rights of the applicant which could render the judgment ineffectual.

While a civil or criminal case is pending, the complainant may also move to have the infringing goods destroyed or disposed of.

Before the entry of judgment, a complainant may have the property of the defendant attached as security for the satisfaction of a judgment in the following actions:

• against a party that has been guilty of fraud in procuring the registration of a mark with IPOPHL by false or fraudulent declaration or representation;
• against a party that has committed acts of unfair competition;
• against a party that does not reside and is not found in the Philippines, or on which summons may be served by publication;
• for the recovery of a specified amount of money or damages on a cause of action arising from a violation of the IP Code against a party that is about to depart from the Philippines with the intent of evading execution of the judgment; or
• against a party that has removed or disposed of its property, or is about to do so, with the intent of defrauding the aggrieved party.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

When seeking the issuance of a TRO or writ of preliminary injunction, or prior to the implementation of an order for the disposal and/or destruction of infringing goods, or upon the issuance of an order of preliminary attachment, the complainant may be required to provide security in the form of a cash bond to cover damages or costs that the respondent might incur as a result of the injunction, disposal/destruction and/or attachment should it later be determined that the applicant is not entitled to such remedies.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

Neither the Rules of Court nor the Philippine Intellectual Property Office Rules mandate the outright disclosure of specific information/documents apart from what is needed to comply with the certificate of non-forum shopping requirement.

However, the following modes of discovery are available for the limited purpose of obtaining evidence from an adverse party:

• deposition;
• written interrogatories;
• requests for admission; and
• a motion for the production and inspection of documents or things.

Upon the ex parte motion of a party, the testimony of any person may be taken by deposition upon oral examination or written interrogatories. The deponent may be examined regarding any matter that is not privileged, including:

• the existence, description, nature, custody, condition and location of any tangible things; and
• the identity and location of persons with knowledge of relevant facts.

Upon the motion of any party, the court may also order any party to:

• produce and permit the inspection and copying or photographing of any designated tangible things, not privileged, that constitute or contain material evidence; or
• permit entry to designated property for the purpose of inspecting, measuring, surveying or photographing the property or any designated relevant object or operation thereon.

Any mode of discovery may be objected to within 10 calendar days of receipt of the request, but only on the grounds that:

• the matter requested:
• • is manifestly incompetent, immaterial or irrelevant; or
  • constitutes undisclosed information (see question 6.3) or is privileged in nature; or
• the request is for the purposes of harassment.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

Upon the ex parte motion of a party, the testimony of any person – whether a party or not – may be taken by deposition upon oral examination or written interrogatories. Under a subpoena duces tecum, a third party to an infringement action may be compelled to (1) attend and testify at a hearing or trial by subpoena; and/or (2) produce certain evidence under its control.

The third party may be examined regarding any matter not privileged which is relevant to the subject of the pending action.

In general, the rights of a party cannot be prejudiced by an act, declaration, omission or admission of a third party, except if such third party testifies on a relevant matter based on his or her personal knowledge. Disclosure may be objected to if the information sought from the third party is manifestly incompetent, immaterial or irrelevant, or privileged in nature.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

The following privileges are recognised by Philippine courts and tribunals.

Trade secrets privilege: This protects individuals and entities from being compelled to disclose confidential business information that provides a competitive advantage, such as processes, formulas or practices. Under the Revised Rules on Evidence, a person cannot be compelled to testify about any trade secret unless non-disclosure would conceal fraud or otherwise result in an injustice.

The Rules on Voluntary Licensing recognise trade secrets and ‘undisclosed information' as protected IP rights and define them as information which:

• is secret in the sense that it is not generally known among or readily accessible to persons within the circles that normally deal with the kind of information in question;
• has commercial value because it is secret; and
• has been subject to reasonable steps under the circumstances to keep it secret by the person lawfully in control of it.

Attorney-client privilege: This shields confidential communications between a client and its lawyer made for the purpose of obtaining legal advice. However, if the services or advice was sought or obtained in furtherance of a crime or fraud, the privilege will not apply.

Public officer privilege: This prevents public officers from being examined during their terms of office or subsequent thereto with regard to communications made to them in official confidence where the court finds that the public interest would suffer due to the disclosure.

