WORLD TRADE
ORGANIZATIONIP/N/6/PHL/1
23 April 2001
(01-2010)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
CHECKLIST OF ISSUES ON ENFORCEMENT1
Responses from the Philippines
Civil and Administrative Procedures and Remedies
(a) Civil judicial procedures and remedies
1. Specify the courts which have jurisdiction over IPR infringement cases.
Regional Trial Courts have original jurisdiction to hear and decide cases involving violations
of intellectual property rights regardless of the amount involved.2  Twenty-seven of these courts are
specially designated to hear such cases.3
2. Which persons have standing to assert IPRs? How may they be represented? Are there
requirements for mandatory personal appearances before the court by the right holder?
Natural and juridical persons who are owners or holders of intellectual property rights,
including their assigns and successors-in-interests have standing to assert said rights.  They may be
represented either by themselves or by counsel authorised to practice law in the Philippines.4
The right holder must personally appear during the pre-trial conference, but may be
represented by a counsel who must be authorised in writing, either by a power of attorney in case of a
natural person or a corporate secretary’s certificate in case of a juridical person, to compromise or
enter into stipulations and admissions.5
3. What authority do the judicial authorities h ave to order, at the request of an opposing
party, a party to a proceeding to produc e evidence that lies within its control?
Judicial authorities may order, at the request of an opposing party, the issuance of subpoena
ad testificandum requiring the other party to appear and testify in court, and/or subpoena  duces tecum
requiring the other party to produce and submit documentary evidence which lies within his control.
The court, however, may not so order where the evidence is incriminatory, confidential, privileged,
immaterial or irrelevant.6
                                                     
1 Document IP/C/5.
2 Supreme Court Administrative Order N° 104-96  (1996).
3 Supreme Court Administrative Order N° 113-95  (1995).
4 Revised Rules of Civil Procedure (1997), Rule 3, Sec. 1.
5 Revised Rules of Civil Procedure (1997), Rule 18, Sec. 4.
6 Revised Rules of Civil Procedure (1997), Rule 21, Sec. 1 and Rule 23, Sec. 2.IP/N/6/PHL/1
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The court may order the issuance of a subpoena  at the request of a party that the testimony of
the other party be taken by deposition upon oral examination or written interrogatories.7  T h e
deponent may be examined regarding any matter that is  relevant to the action, including the existence,
nature, or location of any documents and identity of persons having knowledge of relevant facts.8
The Court may also issue an order for the production or inspection of documents or things
upon motion of any party.  The order may require the other party to produce and permit the inspection
and copying of any designated documents or papers in his possession that are not privileged and
which are material to the action.9
4. What means exist to identify and protect confidential information brought forward as
evidence?
Confidential information introduced as evidence in the proceedings become part of the
records of the case and may be accessed by the public.  Judicial authorities, however, may prevent
disinterested parties from prying into court records if the purpose is merely to satisfy curiosity.10
5. Describe the remedies that may be ordered by the judicial authorities and criteria,
legislative or jurisprudential, for their use ;
- injunctions;
- damages, including recovery of profits, and expenses, including attorney's fees;- destruction or other disposal of infringing goods and materials/implements for
their production;
- any other remedies.
Judicial authorities may order the following remedies in cases involving violations of
intellectual property rights:
Damages
In patent infringement, the court may award damages not exceeding three (3) times the
amount of actual damages sustained. If damages cannot be readily ascertained, the court may award
damages equivalent to reasonable royalty.11
In trademark infringement, the court may award damages equivalent to the reasonable profit,
or the profit which defendant actually made out of the infringement.  If damages cannot be readily
ascertained, the court may award damages equivalent to a percentage of the gross sales of the
defendant.  Damages may be doubled if there is actual intent to mislead the public or defraudcomplainant.
12
In copyright infringement, the court may award actual damages sustained including the profits
which the infringer may have made due to such infringement, or such damages as may be just under
the circumstances.13
                                                     
7 Revised Rules of Civil Procedure (1997), Rule 23, Sec. 1.
8 Revised Rules of Civil Procedures, Rule 23, Sec. 2.
9 Revised Rules of Civil Procedure (1997), Rule 27, Sec. 1.
10 Rules of Court, Rule 132, Section 19, 20 (a) and Rule 135(2).
11 Rep. Act N° 8293, Sec. 76.4.
12 Rep. Act N° 8293, Secs. 156.1 & 156.
13 Rep. Act N° 8293, Sec. 216(b).IP/N/6/PHL/1
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The court may also award attorney’s fees and other forms of damages such as moral, nominal,
temperate, liquidated and exemplary damages arising from the defendant’s wrongful acts.14
Injunction
The court may order an injunction restraining infringement of intellectual property rights.15
Injunction may be granted upon a showing that the invasion of the right is material, the right
of applicant is clear, and there is an urgent neces sity for the writ to prevent serious damage to the
applicant.16 
The injunction may be refused if the court finds that the complaint is insufficient.  It may also
be dissolved if the defendant files a counter bond and presents evidence that he would sustain great
damage. Plaintiff may be compensated for damages he may suffer if the injunction is dissolved.17
Destruction of infringing goods
The court may order that the infringing goods and materials be disposed of outside the
channels of commerce to avoid causing harm to th e right holder, or destroyed without compensation.18
Other remedies
In trademark infringement, the court may impound sales invoices and other documents
evidencing sales.19
In copyright infringement, the court shall have the power to order the seizure and impounding
of any article which may serve as evidence in court proceedings.20
6. In what circumstances, if any, do judicial authorities have the authority to order the
infringer to inform the right holder of the identity of third persons involved in the
production and distribution of the goods of services found to be infringing and of their
channels of distribution?
Courts have the inherent power to compel obedience to their orders and processes, and to
control conduct of persons connected with a case.  In furtherance of justice, they may ask clarificatory
questions or require the infringer to give information as to the identity of contributory infringers who
shall be jointly and severally liable with the infringer.21
7. Describe provisions relating to the indemnification of defendants wrongfully enjoined.
To what extent are public authorities and/or officials liable in such a situation and what
"remedial measures" are applicable to them?
A defendant wrongfully enjoined or restrained may recover damages from the applicant who
will execute a bond to the effect that he will pay the defendant all damages the latter may sustain by
                                                     
