Philippines comes up with new IP Enforcement Rules

Philippines comes up with new IP Enforcement Rules

Expanding the power of the Intellectual Property Rights Enforcement Office (IEO), the Intellectual Property Office of the Philippines (IPOPHL) comes up with new rules on 3 March 2021, enabling it to more effectively curb online counterfeiting and piracy.

The "Revised Rules of Procedure on Administrative Enforcement Intellectual (IP) Rights" (Rules), has sought to increase the ambit of the enforcement function of IEO including the electronic, digital, or online channels in the IEO's scope for exercising the enforcement function. It also touches upon the aspect of counterfeiting and piracy issue expanding the IEO's action in response to any complaint. It also shortens the period for complying with the order of the IEO decision to merely 72 hours from 60 days.

The Rules states, "The exercise of IPOPHL's enforcement powers shall cover manufacturing, production, importation, exportation, distribution, trading, displaying, broadcasting, streaming and offering for sale, including other preparatory steps necessary to carry out the sale of counterfeit and pirated goods or contents to the public, including electronic, digital or online means provided that there is no pending case before any office, tribunal, quasi-judicial body, or court involving the same issue/s or subject matter."

While dealing with the counterfeiting and piracy actions, few actions can be carried out as per the order from the IEO:

• Request removal of counterfeit goods or pirated goods or content, including advertisements in relation to such goods or content, or the blocking of access thereto, in coordination with the appropriate agency, body, or intermediary service provide;

• Give cease-and-desist order;

• Order the removal of counterfeit and pirated goods or content from physical establishments; and

• Endorse and refer to other government offices the cancellation of permits and licenses, such as business permits.

For monitoring both physical and online marketplace, Rules provide that IEO can conduct motu proprio. Rowel S. Barba, Director General of IPOPHL said, "Motu proprio monitoring allows the IEO to take on a more proactive approach and help brand owners screen markets of IP violating listings, with prospects of reporting possible infringements to concerned IP right holders for their validation and appropriate action."

Commenting on this, Ann N. Edison, IEO's officer in charge Director, said, "The new rules of the IEO will help in weeding out IP rights infringers and safeguarding the public, whether they be brand owners or consumers. We believe with these new powers, IEO can better intercept counterfeiting and piracy, especially in the online space, and reduce the economic loss and reputational damage IP right holders, and consequently, the Philippine government, suffer from infringements,"

With the fast pace of piracy, the enforcement action being taken by the IEO should align with its fast pace. Commenting on this, an official for Enforcement said, "With the IP Code amendments we are requesting in Congress, we will have greater say in shutting IP infringing sites. Once a take-down order is served, the National Telecommunications Commission will automatically and immediately enforce it, without further evaluation as their systems can trust the expertise and competence of IPOPHL."