Waiver of privilege: Privilege can be waived if a party voluntarily discloses the information or fails to assert it properly.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in trademark infringement litigation?

A trademark owner may engage the services of an independent private investigator to gather information and/or evidence as a precursor to an infringement action, usually civil or administrative. It may also apply to the courts for the issuance of a writ of search and seizure in support of a pending or intended civil infringement action where (1) any delay is likely to cause irreparable harm to the trademark owner; or (2) there is demonstrable risk of evidence being destroyed.

Prior to the filing of a criminal complaint, the trademark owner may coordinate with the Philippine National Police (PNP) or the National Bureau of Investigation (NBI) to conduct search and seizure operations. After investigation, the NBI/PNP will file an application for the issuance of a search and seizure warrant before the regular courts. Evidence obtained from execution of the warrant will be used to support the complaint filed with the Prosecutor's Office.

Any party to a case may avail of any of the modes of discovery in accordance with the Rules of Court no later than 30 calendar days from the joinder of issues. For cases within the jurisdiction of the Philippine Intellectual Property Office Bureau of Legal Affairs, the modes of discovery may be availed of with leave of the hearing officer after the answer has been filed.

In general, all supporting evidence must be submitted – including testimonial evidence in the form of judicial affidavits – upon filing the initiatory pleadings. The subsequent submission of evidence may be permitted at the court's discretion or for newly discovered evidence. In criminal proceedings specifically, if a party intends to present additional judicial affidavits as direct evidence, it must indicate this during the pre-trial and state its purpose.

All infringement actions take the form of adversarial proceedings with a full-blown trial. During trial proper witnesses are presented to testify orally, and both parties are given the opportunity to cross-examine, redirect and re-cross-examine the witnesses.

Only evidence that has been formally offered for a specific purpose will be considered in rendering the decision. Witness testimony must be orally offered at the time the witness is called to testify, while documentary and object evidence must be offered after the presentation of a party's testimonial evidence.

7.2 What types of evidence are permissible in your jurisdiction? Are (a) expert evidence and (b) survey evidence accepted in trademark infringement suits? Are they commonly used?

Under the Rules of Court, evidence is admissible if it is (1) relevant to the issue; and (2) not otherwise excluded by the law or the prevailing rules.

The relevance of evidence is measured by its relation to the fact in issue so as to induce belief in its existence or non-existence.

Documentary evidence, such as certificates of registration, is permitted to prove the actual use and status of a mark. Documents must be written in English or Filipino; or accompanied by a translation into English or Filipino.

Object evidence, such as actual goods bearing the mark, is also permitted.

Foreign official documents and records, as well as foreign private documents executed and notarised abroad, may be presented in evidence without further proof, provided that they are properly legalised/authenticated or apostilled, as the case may be.

Electronic evidence is also permitted, provided that it is:

• properly authenticated;
• relevant to the issue; and
• not excluded by the prevailing laws and rules.

Expert evidence, if warranted, may be presented but is not commonly used, since:

• the expertise of the witness must first be established; and
• the court has a wide latitude of discretion in determining the weight of his or her opinion.

Scientific market or consumer surveys are also permitted to prove actual consumer confusion or the likelihood of consumer confusion between the contending marks in the market.

7.3 Can evidence from criminal proceedings be used in civil proceedings and vice versa?

Yes, evidence adduced in criminal proceedings may be used in civil proceedings and vice versa, provided that the evidence is deemed admissible, and properly offered and authenticated.

However, since the standards of evidence differ depending on the type of case filed, the totality of the evidence submitted for an administrative and/or civil case may not be enough to support a criminal conviction.

7.4 What are the applicable standards of proof?

In administrative proceedings, substantial evidence or such relevant evidence as a reasonable mind may accept as adequate to support a conclusion is required to sustain a ruling of trademark infringement.

In civil cases, trademark infringement is measured by the standard of preponderance of evidence, or when the totality of evidence adduced by one side is superior to that of the other.

In criminal cases, a party will be adjudged guilty of trademark infringement based on proof beyond reasonable doubt, or that degree of proof which, excluding the possibility of error, produces moral certainty.