14 Rep. Act N° 8293, Secs. 216(e) & Sec. 76.2;  Rep. Act N° 386, Articles 2216-2235.
15 Rep. Act N° 8293, Secs. 216(a), 156.4 & 76. 2.
16 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 3.
17 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 4.
18 Rep. Act N° 8293, Secs. 76.5, 157 & 216(d).
19 Rep. Act N° 8293, Sec. 156.2.
20 Rep. Act N° 8293, Sec. 216.
21 Rules of Court, Rule 135 (5);  Rep. Act 8293, Sec. 76.6.IP/N/6/PHL/1
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reason of the injunction or temporary restraining order if the court should finally decide that the
applicant is not entitled thereto.22
Public authorities and/or officials are not liable for acts done in good faith in the performance
of their duties.  But they may be held liable for wilful or negligent acts done in a manner contrary tolaw which may subject them to criminal and administrative proceedings such as graft cases before the
Ombudsman,
23 and/or suspension or disbarment in the case of lawyers.24  The party wrongfully
enjoined, may also move for the inhibition of the judge who rendered the order.
8. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
Length
The Regional Trial Courts have been directed to give priority to cases involving violations of
intellectual property rights and are required to dispose of said cases within sixty (60) days.  The
parties’ choice of proceedings, complexity or novelty of the issues, volume of evidence, and otherattendant factors may shorten or lengthen the proceedings.
Cost
Filing fees are based on the amount of claims , and range from a minimum of 0.5% of the
claims and upwards.  Other costs of litigation in cluding lawyer’s fees may vary depending on the
agreement between a party and counsel.25
Data
There is no available statistical data on the actual length and cost of proceedings.
(b) Administrative procedures and remedies
9. Reply to the above questions in relation to any administrative procedures on the merits
and remedies that may result from these procedures.
9.1 Specify the administrative bodies which have jurisdiction over IPR infringement cases.
The Intellectual Property Office (IP Office) exercises original jurisdiction in administrative
cases involving violation of intellectual property rights where damage claimed is not less than two
hundred thousand Pesos (Php200,000.00).  Its decisions are appealable to the Court of Appeals andthe Supreme Court.  The Department of Trade and Industry (DTI) has jurisdiction over complaints
regarding violations of intellectual property rights irrespective of the total amount of damages
claimed, or if no damages are claimed. Decisions  of the Secretary of Trade and Industry are
appealable to the Office of the President.  A complainant before the IP Office must state that he has
no other similar pending administrative action in any other tribunal, agency or quasi-judicial body.
26
                                                     
22 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 4(b).
23 Rep. Act N° 3019.
24 Rules of Court, Rule 139.
25 Supreme Court Administrative Matter N° 00-2-01.
26Rep. Act N° 8293, Sec. 10.2(a);  IRR on Administrative Complaints, Rule 2, Sec. 2; Rule 14
Sec. 1(b);  Dept. Administrative Order N° 01 (2000).IP/N/6/PHL/1
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The IP Office exercises original jurisdiction to  resolve disputes regarding the terms of a
license of an author’s right to public performance.  The decision of the IP Office is appealable to the
Secretary of Trade and Industry.27
      The Videogram Regulatory Board (VRB) has jurisdiction over violations of law involvingvideograms.
28
9.2 Which persons have standing to assert IPRs?  How may they be represented?  Are there
requirements for mandatory personal appearances before the court by the right holder?
Natural and juridical persons who are owners or holders of intellectual property rights,
including their heirs and successors-in-interests have standing to assert said rights.  They may berepresented either by themselves or by counsel authorised to practice law in the Philippines.
29
The personal appearance of the parties are required only during the pre-trial conference, but
their presence may be dispensed with upon showing of a valid cause or if their counsel or
representative is fully authorized through a power of attorney or corporate authorization.30
9.3 What authority do the administrative author ities have to order, at the request of an
opposing party, a party to a proceeding to produce evidence which lies within its
control?
Administrative authorities may issue subpoena ad  testificandum  to compel attendance of
parties and witnesses.  Administrative officers of the IP Office and DTI have the authority to issue
subpoena  duces tecum  for the production of any books, papers, documents, correspondence and other
records which are material to the case.31  By leave of the hearing officer, a party may take the
deposition of any person under written interrogatories.32
9.4 What means exist to identify and protect confidential informaiton brought forward as
evidence?
The IP Code guarantees the confidentiality of records.  The Director of the Bureau of Legal
Affairs and other employees are strictly and absolutely forbidden to discuss the case or any phase
thereof with either counsel in the absence of the other or with any person not having any interest orlegal standing before the Bureau.
33  However, this rule must be understood in the light of the
constitutional provision recognising citizens’ right to information.  Thus, the public has the right to
access official records, documents and papers pertaining to official acts, transactions or decisions.34
9.5 Describe the remedies that may be ordered by the administrative authorities and
criteria, legislative or jurisprudential, for their use.
Administrative authorities may order the following remedies in cases involving violation of
intellectual property rights:
                                                     
