IP Enforcement Remedies - Philippines


Market Survey

The first step towards implementing a successful enforcement program (e.g., against trademark infringement and copyright infringement) involves identifying the persons, establishments and/or entities that are engaged in the importation, manufacture, sale and distribution of the suspected counterfeit products. Private investigators may be engaged to conduct market surveys in the localities where instances of counterfeit sales have been observed. We work with and have excellent relationships with a number of the most competent private investigative firms in the Philippines. These investigators regularly provide us with sighting reports involving violations of intellectual property rights of our clients for possible enforcement action.

From the results of the market survey, we classify potential enforcement targets based on the extent of their infringing activities. Those targets that deal with substantial commercial quantity of counterfeit products, we recommend for further investigation with the end in view of conducting a search and seizure operation. On the other hand, for targets with minimal commercial quantity of infringing items, we recommend sending a strongly-worded cease and desist letter.

Criminal Raid

During a search and seizure operation, law enforcement agents seize counterfeit products and endorse the case to govenrment prosecutors for the filing of criminal charges.

A search and seizure operation is initiated by the filing of a search warrant application generally in the court which has territorial jurisdiction over the place sought to be searched. There are commercial courts in Metro Manila that can issue search warrants that may be enforced anywhere in the Philippines. The application is filed by the law enforcement agent with private investigator(s) acting as his witness(es). We prepare the required documentation and assist the law enforcement agent/applicant to ensure that the proper procedure prescribed by law is followed before, during and after the search and seizure operations. We also accompany the law enforcement agents during the raid.

After a raid, we attend to the preliminary investigation proceedings before the Prosecutor’s Office that has jurisdiction over the place where the offense was committed. The preliminary investigation has to be initiated within 60 days from the date of the issuance of the search warrant. The preliminary investigation is the proceeding where an investigating prosecutor determines whether or not there is probable cause to bring respondents to criminal trial. If the investigating prosecutor finds probable cause, the corresponding criminal case will be filed with the proper court.

It is not uncommon after a raid or pending litigation for infringers to offer to settle in exchange for the complaining party’s desistance in prosecuting the case. The settlement terms typically consist of the following:

  • payment of damages in an amount at least equal to the legal and investigative costs incurred;
  • execution of a written Undertaking with provision for liquidated damages in case of breach;
  • publication of an apology advertisement in a major newspaper (at the infringer's expense); and
  • destruction of the infringing items seized.

There are also other enforcement options such as filing civil, administrative cases and invoking the enforcement powers of the Intellectual Property Office. We believe though that a criminal raid followed by the filing of a criminal case is the most effective remedy against infringers as they are confronted with the threat of imprisonment. A crminal raid may, however, be availabed of for patent infringement against repeast infringers only. 

Cease and Desist Letters

For targets that have minimal commercial quantity of infringing items involved or when a search and seizure operation is not warranted due to other commercial considerations, we recommend sending a strongly-worded letter to the infringer concerned demanding that it immediately cease and desist from dealing with counterfeit merchandise.

For targets that have minimal commercial quantity of infringing items involved or when a search and seizure operation is not warranted due to other commercial considerations, we recommend sending a strongly-worded letter to the infringer concerned demanding that it immediately cease and desist from dealing with counterfeit merchandise.

Customs Recordation

To prevent the entry of counterfeit merchandise into the Philippines, and to ensure expedited procedures for the handling and disposition of such infringing goods, an intellectual property owner may record its products covered by trademarks, patents and copyrights with the Bureau of Customs (“BOC”). The recordal will be the basis of the BOC to monitor, on its own initiative, suspected imports of counterfeit products. In practice, the BOC contacts the registered intellectual property owner or its representive (e.g. our firm) regarding the shipments of counterfeit goods prior to taking action.


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REACT

Our firm is the exclusive partner of REACT (https://www.react.org/locations/philippines/) in the Philippines. REACT members will now be able to take advantage of the Firm’s expertise in all facets of Intellectual Property Law. The Firm will also be able to better serve its Philippine clients’ international needs by being able to tap into the extensive REACT network.

REACT is a not-for-profit organization with over 25 years experience in fighting the trade in counterfeits and has in excess of 235 business Members covering all sectors of industry. With an extensive global network of offices and partners extending to 85 countries, REACT, using its knowledge of national laws and procedures, is able to act efficiently as a 'one-stop-shop' wherever and whenever its Members need to enforce their intellectual property rights.

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