7.5 On whom does the burden of proof rest?

The party presenting a claim or defence has the burden of presenting evidence supporting the same. The complainant/plaintiff has the burden of establishing the fact of infringement. On the other hand, the defendant/accused has the burden of establishing its defences, subject to applicable presumptions under the relevant procedural rules and the IP Code.

8 Defences and counterclaims

8.1 What defences are typically available in trademark litigation?

In general, the following defences may be raised in trademark infringement cases:

• the lack of identity or confusing similarity of the marks;
• the invalidity of the mark's registration with the Philippine Intellectual Property Office; and/or
• the claim of an innocent infringer in the following cases, in which the sole remedy available is injunction:
• • where the innocent infringer is engaged solely in the business of printing the mark or other infringing materials for others; and
  • where the defendant is a publisher or distributor and the infringement complained of is contained in or part of a paid advertisement in a newspaper, magazine or other similar periodical, or in an electronic communication.

Ordinarily, good faith is not a defence in an infringement case. However, a defendant may raise good faith if it claims to be a prior user under Section 159.1 of the IP Code, which states that a registered mark will have no effect against any person which, before the filing date or the priority date, was using the mark in good faith for the purposes of its business or enterprise.

Good faith is also an available defence where bad-faith registration and/or fraudulent intent is required as an element of the offence, as in the case of unfair competition.

The defence of prescription may also be raised.

8.2 Can the defendant counterclaim for revocation or invalidation of the trademark? If so, on what grounds and what is the process for doing so?

A defendant can raise a counterclaim for revocation or invalidation of a trademark registration subject of an enforcement action where it raises the mark's invalidity as a defence. The infringement court may validly pass upon the right or validity of registration pursuant to Section 161 of the IP Code, which holds that:

The invalidation of a trademark registration and an action for infringement are independent proceedings, and a pending cancellation case is not a prejudicial question that must be resolved before an infringement action can be decided. However, a defendant cannot file a cancellation case against the complainant of a pending infringement case. Instead, it may raise the registration's invalidity as a defence in the infringement case and pray for its cancellation.

8.3 Are there any grounds on which an otherwise valid trademark may be deemed unenforceable against a defendant?

Under Section 159.1 of the IP Code, a valid trademark registration has no effect against any person that used its own mark in good faith for its business or enterprise before the filing date or priority date of the registered mark. In effect, the marks may co-exist and infringement will not lie against the prior user in good faith; although its right cannot be transferred or assigned apart from the enterprise or business in which the mark was used. Section 131.3 adds that for marks claiming priority right, the registration of such marks in the Philippines will not entitle the registrant to sue for acts committed prior to the registration date.

In addition, under Section 148, the registration of a mark cannot prevent third parties from using in good faith their names, addresses, pseudonyms, geographical names or exact indications concerning the kind, quality, quantity, destination, value, place of origin or time of production or of supply of their goods or services, as long as such use (1) is for identification or information only; and (2) cannot mislead the public as to the source of the goods or services.

9 Settlement

9.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

Pursuant to Philippine Intellectual Property Office (IPOPHL) Memorandum Circular 2018-008, all administrative complaints for IP rights violations are subject to mandatory mediation. Through IPOPHL Memorandum Circular 2019-006, IPOPHL also seeks to extend its mediation services outside of litigation to resolve IP-related disputes. This initiative aims to provide parties with an avenue for resolving disputes without engaging in protracted and costly litigation.

Meanwhile, the Revised Rules of Procedure for IP Rights Cases mandates court-annexed mediation for civil cases and for the civil aspects of criminal cases. These measures align with IPOPHL's goal of promoting alternative dispute resolution to (1) decongest the courts, (2) promote the efficient and amicable settlements of disputes.

9.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

In administrative, civil and criminal infringement cases, the proceedings are automatically stayed during the period of mandatory mediation, eliminating the need for the parties to request the suspension of the adjudication proceedings. If a settlement is reached during the period granted by the Revised Rules of Procedure for IP Rights Cases, the parties may submit the agreement to the court or administrative body for approval, which may then result in the discontinuation of the case. Outside the mandatory mediation period, however, the parties may continue to negotiate for settlement, but the adjudication of the cases will proceed without delay.