27 Rep. Act N° 8293, Sec. 7.1.( c).
28 Pres. Decree N° 1987, Chapter IX,  Sec. 21A(2).
29 Rep. Act Nº 8293, Secs. 28, 147, 177, 180 & 193;  IRR on Administrative Complaints, Rule 2 Sec. 7.
30 Rep. Act Nº 8293, Sec. 10;  IRR on Administrative Complaints, Rule 2, Sec. 10 (f) & Sec. 12.
31 Rep. Act N° 8293, Sec. 10;  IRR on Administrative Complaints, Rule 3, Sec. 1;  Trade and Industry
Order N° 69 (1983), Rule XIII, Sec. 58 (3);  VRB Rules of Procedure, Rule VI, Sec. 2.
32 Rep. Act N° 8293, IRR on Administrative Complaints, Rule 8, Sec. 1.
33 IRR on Administrative Complaints, Rule 2, Sec. 7-
34 Constitution, Article III, Sec. 7.IP/N/6/PHL/1
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Attachment
The IP Office may grant preliminary attachment if there is sufficient cause for the adverse
party’s property to be attached as a security for the satisfaction of the judgment.35
Injunction
The IPO may grant a preliminary injunction to restrain an action or require the performance
of an action if there is an attempted injustice or violation of the rights of the applicant.  A final
injunction may be granted to have the acts complained of permanently enjoined.36
Preliminary order
The Adjudication Officer of the DTI may issue a preliminary order, to require a person to
refrain from, or perform, a particular act.37
Preventive measures
In order to prevent the disposition or tampering of evidence, the Secretary of DTI may order
the seizure of goods or paraphernalia and the padlocking of the building or warehouse where infringed
goods are stored.  He may also order the prevention of the departure from the country of therespondent and the vessel or aircraft used in the commission of the offence.
38
Other remedies
The Videogram Regulatory Board may impose a fine of not less than six thousand Pesos
(Php 6,000.00) but not more than one hundred thousand Pesos (Php 100,000.00) and a non-monetary
penalty consisting of closure, revocation of license or permit and confiscation of videograms involved
in the violation.39
The Director of the Bureau of  Legal Affairs of the IP Office and the Secretary of the DTI
may impose any of the following administrative penalties:
- cease and desist order;
- acceptance of voluntary compliance or discontinuance;
- condemnation or seizure of products subject of the offence;
- forfeiture of paraphernalia, real or personal properties;
- administrative fines;- cancellation of permits licenses or registration granted;
- withholding of any permit, license or registration being secured;
- damages;
- censure;
- other analogous penalties and sanctions.
40
                                                     
35 Rep. Act N° 8293, Sec. 10;  IRR on Administrative Complaints, Rule 4, Secs. 1 & 3.
36 Rep. Act. N° 8293, Sec. 10;  IRR on Administrative Complaints, Rule 5, Secs. 1 & 7.
37 Trade and Industry  Ministry Order N° 69,  Rule IX, Sec. 9 (a).
38 Exec. Order N° 913 (1983), Sec 11.
39 VRB Revised Rules and Regulations, Sec. 21.
40 Executive Order N° 913 (1983), Article III Sec. 6; Rep. Act N° 8293, Sec. 10.2(b).IP/N/6/PHL/1
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The Director of Legal Affairs shall have the power to hold and punish for contempt all those
who disregard orders or writs issued in the course of the proceedings.41
9.6 In what circumstances, if any, do administrative authorities have authority to order the
infringer to inform the right holder of the identity of third persons involved in theproduction and distribution of the goods or services found to be infringing and of their
channels of distribution?
Hearing officers of administrative agencies may in the course of the proceedings propound
clarificatory questions to witnesses during the perpetuation of their testimonies.  As such, they are not
prohibited to inquire into the identity of persons involved in the production and distribution of
infringing goods.
42
9.7 Describe provisions relating to the indemnification of defendants wrongfully enjoined.
To what extent are public authorities and/or officials liable in such situation and what
"remedial measures" are applicable to them?
Administrative rules of the IP Office and DTI require an applicant for an injunction to file a
bond to answer for damages that a person enjoined may sustain by reason of the injunction.43  Public
officers are not liable for acts done in good faith in the performance of their duties.  They shall be
criminally liable under the anti-graft laws for causing undue injury to parties through manifest
partiality, bad faith and gross inexcusable negligence.44  If the hearing officer is an attorney,
disbarment or suspension proceedings may be instituted against him.45
9.8 Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration proceedings and their cost.
Length
The actual length of the proceedings depends on the complexities of the issues raised and the
course of action that the litigants are inclined to pursue.
Intellectual Property Office
- Inter partes  proceedings
After the summon is sent, the respondent is  required to answer the petition within
fifteen (15) days. Upon joinder of the issues, a pre-trial conference shall be set within
two (2) months from receipt of the answer or other pleading.  During the hearing of
the case, the petitioner and respondent shall submit sworn statements of the witnesses
and other documentary evidence. Thereafter, they may present rebuttal and sur-
rebuttal evidence.  The parties shall be required to submit their memoranda within
one (1) month from receipt of the order of admissibility of exhibits.  Within one (1)
month from the date the case is submitted for decision, the hearing officer shallsubmit his report,  findings and draft decision to the Director for approval.
46
                                                     
