Is Custom Recordal of Intellectual Property Rights (IPRs) available in Philippines?
Is Custom Recordal of IPRs compulsory in Philippines?
Is it an effective measure to stop the infiltration of illegal and counterfeit products in Philippines?
Which law forms the legal basis for Custom Recordal of IPRs (Border Control Measures) in Philippines?
The Rules and Regulations Implementing R.A. No. 165, as amended, R.A. No. 166, as amended, and P.D. No. 49 Regarding the Prevention of the Importation of Infringing Goods or Products - form the legal basis for Custom Recordal of IPRs (Border Control Measures) in Philippines.
Is Custom Recordal of IPRs effective on import or export of goods or both?
Custom Recordal of IPRs is effective only on the import of goods.
What is the role of the customs department/authority? (Kindly give 2-3 points)
The role of the Customs is defined as follows:
1) They keep a registry book for all IP Assets.
2) The Bureau of Customs shall, for monitoring purposes, also establish an alert list of persons, provided by intellectual property owners or other sources, known or suspected to be infringing, counterfeiting, or otherwise copying or simulating marks or tradenames protected under the subject laws. On the basis of the said alert list or upon written request by the trademark patent and copyright owners, the Bureau of Customs shall place under alert orders shipments known or suspected to be infringing upon the trademarks or copyright.
Is there a procedure to record IP with the customs department/authority? If yes, then kindly explain it in brief.
The rightful holder, who has valid grounds for suspecting that counterfeit trademark or pirated copyright goods will be imported may take place, may lodge an application in writing with the Commissioner of the Bureau of Customs for the issuance of a hold order on the release of such goods.
What documents are to be submitted along with the application for Custom Recordal of IPRs?
The rights holder should show proof that he owns one of the protected properties identified in Section 35 of the Trademark Law. He should also furnish the Commissioner with the following information:
a) Name and address of the patent holder, trademark, or copyright owner;
b) Name of the locality in which his goods or products are manufactured;
c) Name and address of agent or representative; and
d) Sufficiently detailed description of the goods, product or services of the patentholder, trademark, or copyright owners to make them readily recognisable by the Customs Authorities.
Is the applicant required to execute a bond (against all liabilities and to bear the costs towards destruction, demurrage, and detention charges incurred till the time of destruction or disposal) with the customs department/authority for Custom Recordal of IPRs?
What is the time frame for the customs department/authority to notify the applicants whether their application (for custom recordal of IPRs) is registered or rejected?
There is no fixed time limit.
Does the customs department/authority have a centralized system or the Custom Recordal is required to be done with each port of entry in Philippines by land, sea, and air?
Yes, it is centralised
Is there an online system for Custom Recordal in Philippines?
What is the official fee for Custom Recordal in Philippines?
It involves the payment of recordation fee of PHP two thousand (P2, 000.00) per product, but in no case to exceed PHP twenty thousand (P20, 000) per IPR Holder/Owner be paid to the Bureau of Customs for each registration of trademark, patent, and copyright.
What is the term of Custom Recordal of IPRs? Can it be further renewed?
The term of Custom Recordal of IPRs is 02 years, which is further renewable every 02 years thereafter.
Does the customs department/authority have a right to conduct raids and seize the counterfeit goods within Philippines?
In which scenario does the customs department/authority suspend the clearance of imported goods?
The customs department suspends the clearance of imported goods upon suspecting that the goods are infringing in nature, either on their own initiative or on finding from a complaint.
Who bears the liabilities and expenses related to suspension of the release of infringing goods?
The applicant bears the same; however, if the applicant adduces wrong information, the fine has to be paid in addition.
Is the IP rights holder authorized to examine the goods, the clearance of which has been suspended?
Is the IP rights holder authorized to request the information about the personal details of the importer and additional crucial piece of information concerning the consignment, which has been suspended from clearance?
Can the importer or the authorized representative of the goods, which have been suspended from clearance, request the information of the IP rights holder in question?
Within what timeframe the IP rights holder needs to confirm whether the goods are counterfeit or original after suspension?
Is the IP rights holder required to produce an injunction order or evidence of court proceedings to detain the goods?
If the answer to the above question is 'Yes,' then what is the deadline to do so?
Does the IP rights holder need to pay an additional bond for the detention of goods?
If the answer to the above question is 'Yes,' then to what extent and how is the valuation calculated?
In the scenario where the goods detained or seized are found to be infringing the IPRs of the IP rights holder in question, what steps does the customs department/authority take?
Goods finally found in seizure proceedings to be infringing shall be forfeited in favour of the government and shall be destroyed, unless used as evidence in court proceedings.
Does the customs authority invite the rights holder and importer to join the proceedings? Are there any consequences of failure to join such proceeding, if any?
The option of resorting to a court proceeding lies is there with the applicant.
Before disposal/destruction of infringing goods, does the rights holder need to submit a ‘no objection’ or concurrence document?
Are there any disadvantages of Custom Recordal of IPRs in Philippines? If yes, then kindly give 2-3 points?
If an IP rights holder is not satisfied with the action taken by the customs department/authority, can he/she initiate separate legal proceedings to enforce his/her IP rights?
To establish if the goods are counterfeit before the court of justice, will the affidavit by the IP rights holder suffice or any other documentary requirement is there?
Other documents and evidences, including photographs of infringing goods, may be needed.
Upon conclusion of proceedings before the Court of Justice, what are the possible remedies awarded by the court?
Seizure, destruction, and damages are the possible remedies awarded by the court.
Is the rights holder under an obligation to inform customs authority when his Intellectual Property Right ceases to be valid/ he ceases to be the owner of such IPR?