9.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

Once a case has been filed, it is necessary to report the results of settlement discussions to the relevant adjudicatory body for approval before the case may be resolved based on the parties' agreement.

Only the civil aspect of a criminal case can be settled. Thus, the criminal liability will not be extinguished regardless of the court's approval of the settlement on the civil aspect. In practice, however, if the public prosecutor approves the settlement on the civil aspect, the criminal case is usually dismissed and/or the accused is acquitted due to lack of evidence resulting from the non-participation of the private complainant, which serves as the main witness of the prosecution.

10 Court proceedings for infringement and validity

10.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

In the Philippines, court proceedings are generally public. Rule 135 of the Revised Rules of Court mandates that the sittings of all courts of justice be open to the public. However, a court may exclude the public in the interest of morality or decency, or for the protection of confidential information.

Similarly, court records are considered public documents and are available for inspection by any interested person during proper business hours, under the supervision of the court clerk. However, access may be restricted or limited in the interest of morality or decency, or for the protection of confidential information, including sensitive personal information of individuals.

10.2 Can a trademark owner sue for infringement and passing off in the same action?

The owner of a registered mark in the Philippines may claim both trademark infringement and unfair competition in one action since these causes of action, although distinct, often arise from the same set of facts – particularly where there is both: (1) unauthorized use of a registered trademark; and (2) an intent to deceive the public into believing that the goods or services originate from the trademark owner.

Courts may examine both claims simultaneously, provided that the legal requirements for each are satisfied.

10.3 Procedurally, what are the main steps in trademark infringement proceedings in your jurisdiction? Is validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

In administrative proceedings, after filing the complaint: (1) the case is raffled to a hearing officer; and (2) a summons or notice to answer is issued.

Once an answer has been filed, the case is referred to mediation. If mediation fails, the case proceeds to adjudication, which includes a pre-trial conference and successive hearings for evidence reception before judgment.

Civil cases begin with the filing of a verified complaint and supporting judicial affidavits with the appropriate special commercial court. A summons is issued to the defendant, which must file an answer. Following the answer, pre-trial is conducted and mediation is attempted. If mediation fails, the case proceeds to trial, after which judgment is issued.

For criminal cases, a complaint is filed with the Office of the Prosecutor for the conduct of a preliminary investigation. If sufficient grounds are found, the information specifying the criminal charges is filed by the prosecutor in court. The judge then evaluates probable cause, issues a warrant if needed, and sets arraignment and pre-trial.

After pre-trial, the case is referred to mediation for its civil aspect, followed by the trial. After trial, judgment will be rendered based on the evidence presented.

In any action to enforce the rights to a registered mark, the court or administrative agency concerned may also determine the validity or right to registration of any party's mark. The issue of validity can also be raised separately in a cancellation proceeding by filing a verified petition for cancellation with the Philippine Intellectual Property Office (IPOPHL) Bureau of Legal Affairs (BLA). However, the filing of a suit to enforce a registered mark precludes the subsequent filing of a petition to cancel the same mark.

10.4 What is the typical timeframe for trademark infringement proceedings? Is a fast-track procedure available? If separate trademark validity proceedings are available, what is the typical timeframe for those proceedings?

An administrative IP rights violation (IPV) case can take one to three years from filing to decision, while civil infringement cases may take two to five years. Criminal infringement cases take the longest due to the additional step of a preliminary investigation before a case is actually filed with the courts. It may take several months to years to progress from preliminary investigation to trial, and an additional two to four years from trial to judgement.

Cancellation cases (inter partes cases (IPCs)) with the BLA are usually faster, taking one to two years from filing to decision.

However, the finality of decisions issued in any of the foregoing cases may be further delayed by the multi-tier appeal system. Notably, IPC and IPV cases have a longer appeal route due to the availability of appeals at IPOPHL. Nonetheless, an appeal against a decision of the IPOPHL Office of the Director General to the Court of Appeals will not stay the award, judgment, final order or resolution to be reviewed unless the Court of Appeals directs otherwise.

