Author: Joseph Sarmiento
The firm was recognized again in the 2017 ranking tables of the World Trademark Review (WTR), Legal500 and Chambers and Partners.
According to WTR, “(e)lite boutique Betita Cabilao Casuela Sarmiento wins praise from foreign counsel the world over: ‘All the partners are responsive, dedicated, reliable and prompt in their advice. Working with them, you feel as if you you’re their only client.’ The four-partner team has secured favourable results for household-name brands in a string of high-stakes cases, and prides itself on its uniquely personalised approach to both contentious and non-contentious matters. Managing partner Andre Philippe Betita is a regular in the Supreme Court, but also deftly handles filing and prosecution issues before IPOPHL; having helped to draft the country’s IP Code, he knows every line of the statute inside out. Pericles Jose Conrado Casuela is a go-to practitioner for licensing matters and IP-rich M&A negotiations.” Andre and Pericles are ranked as tier 2 recommended experts by WTR. The full publication can be viewed here.
The firm is ranked as a second-tier recommended firm by Legal 500, which describes the firm: “Betita Cabilao Casuela Sarmiento’s practice handles licensing, transactions, litigation and enforcement relating to trade marks. Name partners Andre Betita, Pericles Casuela, Joseph Sarmiento and John Paul Cabilao are active practitioners.” The full publication can be viewed here.
The firm’s Andre Betita is ranked in band 3 of the leading Intellectual Property lawyers in the Philippines in Chambers and Partners’ 2017 Asia-Pacific guide. The full publication can be viewed here.
The rankings complement the firm’s milestone achievement of building a portfolio of more than 2,000 trademarks filed and registered with the Philippine Intellectual Property Office within the fifth year from its founding in 2011. To view the firm’s portfolio, visit http://www.wipo.int/branddb/ph/en/ and enter “Betita Casuela” in the “Names/Representative” search option.
Patents and trademarks are both intellectual properties, for sure, but the two cannot be interchanged. Interestingly, a recent article from a reputable local daily reported about a certain popular festival’s logo being patented with the Intellectual Property Office (IPO). It warned individuals and entities from using said “patented logo” in their respective businesses to ride with the popularity of the merrymakings without the owners’ permission. It even went on citing Section 71 of the Intellectual Property Code (“the Code”), enumerating the rights of owners of patents.
True enough, Section 71 enumerates the rights of owners of patents, period. But a patented logo? There is no such thing.
The IPO would not have registered the same as a patent if it applied for one. What the article should have referred to was a trademark – and not a patent – registration. Section 121.1 of the Code defines a “mark” as “any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise.”
Meanwhile, Section 21 of the Code explicitly reserves patents for “any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable… It may be, or may relate to, a product, a process, or an improvement of any of the foregoing.”
The prominent festival’s logo is used for promoting the event or branding, and is in no way an invention per se. Simply put: branding indicia gets registered as a trademark, not as a patent.
The Supreme Court recently upheld the constitutionality of SEC Memorandum Circular No. 8, Series of 2013. The salient points of said Memorandum Circular are as follows:
a. The covered corporations are those involved in areas of activities or enterprises specifically reserved, wholly or partly, to Philippine Nationals by the Constitution, the Foreign Investments Act, and other existing laws.
b. All covered corporations shall, at all times, observe the constitutional or statutory ownership requirement.
c. The required percentage of Filipino ownership must be met in both (a) the total number of outstanding shares of stock entitled to vote in the election of directors, and (b) the total number of outstanding shares of stock, whether or not entitled to vote in the election of directors.
d. Corporate Secretaries of covered corporations are directed to monitor and observe compliance thereto. The Corporate Secretary may not delegate this responsibility without an express authority from the Board of Directors or Trustees.
e. Failure to comply will be punished with the administrative sanctions provided in Section 14 of the Foreign Investments Act as amended, summarized below:
Fine of ½ of 1% of the paid-in capital, but not more than Php5,000,000.00
President / officials responsible
Fine not exceeding Php200,000.00
Any person, firm, or juridical entity
Forfeiture of all benefits granted under the Foreign Investments Act as amended
Café de Coral Assets Ltd. (CDC) opposed the application of Albertito Guerero for “The Old Spaghetti House” based on the former’s “The Spaghetti House” trademark registration worldwide including the Philippines. While CDC was able to show that it had a prior registration in the Philippines, CDC and its predecessor-in-interest were actually not able to use the mark in the Philippines. CDC filed an affidavit of non-use on the basis that it is still looking for a suitable franchisee in the Philippines. The Bureau of Legal Affairs (BLA), however, considered this excuse to be unacceptable. Mr. Guerrero was thus able to show that he was the first one to have used “The Old Spaghetti House” mark in the Philippines, and was in fact the “OLDER” Spaghetti House. The decision of the BLA may be accessed here.
The Securities and Exchange Commission (SEC) formally adopts the judicial affidavit rule in SEC Memorandum Circular No. 4 (series of 2016). The judicial affidavit rule will now have to be observed in all actions, proceedings and incidents requiring the reception of evidence before the SEC.
The Philippine Supreme Court dismissed the petition filed praying for the nullification of the Philippines’ accession to the Madrid Protocol. The Philippines acceded to the Madrid Protocol on 25 April 2012 by way of an executive agreement. This manner of accession was questioned on the basis that the Madrid Protocol is a treaty that requires ratification by the Philippine Senate. Foreign trademark proprietors may now breathe easy knowing that the Madrid Protocol is here to stay. A copy of the decision may be accessed here.