41 Rep. Act N° 8293 10.2 (a), IRR on Administrative Complaints Rule 6.
42 Rules of Court, Rule 135 Sec. 5.
43 Rep. Act N° 8293, Secs. 10 & 10.2(a);  IRR on Administrative Complaints, Rule 5, Sec. 5;  Trade
and Industry  Ministry Order N° 69 (1983), Rule IX, Sec. 49(b).
44 Rep. Act. N° 3019, Sec. 3(e).
45 Rules of Court, Rule 139, Sec. 1.
46 IRR on Inter Partes  Proceedings,  Secs. 9, 10, 13, 22 & 23.IP/N/6/PHL/1
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- Administrative complaints
The respondent is required to answer the co mplaint within ten (10) days from receipt
of the summons.  Upon joinder of the issues, the notice of the pre-trial shall bedelivered within two (2) days from receipt of the answer or other pleading.  During
the trial of the case, the complainant and re spondent are each given thirty (30) days to
present evidence, and another thirty (30) days for rebuttal and sur-rebuttal evidence.
The hearing and reception of evidence, in the case of provisional remedies, shall be
terminated in thirty (30) days.  All cases or any incident thereof shall be decided or
resolved within thirty (30) days from submission for decision or resolution by the
hearing officer.
47
Department of Trade and Industry
The Secretary of the Department may provide for compulsory arbitration, conciliation and
mediation systems.  If there is a determination of a prima facie  case, the Head of Office may direct
that the complaint passes through mediation or elev ate the complaint to the chief hearing officer.  In
mediation proceedings, the mediation officer has fifteen (15) days within which to mediate the case.
If the case is set for formal hearing, the hearing officer within five (5) days from receipt of the
Answer, shall send a Notice of Pre-Formal Hearing.  During formal hearing, the complainant and
respondent shall present statements of witnesses and other documentary evidence.  Thereafter, theymay present rebuttal and sur-rebuttal evidence.  At the parties’ request and at the hearing officer’s
discretion, the parties may file their Memoranda within ten (10) days.  The case is decided thirty
(30) days from the time the formal hearing is terminated.
48
Cost
The cost of proceedings in the IP Office is based on a fee structure issued by the IP Office on
8 June 2000.  The filing fee for a complaint is eight thousand Pesos (Php 8,000.00) with an additional
fee of 1/10 of 1% of the damages claimed in excess of five hundred thousand Pesos (Php 500,000.00).
Other costs of litigation including lawyer’s fees may vary depending on the agreement
between a party and counsel.49
  
Data
There are no available statistical data on the actual length of the proceedings.
Provisional Measures
(a) Judicial measures
10. Describe the types of provisional measures that judicial authorities may order, and the
legal basis for such authority.
The provisional measures that judicial authorities may grant to a party are as follows:
                                                     
47 IRR on Administrative Complaints, Rule 2, Sec. 9 & 10, Rule 9,  Secs. 1  & 7.
48 Exec. Order N° 913, Art III, Secs. 4 & 5, Trade and  Industry Ministry Order N° 69 (1983), Rule III,
Sec. 17;  Rule IV Sec. 19;  Rule V, Sec. 33;  Rule VII, Sec. 42 (b).
49 Intellectual Property Office Fee Structure, Part III, Sec. 6.0.IP/N/6/PHL/1
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Preliminary attachment
At the commencement of the action or at anytime before entry of judgement, a plaintiff or any
proper party may have the property of the adverse party attached as security for the satisfaction of any
judgement that may be recovered.50
Attachment is considered an advance execution of judgement to prevent ineffective victory.
Preliminary injunction
This is an order granted at any stage of an action or proceeding prior to the judgement or final
order, requiring a party or a court, agency or a person to refrain from a particular act or acts. It mayalso require the performance of a particular act or acts, in which case it shall be known as preliminary
mandatory injunction.
51
Impounding and destruction
On the application of the complainant the court may impound during the pendency of the
action, sales invoices and other documents evidencing sales.52
Infringing goods are likewise subject to destruction without any compensation while the case
is pending.53
Seizure and impounding
The court is empowered to order the seizure and impounding of any article which may serve
as evidence in the court proceeding.54
11. In what circumstances may such measures be ordered inaudita altera  parte ?
Seizure and impounding
Whenever a party wants to prevent grave or irreparable damage or destruction of infringing
evidence, the court is empowered to order the seizure and impounding of any article that may serve as
evidence in the court proceedings.55
Preliminary attachment
The only requisites for the issuance of the writ of preliminary attachment are the affidavit and
bond of the applicant. No notice to the adverse party or hearing of the application is required as the
time that the hearing would entail could be enough to enable the defendant to abscond or dispose of
his property before the writ of preliminary attachment issues.56
                                                     
50 Rules of Civil Procedure (1997), Rule 57, Sec. 1.
51 Rules of Court, Rule 58, Sec. 1.
52 Rep. Act N° 8293, Secs. 156.2.
53 Rep. Act. N° 8293, Sec. 216.1 ( d ).
54 Rep. Act N° 8293, Sec. 216.2.
55 Rep. Act N° 8293, Secs. 156.2 & 216.2.
56 Revised Rules of Civil Procedure (1997), Rule 57, Sec. 3.IP/N/6/PHL/1
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Preliminary  injunction
A temporary restraining order can be issued ex parte  if the matter is of such extreme urgency
that grave injustice and irreparable injury will arise unless it is issued immediately.57
The requisites before an injunction can be issued are: (1) there must be a right to be protected;
and (2) the act against which injunction is to be directed is a violation of such right.58
12. Describe the main procedures for the init iation, ordering and maintenance in force of
provisional measures, in particular relevant time-limits and safeguards to protect the
legitimate interests of the defendant.
Preliminary attachment
Any party, not only the plaintiff, can avail himself of preliminary attachment by filing a
verified petition with the proper court. A defendant on his counterclaim, a co-party on his cross claim,
and a third party plaintiff on his third party claim may move for the issuance of the writ.
Attachment basically involves three stages: first, the court issues the order granting the
application; second, the writ issues pursuant to the order granting the same; and third, the writ is
implemented.  For the first two stages, it is not necessary that jurisdiction over the person of the
defendant should first be obtained.  However, once the implementation commences, the court musthave acquired jurisdiction over the defendant, otherwise it has no power and authority to act in any
manner against or bind the defendant.
59
Preliminary injunction
Any aggrieved party may apply for preliminary injunction by filing a verified complaint with
the proper court showing the grounds relied upon and filing of the required bond.60
 Temporary Restraining Order (TRO)61
The court may issue ex parte  a temporary restraining order to be
effective for a period of seventy-two  (72) hours from notice to theparty or person sought to be enjoined on matters of extreme urgency
that may result in a grave injustice and irreparable damage to applicant.
Within that period the court must conduct a hearing to determine the
propriety of the injunction.  Ordinarily, a preliminary injunction has a
lifetime of twenty (20) days, which cannot be issued in the absence ofa hearing.  The twenty day (20) period is inclusive of the seventy hours
(72) temporary restraining order.  However, if issued by the Court of
Appeals, the temporary restraining order shall be effective for sixty
(60) days from notice to the party or person sought to be enjoined.  A
restraining order issued by the Supreme Court shall be effective untilfurther orders.
                                                     
