Remedies against IP Infringement

1. What are the remedies available to an IP right holder if he believes that his IP right is being infringed?

 

IP right holders may avail of civil (Regional Trial Court), administrative (Intellectual Property Office/Department of Trade and Industry) or criminal (Regional Trial Court) remedies against an infringer in cases of trademark infringemnent, copyright infringement and patent infringment.

 

2.  Which among the remedies available is the recommended remedy to take?

 

It highly depends on the nature and extent of the infringement. In some cases, a cease and desist letter may be sufficient and a formal action will be unnecessary so it will be best to contact us at info@bccslaw.com for specific advice. 

 

In case a formal action is warranted, we generally recommend a search and seizure operation where law enforcement agents immediately seize the the infringing products. A search and seizure operation is an incident to a criminal action and the infringer faces the threat of imprisonment and the payment of a fine. The IP rights holder may also claim damages in the criminal case because the civil aspect is deemed instituted when the criminal case is filed, unless a prior reservation has been made. A crmiminal case for patent infringement may, however, only be availabed of against repeat infringers. 

 

3.  What is the purpose of a preliminary investigation?

 

A criminal case is technically a case filed by the State against an accused. The preliminary investigation is the proceeding where a public prosecutor will determine whether a formal case should be filed against an accused before the appropriate trial court.

 

4. When do you have to initiate preliminary investigation proceedings for IP cases if a raid has been conducted?

 

If a raid has been conducted, preliminary investigation must be initiated within 60 days from the date of the search warrant issued. Preliminary investigation is commenced through the filing of an affidavit complaint before the public prosecutor which has jurisdiction over the territory where the infringement was committed. Otherwise, the search warrant may be quashed and the seized items released. 

 

5. When can you have the seized items destroyed?

 

Under the relevant regulations, seized items may be destroyed at any time after the filing of the formal complaint or information in court. 

 

6. Does the Intellectual Property Office have enforcement powers?

 

The Intellectual Property Office was recently granted enforcement powers which include visitorial or compliance powers against establishments that deal in counterfeit goods.