One crucial step in safeguarding intellectual property rights is asserting them against infringement. The Intellectual Property Code (IP Code)1 empowers trademark owners to take legal action to protect their marks from infringement. Filing a trademark infringement action to enforce these rights demands a systematic and well-prepared approach. Below is a step-by-step guide to get you started.
Trademark Infringement: Possible Actions
Trademark infringement can result in various consequences, including imprisonment, fines, and order of cessation of using the infringing mark. Once you have registered your trademark, the IP Code reserves you the right to legal remedies to address infringement.2 These include filing an administrative action before the Intellectual Property Office of the Philippines (IPOPHL). Alternatively, civil or criminal actions can be initiated before regular courts.
Note that filing a case before one forum—whether IPOPHL or the courts—precludes the other from hearing the same matter in accordance with the rule of exclusivity.
It is advisable to seek the assistance of an accredited trademark lawyer familiar with handling cases to ensure an effective legal course.
A Step-by-Step Guide to Filing a Trademark Infringement Action
The following are the steps to filing a trademark infringement case in the Philippines with key insights:
1. Establish grounds for infringement
Establishing the grounds for infringement is your cause of action before any forum. Hence, any action should start with understanding the elements constituting trademark infringement.
There is trademark infringement when (l)the trademark being infringed is registered in the IPO; (2) the trademark is reproduced, counterfeited, copied, or colorably imitated by the infringer; (3) the infringing mark is used in connection with the sale, offering for sale, or advertising of any goods, business, or services; or the infringing mark is applied to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with such goods, business, or services; (4) 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 (5) it is without the consent of the trademark owner or the assignee thereof.3
2. Filing the complaint before the right forum
A case or action for trademark infringement in the Philippines may be filed at different venues pursuant to the rule of exclusivity and depending on the type of case.
- For administrative actions, the case should be filed before the IPOPHL through its Director of Bureau of Legal Affairs.
- For civil actions, the action should be filed in the place where the plaintiff is a resident or where the principal address is located for juridical entities.
- For criminal actions, this should be filed in the place where the alleged infringement was committed. The complaint must be instituted with the National Prosecution Service of the Department of Justice for purposes of preliminary investigation.
3. Monitoring and Enforcement
Engage actively in the case by submitting evidence, attending hearings, and complying with procedural requirements. Stay informed about potential counterclaims. Once the court or IPOPHL renders a favorable decision, execute the judgment. Remedies may include cessation of the infringing activity, payment of damages, or injunction.4
To know more about trademark infringement, read What is Trademark Infringement: Penalties and Remedies in the Philippines.
Conclusion
Filing a trademark infringement action is a structured process designed to protect intellectual property holders. Proper adherence to legal procedures is essential for a successful outcome. By asserting trademark rights, businesses not only protect their brands but also promote fair trade in the Philippine market.
Do you need help filing a trademark infringement action? Book a consultation with a trademark attorney. You may also email us at admin@pinollaw.com.
1 An Act Prescribing the Intellectual Property Code and Establishing the Intellectual Property Office, Providing for its Powers and Functions, and for other Purposes, Republic Act No. 8293, §1 (January 1, 1998) [hereinafter Intellectual Property Code of the Philippines].
2 Intellectual Property Code of the Philippines, §§ 155-160.
3 Prosource International, Inc. v. Horphag Research Management SA, G.R. No. 180073, November 25, 2009. This was also cited in the landmark case of Zuneca Pharmaceutical v. Natrapharm, G.R. No. 211850, September 8, 2020.
4 Intellectual Property Code of the Philippines, §§155 to 156