10.5 Can the court issue extraterritorial injunctions, whether interim or permanent?

The jurisdiction of the Philippine courts is primarily limited to the Philippines. Therefore, they cannot issue injunctions with extraterritorial effect. Enforcing injunctions beyond Philippine borders involves complex issues of international law and cooperation.

10.6 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

The decisions of national and foreign courts or bodies can influence the Philippine courts, particularly where they involve international treaties or agreements ratified by the Philippines, which are considered part of the law of the land. Although foreign court decisions are not binding, they may be accorded persuasive effect.

Nonetheless, the Philippines subscribes to the international legal principle that final judgments or orders of foreign courts of competent jurisdiction are reciprocally respected and enforced subject to certain conditions. Such final judgments or orders create a right of action which may be enforced by the Philippine courts through an action for enforcement under Section 48 of Rule 39 of the Rules of Court. They are deemed conclusive upon the title to a specific thing or presumptive evidence of a right between the parties and their successors in interest. Thus, the action to enforce them can be challenged only on limited grounds of:

• lack of jurisdiction;
• absence of notice to a party;
• collusion;
• fraud; or
• a clear mistake in law or fact.

11 Remedies

11.1 What remedies for infringement are available to a trademark owner in your jurisdiction?

In general, the complainant in a successful infringement case may:

• recover damages and costs, including attorneys' fees; and
• obtain:
• • injunctive relief, preliminary or permanent;
  • the impoundment of documents evidencing sales while the case is pending; and
  • the disposal or destruction of the infringing goods.

Administrative sanctions include:

• the issuance of a cease-and-desist order;
• the condemnation or seizure of the infringing goods and the forfeiture of paraphernalia and all properties used in the infringement;
• the imposition of fines;
• the cancellation, suspension or withholding of any permit, licence or registration granted by the Philippine Intellectual Property Office; and
• censure.

Criminal infringement is punishable by imprisonment from two to five years and a fine ranging from PHP 50,000 to PHP 200,000, separate from civil liability for damages.

11.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

Exemplary or punitive damages may be claimed where the infringement was committed in a fraudulent or wilful manner. A claim for exemplary damages must be supported by convincing evidence of the acts constituting the fraud involved in the infringement.

11.3 What factors will the courts consider when deciding on the quantum of damages?

The measure of the damages suffered will be either: (1) the reasonable profits which the complaining party would have made had the defendant not infringed its rights; or (2) the profits which the defendant actually made out of the infringement.

If such measure of damages cannot be readily determined with reasonable certainty, the court may award damages as a reasonable percentage based on (1) the defendant's gross sales, or (2) the value of the services in connection with which the mark was used.

Where actual intent to mislead the public or to defraud the complainant is shown, the court may double the damages awarded.

12 Appeals

12.1 Can the decision of a first-instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

Decisions of the director of the Bureau of Legal Affairs in administrative IP rights violation cases can be appealed to the Philippine Intellectual Property Office (IPOPHL) Office of the Director General (ODG) within 30 days of notice. Both errors of law and fact may be raised on appeal.

The decision of the ODG may be appealed to the Court of Appeals through a petition for review under Rule 43 of the Rules of Court within 15 days of notice. Questions of both fact and law may be raised on appeal.

In civil cases for infringement, all decisions and final orders of the special commercial court (SCC) must be appealed within 15 days of notice to the Court of Appeals through a petition for review under Rule 43 of the Rules of Court, raising questions of both fact and law.

In criminal cases, any party may appeal against a judgment or final order, unless the accused will be placed in double jeopardy. The appeal is taken by filing a notice of appeal with the SCC within 15 calendar days of promulgation of judgment or notice. The court clerk of the SCC will then forward the complete record of the case to the Court of Appeals.

The decision of the Court of Appeals may be appealed to the Supreme Court by filing a petition for review on certiorari under Rule 45 of the Rules of Court. The petition will raise only questions of law.

12.2 What is the average time for each level of appeal in your jurisdiction?

On average, it takes the ODG between two and three years to resolve appealed cases. Further appeals to the Court of Appeals and later to the Supreme Court usually take between three and five additional years to be finally resolved.

