To facilitate and expedite the resolution of IP rights cases in the Philippines, the Supreme Court of the Philippines recently promulgated the 2020 Revised Rules of Procedure for Intellectual Property Rights Cases ("Revised Rules"), which shall take effect on 16 November 2020. The Revised Rules took into account the 2019 Amendments to the Revised Rules of Civil Procedure, the 2019 Amendments to the Revised Rules on Evidence, and the Revised Guidelines for Continuous Trial of Criminal Cases. The salient portions of the Revised Rules are as follows:

  • The Supreme Court has increased the number of Special Commercial Courts that have the authority to act on applications for the issuance of writs of search and seizure in civil actions for violations of intellectual property rights, which writs shall be enforceable nationwide. Aside from the Special Commercial Courts in the City of Manila, Quezon City, Makati City, and Pasig City, the Special Commercial Courts in Baguio City, Iloilo City, Cebu City, Cagayan de Oro City, and Davao City can now issue writs of search and seizure that can be enforced nationwide.
  • The complaint must now include the evidence of the complainant. Before, only a concise statement of the ultimate facts constituting the cause of action and the reliefs sought were required.
  • Similar to the complaint, the answer must now include the evidence of the defendant.
  • Judicial affidavits are now required in lieu of affidavits, which shall constitute the direct testimonies of the witnesses.
  • The defendant now has thirty (30) calendar days from the service of summons to file his or her answer to the complaint. Before, the defendant only had fifteen (15) days from the service of summons to file his or her answer.
  • The answer to the counterclaims or cross-claims shall now be filed and served within fifteen (15) calendar days from the service of the answer in which they are pleaded. Before, the period to file and serve the answer was only ten (10) days.
  • A motion to dismiss can now be filed based on the following grounds:
    1. the court has no jurisdiction over the subject matter;
    2. there is another action pending between the same parties for the same cause; or
    3. the cause of action is barred by a prior judgment or by the statute of limitations.
  • A reply can now be filed when an actionable document is attached to the answer.
  • A motion for postponement can now be filed if it is based on acts of God, force majeure, or physical inability of the witness to appear and testify.
  • The Revised Rules now allows for substituted services of summons, orders, and other court processes. Thus, if, for justifiable causes, the defendant cannot be served personally after at least three (3) attempts on two (2) different dates, service may be effected by:
    1. leaving copies of the summons at the defendant's residence to a person at least eighteen (18) years of age and of sufficient discretion residing therein;
    2. leaving copies of the summons at the defendant's office or regular place of business with some competent person in charge thereof;
    3. leaving copies of the summons, if refused entry upon making his or her authority and purpose known, with any of the officers of the homeowners' association or condominium corporation, or its chief security officer in charge of the community or the building where the defendant may be found; or
    4. sending an electronic mail to the defendant's electronic mail address, if allowed by the court.
  • Service of summons to a foreign private juridical entity that is not registered in the Philippines, or has no resident agent but has transacted or is doing business in the Philippines may, with leave of court, be effected outside of the Philippines by electronic means with the prescribed proof of service.
  • Extraterritorial service of summons, as provided for in international conventions to which the Philippines is a party, is now allowed.
  • For depositions, the court may allow a deponent to give his or her deposition through electronic means, such as teleconferencing or videoconferencing.
  • Court-Annexed Mediation (CAM) and Judicial Dispute Resolution (JDR) now take place after the termination of the pre-trial.
  • Where the case is submitted for decision immediately after pre-trial, the court shall now render judgment within sixty (60) calendar days after pre-trial. Before, the court only had forty-five (45) days to render such judgment.
  • Where the parties are required to submit position papers, the court shall now render judgment within sixty (60) calendar days from receipt of the last position paper or upon the expiration of the period to file the same. Before, the court only had forty-five (45) days to render such judgment.
  • Where a clarification hearing is conducted, the court shall now render judgment within sixty (60) calendar days from the termination of the last clarification hearing. Before, the court only had forty-five (45) days to render such judgment.
  • The following are now prohibited motions in criminal cases:
    • Motion for judicial determination of probable cause;
    • Unmeritorious motion for reinvestigation of the prosecutor recommending the filing of information once the information has been filed before the court or if the motion is filed without prior leave of court;
    • Motion for bill of particulars that does not conform to Section 9, Rule 116 of the Rules of Court; and
    • Motion to suspend the arraignment based on grounds not stated under Section 11, Rule 116 of the Rules of Court.
  • Once the court has acquired jurisdiction over the person of the accused, the arraignment of the accused and the pre-trial are now set simultaneously within ten (10) calendar days from the date of the court's receipt of the case for a detained accused, and within thirty (30) calendar days from the date the court acquires jurisdiction over a non-detained accused, unless a shorter period is provided by special law or a Supreme Court circular. In the old rules, the pre-trial was scheduled after the arraignment.
  • An electronic document is admissible in evidence if it complies with the rules on admissibility under the Rules on Electronic Evidence.
  • Aside from ordering the creation of a committee of three (3) experts in patent infringement cases, the court can now appoint one (1) expert to provide advice on the technical aspects of the patent.
  • Rule 17 (evidence in patent cases) shall apply to infringement cases involving utility models and industrial designs with corresponding registrability reports.
  • The following shall be accepted as evidence of actual use of the mark in trademark infringement and unfair competition cases:
    • Labels of the mark as used;
    • Downloaded pages from the website of the applicant or registrant clearly showing that the goods are being sold or the services are being rendered in the Philippines;
    • Photographs, including digital photographs printed on ordinary paper, of goods bearing the marks as how they are actually used or of the stamped or marked container of goods and of the establishment/s where the services are being rendered;
    • Brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;
    • For online sale, receipts of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines or that the transaction took place in the Philippines;
    • Copies of contracts for services showing the use of the mark.
    • Computer printouts of the drawing or reproduction of marks will not be accepted as evidence of use; and
    • Such other proof that the court may deem acceptable.
  • A market survey can be recognized as evidence to prove the following:
    • the primary significance of a mark to the relevant public, including its distinctiveness, its descriptive or generic status, its strength or well-known status; and/or
    • likelihood of confusion.
  • Aside from filing a motion for the destruction of the seized infringing goods, the right-holder can now file a motion for the disposal of the seized infringing goods. There is disposal when the infringing goods are effectively prohibited from re-entry into the channels of commerce but may be reused for some other lawful purpose. However, hazardous goods, related objects, and devices should only be subject to destruction.
  • The court can now issue an order disposing of the seized infringing goods, related objects, or devices by way of donation for humanitarian use, subject to the following conditions:
    1. The infringing goods will not cause harm to the donees;
    2. All infringing marks or features identifying the complainant, plaintiff, or right-holder as the source of the goods shall be removed to the most possible extent; and
    3. The government entities or charitable institutions to which the infringing goods are to be donated must be properly identified.

The promulgation of the Revised Rules is a step towards progress as the Supreme Court finds ways to expedite the resolution of IPR cases and to effectively unclog the heavy dockets of the courts. It is also noteworthy that the Supreme Court is embracing new technology and is coping with the changing times. This is a welcome development in the landscape of protecting IP rights in the Philippines, especially in the midst of a pandemic.

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.