Author: Pericles Casuela

Katherine Imperial promoted to partner

BCCSLAW is delighted to announce the promotion of Katherine R. Imperial to partner with effect on January 1, 2022.

Katherine obtained her law degree from the Ateneo de Manila University School of Law. She joined the firm as a senior associate to focus on domestic and international trademark registration, licensing and enforcement. She expanded her practice to cover data privacy, online media and fintech, advising various industry leaders in air transportation, e-commerce, streaming, networking, and finance.

BCCSLAW at INTA

BCCSLAW will attend the in-person mini conferences of the International Trademark Association at the following locations:

New York, New York, USA — Tuesday, November 16, 2021
811 7th Avenue, 53rd St, New York, NY 10019

Berlin, Germany —Wednesday, November 17, 2021
Inge-Beisheim-Platz 1, Berlin 10785 Germany

Los Angeles, California, USA —Thursday, November 18, 2021
900 West Olympic Boulevard, Los Angeles, CA 90015

We are PROUDLY FULLY VACCINATED TO KEEP YOU SAFETM.

BCCSLAW celebrates its 10th year as a leading legal service provider for IP, Technology and Data Privacy in the Philippines by continuing to act for the largest online retailer, the largest multimedia streaming service provider, the largest pharmaceutical company, the largest microblogging social networking service, the largest multimedia conglomerate, and the largest Filipino quick service restaurant chain, among other highly admired and innovative companies in the world including well-established FMGCs, airlines and automobile manufacturers. BCCSLAW has also expanded the scope of its trademark protection services to most of the Pacific Islands, including the Northern Marianas, Palau, Fiji, the Marshall Islands, and Micronesia.

Leo Singson joins BCCSLAW

We are pleased to announce that Leonardo Singson has joined our firm as Of Counsel for Special Corporate Transactions, Regulatory Compliance, and Immigration. Mr. Singson was formerly a Partner in the Corporate and Special Projects Department of Villaraza and Angangco. He obtained his law degree from the University of the Philippines.

Cancelled Events

Due to concerns relating to COVID-19, some conferences that we intended to attend, including the ICANN Community Forum in Cancun, the ASEAN IPA meeting in Jakarta, and the INTA annual meeting in Singapore, have been cancelled or postponed. Please visit our events calendar for updates on our attendance during upcoming conferences.

INTA Committee Membership

We are pleased to announce that the partners of our firm have been appointed to various committees of the International Trademark Association (INTA). Their committee memberships are as follows:

Andre Betita– Famous and Well-Known Marks

John Cabilao– Right of Publicity

Pericles Casuela– Data Protection

Joseph Sarmiento– Designs

Their appointments are effective beginning January 1, 2020, and will conclude on December 31, 2021.

Registration of Data Processing Systems (NPC Circular 17-01)

The National Privacy Commission recently issued NPC Circular 17-01 on the registration of data processing systems and notifications regarding automated decision-making.

Under the Circular, covered Personal Information Controllers and Personal Information Processors should complete Phase 1 of the process for the registration of data processing systems by September 9, 2017 and Phase 2 by March 8, 2018.

A copy of the circular can be downloaded here.

Seminars

Oops!

Our webmaster made a mistake and thought that we were serious about conducting seminars. It’s a bad idea, don’t you think? We bill you for practical advice that we will then give away for free in a seminar? Not fair.

We value our relationship with you and we do our best to keep our tools sharp, through actual experience, to help you traverse the complexities of the issues on which you come to us for advice. 