57 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 5.
58 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 3.
59 Cuartero vs. Court of Appeals, et. al,  212 SCRA 260.
60 Rule of Civil Procedure, Rule 58, Sec. 4.
61 Revised Rules of Civil Procedure (1997), Rule 58, Sec. 5.IP/N/6/PHL/1
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Procedures common to the above remedies
Both preliminary attachment and preliminary injunction are initiated by filing a verified
petition with the proper court and posting of bond.62 The petitioner must show facts entitling him to
the relief demanded.
In both cases, the bond posted by the applicant serves as the security for the adverse party and
answers for the damages and costs, which may be adjudged to the adverse party arising from and by
reason of the attachment.
13. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.
Length
All cases or matters filed must be decided or resolved within twenty four (24) months from
date of submission for the Supreme Court, and unless reduced by the Supreme Court, twelve (12)
months for all lower collegiate courts, and three (3) months for all other lower courts.63
The above periods for decision are mandatory in nature and apply to all cases including
preliminary attachment and preliminary injunction and pursuant to the constitutional right that allpersons shall have the right to speedy disposition of their cases before all judicial, quasi-judicial or
administrative bodies.
64
However, during the course of the trial, different factors may affect the duration of the
proceedings including but not limited to the complexity of the issues and other circumstancesaffecting the case.
Cost
The cost of the proceedings, which includes the filing fees, research fees and other
miscellaneous fees, varies depending on the damages claimed.
As to Attorney’s fees, the same is left to the mutual agreement of the client and lawyer
usually based on the prevailing standard of legal profession.
Data
Data on actual duration of proceedings and their cost are not readily available.  However,
prompt disposition of cases is assured consider ing the mandatory provision of the Constitution.
                                                     
62 Rules of Civil Procedure (1997), Rule 57, Secs. 1 and 3, Rule 58, Sec. 4.
63 Constitution, Article VIII, Sec. 15.
64 Constitution, Article III, Sec.16.IP/N/6/PHL/1
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(b) Administrative procedures
14. Reply to the above questions in relation to any administrative provisional measures.
Describe the types of provisional measures that administrative authorities may order, and the
legal basis for such authority
The IP Office may issue preliminary orders in administrative actions for violations of
intellectual property rights.65
Upon verified application of the complainant, the Bureau of Legal Affairs (BLA) may issue
preliminary injunction to require a person to refrain from a particular act or to perform a particularact, if the BLA is satisfied that the commission or continuance of the act complained of would
probably work injustice to the complainant.
66
Furthermore, upon showing of its sufficiency, an order of attachment may be issued to have
the property of the adverse party attached as security for the satisfaction of any judgement that may berecovered.
In what circumstances may such measures be ordered inaudita altera parte ?
Preliminary orders may be granted with or without prior notice and hearing on the application
for its issuance.  In instances where these orders may be granted without prior hearing, it shall appear
from facts shown by affidavit  of the applicant that sufficient cause warranting the urgent issuance of
these orders exists and that there is no other sufficient security for the claim sought to be enforced by
the action.67
Describe the main procedures for the initiation, ordering and maintenance in force of
provisional measures, in particular relevant time limits and safeguards to protect the
legitimate interests of the defendant
In administrative actions, the procedures are the following:68
- the application for provisional remedies may be filed at any time after the
commencement of the administrative action or at any time before entry of judgement;
- upon motion with notice and hearing or may be issued ex parte ;
- the ground is established for the issuance thereof.
The party applying for the issuance of these orders must give a bond to answer for all costs
and damages resulting from the grant of these provisional remedies, if the BLA shall finally adjudge
that the applicant is not entitled thereto.69
                                                     
65 Rep. Act. N° 8293, Sec. 10.2 (a).
66 Rep. Act N° 8293, Sec. 156.4.
67 IRR on Administrative Complaints, Rule 4, Sec. 2 & 3 and Rule5, Sec. 4.
68 IRR on Administrative Complaints, Rule 4, Sec. 1 and Rule 5, Sec. 2.
69 IRR on Administrative Complaints, Rule 4, Sec. 4.IP/N/6/PHL/1
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Describe provisions governing the length and cost of proceedings.  Provide any available data
on the actual duration of proceedings and their costs
-L e n g t h
Successive and continuous daily hearing for the reception of evidence in the granting
of provisional remedies is required. The hearings or reception of evidence thereof
shall be terminated within thirty (30) days from submission of the last motion.70
In the proceedings for the granting of temporary restraining order by the IP Office, a
summary hearing is required within twenty-four (24) hours after the Sheriff’s return
of service and/or receipt of records by the Bureau of Legal Affairs.71
-C o s t s
The movant or applicant is required to post a bond.  The adverse party on the otherhand may post a counter bond in an amount equal to the bond fixed by the BLA.
72
In applying for provisional remedies, a fee of two thousand Pesos (Php 2,000.00)shall be collected by the IP Office in the filing of motions for attachment or
injunction.
73
-D a t a
Data on actual duration of proceedings and their cost are not readily available.However, prompt disposition of cases is assured considering the mandatory provision
of the Constitution.
Special Requirements Related to Border Measures
15. Indicate for which goods it is possible to apply for the suspension by the customs
authorities of the release into free circulat ion, in particular whether these procedures
are available also in respect of goods which involve infringements of intellectual
property rights other than counterfeit trademark or pirated copyright goods as definedin the TRIPS Agreement (footnote to Article 51).  Specify, together with relevant
criteria, any imports excluded from the application of such procedures (such as goods
from another member of a customs union, goods in transit or de minimis imports).  Do
the procedures apply to imports of goods put on the market in another country by or
with the consent of the right holder a nd to goods destined for exportation?
Customs authorities may suspend the release of goods which are imported in violation of the
law.
74 Suspension of release also applies to goods which involve infringement of intellectual property
rights other than counterfeit trademark or pirated copyright goods as defined in the Agreement on
Trade-Related Aspects of Intellectual Property Rights, (footnote to Article 51) such as goods
                                                     