13 Costs, fees and funding

13.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

When litigating trademark disputes before the Philippine Intellectual Property Office, the filing fees depend on:

• the type of case; and
• the size of the entity involved.

For IP rights violations such as trademark infringement, the base filing fee is:

• PHP 15,000 for small entities or PHP 19,200 for large entities; and
• one-tenth of 1% of the damages claimed in excess of PHP 500,000.

Additional costs apply for preliminary remedies such as injunctions and attachments, as well as legal representation fees.

The filing of a civil action for violation of IP laws requires the payment of filing and docket fees equivalent to approximately 2% of the total amount of the claims – for example:

• actual damages;
• consequential damages;
• moral damages;
• exemplary damages;
• attorneys' fees; and
• the expenses of the litigation.

A criminal action for violation of IP laws may be instituted by paying PHP 5,000 as a basic filing fee.

Apart from the filing fees, other litigation costs include attorneys' legal representation fees and expenses related to evidence gathering, which can vary depending on the complexity of the case. Additional filing fees are incurred if the decision is appealed to higher bodies and/or courts.

Attorneys' fees are generally not recoverable as damages because of the policy that no premium should be placed on the right to litigate. They are not automatically awarded to the winning party. Under Article 2208 of the Civil Code, the court has discretion to award attorneys' fees based on factual, legal and equitable justifications. The court must state the reason for awarding attorneys' fees in the body of its decision, ensuring transparency and fairness.

13.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

Philippine law and jurisprudence generally recognise contingency fee agreements as valid and binding. Under Philippine law:

• such agreements must be in the form of an express written contract; and
• the amount or fixed percentage:
• • must be reasonable depending on the circumstances; and
  • is subject to the supervision of the courts.

13.3 Is third-party litigation funding permitted in your jurisdiction?

Third-party litigation funding, or the involvement of an outsider in financing a lawsuit, is not explicitly prohibited in the Philippines.

However, certain restrictions apply if the handling lawyer finances the litigation on behalf of a client. Jurisprudence recognises that a lawyer may, in good faith, advance litigation expenses, subject to reimbursement. However, the Supreme Court has consistently invalidated champertous agreements which involve elements of profiteering or an improper division of the potential proceeds from the case. Such arrangements are closely scrutinised in particular where they are grossly disadvantageous to the litigant – for example, where:

• the third party is entitled to purchase a portion of the property in dispute; or
• the financier's share of the proceeds is unspecified.

(See RODCO Consultancy and Maritime Services Corporation v Ross, GR 259832, 6 November 2023.)

If a contract is found to be champertous, the lawyer involved may face disciplinary action for violating the Code of Professional Responsibility and the Lawyer's Oath. Accordingly, extreme caution must be exercised when engaging in third-party litigation funding to ensure compliance with ethical standards and avoid legal risks.

14 Protection of unregistered marks

14.1 Is any protection available for unregistered marks in your jurisdiction?

One key protective measure is Section 159.1 of the IP Code, which ensures that a good-faith prior user of an unregistered mark will not be held liable for infringement even as against the owner of an identical or similar registered mark.

On the other hand, recent jurisprudence has reversed earlier decisions which held that prior use trumps prior registration in good faith as a means of acquiring ownership over a mark. However, this applies only to marks that were first used and/or registered under the effectivity of the IP Code on 1 January 1998 (Zuneca Pharmaceutical v Natrapharm, Inc, GR 211850, 8 September 2020) Thus, those first used under the old Trademark Law may still rely on good-faith prior use to claim ownership, and such right shall be recognised and respected under Section 236 of the IP Code.

Protection is afforded to unregistered marks primarily through actions for unfair competition. Under Section 168 of the IP Code, unregistered marks can be protected against unfair competition if it can be proven that:

• the mark benefits from goodwill; and
• the public is likely to be misled by another party's use of a similar mark.

Relatedly, the first-to-file or first-to-register rule under the IP Code:

• presumes good faith on the part of the applicant/registrant; and
• does not preclude a good-faith prior user of an unregistered mark from opposing or cancelling a bad-faith application or registration.

Finally, Section 165.2 of the IP Code states that trade names will be protected, even prior to or without registration, against any unlawful act committed by third parties, notwithstanding any laws or regulations providing for any obligation to register the same.