Thanks to the following (of course, among other things), you continue to regard us as your trusted advisor:

  • Our local trademark registration practice is growing at an amazing pace.  We now handle a portfolio of more than 2,200 trademarks, as shown in the records of the Philippine Intellectual Property Office. http://www.wipo.int/branddb/ph/en/
  • Privacy law is not an academic matter for us. We are regularly consulted to address real-life situations and have dealt with the regulators.
  • Like our trademark registration practice, our patent registration and litigation practice is also growing. More than 70 multinational patent holders in the pharmaceutical, biosciences, automotive, manufacturing, equipment testing and gaming industries have entrusted the protection of their innovations to our firm.
  • We embrace and enjoy the convenience of online commerce, online media and online financial transactions. That is why we are comfortable acting for the major players on the planet, including the biggest one, on matters ranging from intellectual property to licensing, privacy, e-commerce and telecommunications. We walk the talk and do our best to be like them. As a matter of fact, this site was designed, created, coded and continues to be managed by one of our firm’s founding partners.
  • Telecommunications- read about us in the papers when the next huge deal rolls out.
  • We have friends- intelligent ones.  We keep a network of correspondents worldwide with whom we have developed a strong sense of community, professionalism and competence.  That ensures that you get the correct advice from competent counsel overseas. 

Wine Not?

A local company applied for the mark “Champagne Bubbly” for non-wine goods – specifically, for perfume and other bath and personal care products. This encountered an opposition primarily hinged on “champagne” being supposedly only used for sparkling wine wholly produced from Champagne, France.
 
 
The Intellectual Property Office (IPO) took the contrary position and maintained that “Champagne Bubbly” is eligible for registration. While it is a fact that “champagne” is a controlled appellation of origin, wine is unrelated to and cannot in any way be confused with the products on which Applicant intends to use the contested mark. The decision discussed the basics of trademarks laws: that trademark laws were born out of the need to point out the origin and ownership of goods. The IPO mentioned that without a doubt, the Champagne region is known for its wine and not for perfume and other bath and personal care products. Ergo, there can be no confusion as to origin. 
 
Should the IPO have considered dilution? 

FAQ on the NPC Rules of Procedure

Who may file a complaint?

1. The person claiming to be the subject of the privacy breach/violation;
2. His or her authorized representative; or
3. the National Privacy Commission (NPC), on its own initiative
(Sec. 3, NPC Rules)
 
Can someone not personally affected, and likewise not an authorized representative, file a complaint?

No. However, he or she may opt for either of the following:
1. Request for an advisory opinion; or
2. Inform the NPC on the data privacy concern
(Sec. 3, NPC Rules)
 
Will filing a complaint or requesting an advisory opinion require the payment of fees?
 
Yes. Otherwise, it will not be entertained. (Sec. 5, NPC Rules)
 
Is the rule on filing fees absolute?
 
No. The following instances are the exceptions to the rule on filing fees:
1. The complainant is the government, or any agency or instrumentality thereof, including government-owned and controlled corporations (excluding, however, GOCCS incorporated under the Corporation Code);
2. The complainant is an indigent or pauper litigant under the Rules of Court, i.e. one who has no money or property sufficient and available for food, shelter, and basic necessities for himself and his family (Sec. 21, Rule 3, Rules of Court); or one whose gross income and that of his immediate family do not exceed an amount double the monthly minimum wage of an employee (Sec. 19, Rule 141, Rules of Court) and do not own real property with fair market value exceeding PhP 300,000.00.
3. NPC waives the requirement for good cause shown.
 
Where should the complaint be filed?
 
The complaint can be filed with any office of the NPC (Sec. 7, NPC Rules). Note that the Rules are permissive as to which office the same can be filed and does not limit the filing of the same to the
office located in the same locality/region as that of the residence of the complainant. Note, also, that while “any office” is mentioned, at present, the NPC has only one existing office, located in Quezon City. Nonetheless, electronic filing is allowed via e-mail to complaints@privacy.gov.ph, with a copy furnished to all other parties to the complaint (Sec. 8, NPC Rules).
 
What shall be the form and contents of the complaint?
 