70 IRR on Administrative Complaints, Rule 9, Sec. 1.
71 IRR on Administrative Complaints, Rule 5, Sec. 3 (d).
72 IRR on  Administrative Complaints, Rule 4, Sec. 4 & Rule 5, Sec. 3 (b).
73 IP Office Fee Structure, Section 6.0.
74 Rep.  Act. N° 1937, Sec. 101 (k).IP/N/6/PHL/1
Page 14
infringing patent rights,75 and goods bearing false designation of origin, false or misleading
description, or false or misleading representation.76
Imports excluded from suspension of release are copyright works not exceeding one (1) copy
for an individual, or three (3) copies for persons or a family arriving from foreign countries.77 Goods
put on the market in another country by or with the consent of the rights holder and goods destined for
exports are not included in the list of goods that may be seized.78
16. Provide a description of the main elements of the procedures relating to the suspension
of the release of goods by customs authoritie s, in particular the competent authorities
(Article 51), the requirements for an application (Article 52) and various requirements
related to the duration of suspension (Artic le 55).  How have Articles 53 (security or
equivalent assurance), 56 (indemnification of the importer and of the owner of the
goods) and 57 (right of inspection and information) been implemented?
Article 51:  Suspension of Release by Customs Authorities
A patent holder, trademark or copyright owner, his assign, or his duly authorized agent or
representative, desiring to prevent or prohibit the entry or importation of any cargo or shipment that
may infringe upon his property rights shall file a written request to the Commissioner of  Customs.79
Article 52:   Application
Any right holder initiating the above measure80 must file a written request to the
Commissioner of Customs attaching thereto duly authenticated copies of patent, trademark or
copyright registration and facsimiles of his name, name of the locality in which his goods are
manufactured, or of his registered mark or trademark.  He shall also furnish the Commissioner withthe following information:
- name and address of the patent holder, trademark, or copyright owner;
- name of the locality in which his goods or products are manufactured;
- name and address of the agent or representative;
- sufficiently detailed description of the goods, products or services of the patent
holder, trademark or copyright owners to make them readily recognisable by theCustoms authorities.
Upon receipt of the written request, the Commissioner of Customs shall direct the Legal
Service to record the patent, trademark or copyrigh t certificate and the foregoing information in the
books kept for such purpose.
After proper evaluation and due recording in the registry, the Commissioner of Customs shall
then issue a Memorandum Circular addressed to all Collectors of Customs, Customs
Examiners/Appraisers and Hearing Officers of th e Law Division, informing them of the request,
directing them to strictly monitor and enforce the pr ohibition and attaching to such circular a copy of
the request, the patent, trademark or copyright certificates of registration, the facsimiles and all the
pertinent information thereto.
                                                     
75 Rep. Act  N° 8293, Secs. 71 (a) & (b).
76 Rep.  Act  N° 8293, Secs. 169 (a) & (b).
77 Rep.  Act. N° 8293 Secs. 190.1 and 190.2.
78 See Rep. Act. N° 1937, Secs. 101(k) & 2530.
79 Customs Administrative Order N° 7-93 (1993), II.3.
80 Customs Administrative Order N° 7-93 (1993), II.3.IP/N/6/PHL/1
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Upon receipt of the Memorandum Circular, all Collectors of Customs, Customs
Examiners/Appraisers and Hearing officers, on their part, shall maintain and keep their own file of all
such requests that will provide basis for monitoring and prohibiting the entry or importation of any
incoming cargo or shipment that may infringe upon the property rights of the patent, trademark orcopyright owners, and for notifying such owners or their authorised agent or representative to witness
the examination of the said cargo or shipment.
In the performance of their duties, the Customs Examiners/Appraisers shall conduct an actual
examination of the suspected cargo or shipment and shall immediately submit a recommendation to
the Collector of Customs for the issuance of Warra nt of Seizure and Detention against such cargo or
shipment if there is prima facie  case of infringement.
During the seizure proceeding of such goods, the patent holder, trademark or copyright
owners or their duly authorised agents shall be noti fied so that they may participate as intervenor and
present evidence to prove infringement on its patent, trademark or copyright.
Article 53:  Security or Equivalent Assurance
The applicable implementing rules and regulations do not require the rights owner to provide
a security or equivalent assurance when applying for suspension of release.  Abuse of this measure is
prevented by the strict requirements in the availment of said remedy.81
On the other hand, the owner or importer as a general rule may secure the release of seized
goods upon filing of a cash bond, unless there is a prima facie  evidence of fraud in the importation.
However, articles the importation of which is prohibited by law shall not be released under any
circumstances whomsoever.82
Article 55:  Duration of Suspension
The decision of the Collector of Customs to suspend the release of goods is considered valid
until termination of the proceedings.  His decision is considered affirmed if no action has been taken
thereon by the Commissioner of Customs within thir ty (30) days from the suspension order. The
decision of the Commissioner is appealable to the Secretary of Finance, whose inaction within thirty(30) days shall render said decision final and executory.
83
In any seizure proceeding, the release of imported articles shall not be allowed unless the
decision of the Collector has been affirmed  in writing by the Commissioner of Customs.84
Article 56 : Indemnification of the Importer and of the Owner of the Goods
The importer or the owner of the goods may file an application for damages on account of
improper, irregular or excessive attachment.85 The indemnification for damages shall comprehend not
only the value of the loss suffered, but also that of the profits which the importer or the owner of thegoods failed to obtain.
86 Damages may also be covered for injury to the business standing or
                                                     