14.2 Under what circumstances may foreign trademarks not registered in your jurisdiction be enforced?

The protections and remedies available for un-registered marks in general also apply to unregistered foreign marks.

In addition, if the unregistered mark is a well-known mark, Section 123.1(e) of the IP Code prevents the registration of similar or identical junior marks for identical or similar goods/services. The owner of the well-known mark may oppose, cancel or sue for unfair competition, even if the foreign mark is unregistered.

15 Trends and predictions

15.1 How would you describe the current trademark litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

There seems to be a more aggressive push towards enhancing awareness while strengthening and streamlining the enforcement of IP rights, as evidenced by several pending bills amending the IP Code and recent issuances of the Philippine Intellectual Property Office (IPOPHL).

House Bill (HB) 7600, which seeks to give IPOPHL additional powers to prevent the entry and circulation of counterfeit or pirated goods or content in the market, was approved by the House of Representatives on its third reading on 22 May 2023. On 24 May 2023, the bill was transmitted to the Senate and referred to the Committee on Trade, Commerce and Entrepreneurship, where it is currently pending. Among other things, HB 7600 seeks to:

• strengthen the enforcement functions of the IPOPHL;
• adapt the IP Code to recent advancements in technology;
• define, prevent and penalise piracy and counterfeiting of goods;
• provide preventive action, takedown procedures and site blocking measures against online infringement; and
• increase the range of administrative fines that the Bureau of Legal Affairs can impose.

IPOPHL has also been pushing to increase the penalties provided in the IP Code to mitigate piracy and counterfeiting through Senate Bills 2150, 2385 and 2326.

Another amendment being lobbied for is the institutionalisation of the National Committee on IP Rights (NCIPR), which is the interagency body responsible for drafting and implementing policies to strengthen the protection and enforcement of IP rights in the country. Senate Bill 2326 expands the existing list of member agencies within the NCIPR to include:

• the National Commission on Indigenous Peoples;
• the Office of the Special Envoy for Transnational Crimes;
• such other agencies as may be called upon; and
• a representative from the private sector.

In the meantime, IPOPHL has actively issued several memorandum circulars pursuant to its goals of streamlining its processes and increasing the relevance of intellectual property to the national economy.

The Rules and Regulations on Administrative Complaints for Violation of Laws involving IP Rights now mandate filing and service by email, allow for online videoconferencing, and provide for the automatic vacation of a temporary restraining order in case of non-resolution.

These revisions are anticipated to speed up the disposition of cases, thereby prompting a shift towards administrative litigation rather than the institution of civil and criminal cases.

IPOPHL has also recently released the latest draft of its Rules for the Declaration and Creation of a Register for Well-Known Marks, which will allow the Bureau of Trademarks to declare a mark as well known in an ex parte proceeding, with the goal of giving locally famous marks an opportunity to compete with foreign brands.

16 Tips and traps

16.1 What would be your recommendations to parties facing trademark litigation in your jurisdiction and what potential pitfalls would you highlight?

Parties should be aware that the substantive and remedial laws applicable to trademark litigation in the Philippines can change quickly. Several recent cases have modified and even overturned key principles and doctrines in trademark litigation, such as the use of the holistic test in determining confusing similarity between marks, and the concept of prior use as a means of acquiring ownership over a mark even under the IP Code.

Meanwhile, the Supreme Court has issued new guidelines on mandatory electronic filing and service in civil, criminal, and special proceedings before the first-level, second-level and appellate courts, and the Supreme Court.

The Revised Rules of Procedure for IP Rights Cases also mandate electronic filing and service. Parties involved in trademark suits should keep abreast of the many new procedural requirements to avoid prejudicing their cases based on technical grounds.

On a positive note, IP rights awareness in the Philippines is currently high. This has spurred online marketplace platforms to create and strictly enforce their own IP policies, supplemented by government regulations targeting e-commerce. Consequently, the submission of complaints directly to the relevant platforms is now a viable solution to quickly remove infringing goods and/or content from the online market. Trademark owners thus have more options to protect their marks without having to resort to lengthy and expensive litigation.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.