It shall be in writing, verified and under oath, or contained in a sworn affidavit. The Efficient Use of Paper Rule must be complied with. In addition, the following shall be included:
 
* a brief narration of the material facts;
* supporting documents (original or certified true copy) and testimonial evidence;
* specific violation of the Data Privacy Act or related issuances;
* particular acts or omissions amounting to the alleged data privacy violations; and
* any and all correspondence with the respondent on the matter complained of, including a statement of the action taken by the latter to address
the matter, if any. 
(Sec. 10, NPC Rules)
 
What will happen next upon filing the complaint?
 
The case will be assigned by the NPC to an investigating officer for evaluation. Said officer will then recommend any of the following:
1. outright dismissal,
2. referral to the respondent for comment,
3. further monitoring,
4. that the complaint be treated as a request for an advisory opinion, or
5. indorsement to the proper government agency.
(Sec. 11, NPC Rules)
 
If the allegations are deemed to be sufficient, the investigating officer shall issue an Order to Confer for Discovery within 10 days from receipt of said Order. Whatever is agreed upon during such conference shall then be reduced into a Discovery Conference Report to be submitted to the NPC within five days from conclusion of the conference. (Sec. 13, NPC Rules)
 
Thereafter, the respondent/s will be directed, via an Order, to submit a Comment to the Complaint within 10 days from receipt of said Order. (Sec. 15, NPC Rules)
 
If the investigating officer deems it necessary, he or she may then require the complainant to file a Reply within 10 days, and the respondent, a Rejoinder, also within 10 days. (Sec. 15, NPC Rules)
 
The investigating officer will then proceed to investigate the circumstances surrounding the alleged privacy violation (Sec. 16, NPC Rules) and, thereafter, submit a fact-finding report, with corresponding recommendations, to the Office of the Commissioner (Sec. 18, NPC Rules).
 
The NPC will review the evidence presented, together with the fact-finding report. It may either:
1. promulgate a Decision; or
2. order the conduct of a clarificatory hearing.
 
The Decision may include enforcement orders. (Sec. 21 & 22, NPC Rules)
 
Is the Decision of the NPC appealable?
 
Yes. The party adversely affected may file an appeal within 15 days from receipt of a copy of the Decision. Otherwise, the same will become final and executory. (Sec. 30, NPC Rules)

Data Privacy in the Time of Leaks and Hackers

#Comeleak became a trending topic early in 2016 when hackers exposed the data of over 55 million registered voters. The wealth of information leaked included crucial data that could enable identity theft – including full names, birthdays, addresses, height, weight, and passport details, among others.
 
Roughly a year after, the National Privacy Commission (NPC) released a press statement singling out Chairman Andres Bautista of the Commission on Elections (COMELEC) as the lone officio personally liable for the leak. The NPC posits that Bautista is liable under the Data Privacy Act of 2012 for failing to put data privacy policies in place. Specifically, NPC recommends the filing of criminal charges against Bautista based on Section 26, which provides for a penalty of imprisonment for one to three years and a fine ranging from Php500,000 to Php2,000,000.00 for accessing of personal information due to negligence, and a penalty of imprisonment for three to six years and a fine ranging from Php500,000 to Php4,000,000.00 for accessing sensitive personal information due to negligence.
 
COMELEC, for its part, issued a statement maintaining that data breach is not a new phenomenon, and that it has been following generally accepted standards and international best practices regarding technology-related activities. In his personal Facebook page, Bautista shared a December 2016 news article pertaining to Yahoo! data security issues, wherein the international tech-giant admitted that over one billion user accounts have been hacked. Indeed, “Comeleak” is just one of the many “leaks” surfacing in the political arena – with a number of otherwise privileged information/communication being exposed via “WikiLeaks”, among others.
 
At present, there is yet no landmark Supreme Court decision tackling the Data Privacy Act. To what extent can individuals be protected? What measures are expected to be taken? If even tech giants are vulnerable to hackers, is anyone really safe? Where do we draw the line in establishing liability? It would be interesting to monitor the jurisprudential development of data privacy laws as this case progresses.
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Email: info@bccslaw.com