81 Customs Administrative Order N° 7-93 (1993).
82 Rep. Act N° 1937, Sec. 2301.
83 Rep. Act N° 1937, Secs. 2312-2313.
84 Rep. Act N° 7651 (1993), Sec. 1;  Rep. Act N° 1937, Sec. 2313.
85 Revised Rules of Civil Procedure, Rule 57, Sec. 20.
86 Rep. Act N° 386, Art. 2200.IP/N/6/PHL/1
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commercial credit.87 Moreover, he can invoke his right to speedy disposition of his case under the
Constitution of the Republic of the Philippines.88
Article 57 : Right of Inspection and Information
The intellectual property right holder or his agent or representative shall be notified to witness
the examination of the cargo or shipment.  He may participate as intervenor and may present evidence
to prove infringement.89
17. Describe provisions governing the length and cost of proceedings.  Provide any available
data on the actual duration of proceedings and their cost.  How long is the validity ofdecisions by the competent authorities for the suspension of the release of goods into free
circulation?
Actual duration of   proceedings and the cost vary depending on the peculiarities of each case
and the remedies taken by the parties.  Meanwhile, the decision of the Collector of Customs tosuspend the release of goods is considered valid until termination of the proceedings.  The decision of
the Customs Collector is considered affirmed if no action has been taken thereon by the
Commissioner of Customs within thirty (30) days from the suspension order of the Collector.  The
Commissioner’s decision is appealable to the Secretary of Finance whose decision shall be deemed
final and executory if not acted within thirty (30) days.
90
18. Are competent authorities required to act upon  their own initiative and, if so, in what
circumstances?  Are there any special provisions applicable to ex officio  action?
The Bureau of Customs, on the basis of an alert list or upon written request by the intellectual
property rights holder, shall place under alert orders shipment known or suspected to be infringing
intellectual property rights.91
However, the Bureau of Customs may still stop the entry of the infringing goods even if there
is no alert list or requests because counterfeit shipment falls within the term “prohibited
importation”.92
In the case of pirated videograms that passed border controls into commercial circulation, the
state through the Videogram Regulatory Board has the power to cancel the permit of persons engaged
in videogram business when there is violation of the law.93 Under its regulatory and supervisory
powers, it has the authority to inspect business premises on its own initiative.94
19. Describe the remedies that the competent authorities have the authority to order and
any criteria regulating their use.
In the performance of their duties, the Customs Examiners/Appraisers shall conduct an actual
examination of the suspected cargo or shipment and shall immediately submit a recommendation to
                                                     
87 Rep. Act N° 386, Art. 2205 (2).
88 Constitution,  Article  III, Sec. 16.
89 Customs Administrative Order N° 7-93 (1993).
90 Rep. Act. N° 1937, Sec. 2312-2313.
91 Custom Administrative Order N° 7-93.
92 Rep. Act. N° 1937, Sec. 101(k).
93 Pres. Decree N° 1987, Sec. 3(1).
94 Revised Rules and Regulations of Pres. Decree N° 1987, Chapter VIII, Sec. 20.IP/N/6/PHL/1
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the Collector of Customs for the issuance of Warra nt of Seizure and Detention against such cargo or
shipment if there is prima facie  case of infringement.95
The Bureau of Customs has the power to conduct random checks on all imports to determine
whether the goods match the description in the shipping documentation and are not otherwiseinfringing.
96
Criminal Procedures
20. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.
Regional Trial Courts have original jurisdiction to hear and decide cases involving violations
of intellectual property rights regardless of the amount involved.97 Twenty-seven of these courts are
specially designated to hear such cases.98
The decisions of the Regional Trial Co urt may be brought on appeal or on certiorari  to the
Court of Appeals, and to the Supreme Court.99
21. In respect of which infringements of which intellectual property rights are criminal
procedures and penalties available?
Criminal actions and penalties are available in the following violation of intellectual property
rights:
- infringement of Patent, Utility Models and Industrial Designs100
- infringement of Copyright and Related Rights101
- infringement of Trademarks, Service Marks and Geographical Indications102
- unfair competition103
- false Designations of Origin / False Description of Representation104
- reproduction of cinematographic art105
-p i r a c y106
22. Which public authorities are responsible fo r initiating criminal proceedings? Are they
required to do this on their own initiative and/or in response to complaints?
Any peace officer or other public officer charged with the enforcement of the law violated
may file a criminal complaint107 in response to complaints or request for investigation.
 Thus, law enforcement agencies such as the Philippine National Police (PNP), the National
Bureau of Investigation (NBI), Department of Justice (DOJ) and the Videogram Regulatory Board
                                                     
95 Customs Administrative Order N° 7-93, III.5.
96 Customs Administrative Order N° 7-93, II.7.
97 Supreme Court Administrative Order N° 104-96 (1996).
98 Supreme Court Administrative Order N° 113-95 (1995).
99 Revised Rules on Criminal Procedure (2000), Rule 122, Sec. 2.
100 Rep. Act N° 8293, Secs. 84, 108, 119.
101 Rep. Act. N° 8293, Sec. 217.
102 Rep. Act. N° 8293, Sec. 170.
103 Rep. Act. N° 8293, Sec. 170.
104 Rep. Act. N° 8293, Sec. 170.
105 Pres. Dec. 1987, Sec. 7, 9.
106 Rep. Act N° 8792, Sec. 33 (b).
107 Revised Rules of Criminal Procedure(2000), Rule 110, Sec. 3.IP/N/6/PHL/1
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may institute criminal proceedings or may file criminal complaint which shall be prosecuted under the
direction and control of the prosecutor.108
23. Do private persons have standing to initiate criminal proceedings and, if so, who?
Right holder, heirs or assigns, as the offended parties, may file or institute action for
infringement.109
The offended party is authorised to prosecute a criminal action subject to the direction and
control of the public prosecutor.110
24. Specify, by category of IPR and type of infringement where necessary, the penalties and
other remedies that may be imposed:
- imprisonment;
- monetary fines;
- seizure, forfeiture and destruction of infringing goods and materials and
implements for their production;
- other.
Rep. Act No. 8293 Pres. Decree No. 1987 Rep. Act No. 8792
PENALTY INTELLECTUAL PROPERTY CODE ACT CREATING THE VRB E-COMMERCE ACT
INFRINGEMENT INFRINGEMENT INFRIN GEMENT VIOLATION OF DECREE PIRACY
OF OF OF & RULES & REGULATIONS
PATENT TRADEMARK COPYRIGHT
IMPRISONMENT 6 mos. to 3 yrs. 2 to 5 yrs. 1st offense: 3 mos. & 1 day to 1 yr. 6 mos. to
111 112  1 to 3 yrs   1133 yrs.
114
2nd offense:
  3 yrs & 1 day
  to 6 yrs.
3rd & subsequent
Offenses:
  6 yrs. & 1 day
  to 9 yrs
115
                                                     
108 Revised Rules of Criminal Procedure(2000), Rule 110, Sec 5.
109 Rep. Act N° 8293, Secs. 28, 147, 180, 193.; Revised Rules on Criminal Procedure (2000), Rule 110,
Sec.3.
110 Revised Rules on Criminal Procedure (2000), Rule 110, Sec. 5; Guevarra vs. Del Rosario, 77 Phil.
615.
111 Rep. Act N° 8293, Sec. 84.
112 Rep. Act N° 8293, Sec. 170.
113 Pres. Decree 1987, Sec. 9.
114 Rep. Act 8792, Sec. 33b.
115 Rep. Act 8293, Sec. 217.1.a, b and c.IP/N/6/PHL/1
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Rep. Act No. 8293 Pres. Decree No. 1987 Rep. Act No. 8792
PENALTY INTELLECTUAL PROPERTY CODE ACT CREATING THE VRB E-COMMERCE ACT
INFRINGEMENT INFRINGEMENT INFRIN GEMENT VIOLATION OF DECREE PIRACY
OF OF OF & RULES & REGULATIONS
PATENT TRADEMARK COPYRIGHT
(Continued)
FINE P100,000.00 P50,000.00 1st offense: P50,000.00 P100,000.00 min.
to to P50,000.00   to to  a maximum
P300,000.00 P200,000.00   To P100,000.00 commensurate to
 116 117P150,000.00118damage incurred
119
2nd offense:
P150,000.00
  to
P500,000.00
3rd & subsequent
offenses:
P500,000.00
  to
P1,500,000.00
120
DISPOSAL ORImposable Imposable Imposable Not imposable Not imposable
DESTRUCTION121 122 123
OF INFRINGING * simple removal
GOODS Of trademark for
Exceptional cases
124
IMPOUNDING OF Not imposable Imposable Imposable Not imposable Not imposable
DOCUMENTS125 126
EVIDENCING
SALE
SUBSIDIARY Not imposable Not imposable Imposable Not imposable Not imposable
IMPRISONMENT127
                                                     
116 Rep. Act 8293, Sec. 84.
117 Rep. Act 8293, Sec. 170.
118 Pres. Decree 1987, Sec. 9.
119 Rep. Act 8792, Sec. 33b.
120 Rep. Act 8293, Sec. 217.1.a, b and c.
121 Rep. Act 8293, Sec. 76.5.
122 Rep. Act 8293, Sec. 157.1.
123 Rep. Act 8293, Sec. 216.1.d.
124 Rep. Act 8293, Sec. 157.2.
125 Rep. Act 8293, Sec. 156.2.
126 Rep. Act 8293, Sec. 216.1.c and Sec. 216.2.
127 Rep. Act. 8293, Sec. 217.1.d.IP/N/6/PHL/1
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25. Describe provisions governing the length and any cost of proceedings.  Provide any
available data on the actual duration of proceedings and their cost, if any.
Length
All cases or matters filed with the courts must be decided or resolved within twenty-four
(24) months from date of submission for the Supr eme Court, twelve (12) months for all lower
collegiate courts, and three (3) months for all other lower courts.  Furthermore, the Philippine
Constitution under the Bill of Rights affirms the right of the people to a just and speedy disposition of
their cases.128
The Supreme Court has ordered the Regional Trial Courts to give priority to violations of
intellectual property rights cases in their trial calendars.  The proceeding shall undergo mandatory
continuous trial and shall be terminated within sixty (60) days from commencement of trial.
Judgement thereon shall be rendered within thirty (30) days from submission for decision unless a
shorter period is provided by law or otherwise directed by the court.129
Cost
There is no filing fee in the institution of criminal actions.  However, in cases where the
amount of damages, other than actual, is alleged in the complaint or information, the corresponding
filing fees shall be paid by the offended party upon filing thereof in court for trial.130
A party may maintain litigation through their private lawyers the compensation of which
would depend on the agreements reached to.  The private prosecutor, however, shall be under the
control and supervision of the public prosecutor.131
__________
                                                     
128 Constitution, Art. VIII Sec. 15 & Art. III, Sec. 16.
129 Supreme Court Administrative Circular N° 104-96.
130 Revised Rules on Criminal Procedure (2000), Rule 111, Sec.1.
131 Revised Rules on Criminal Procedure (2000), Rule 110, Sec. 5 & Sec. 16.