The IPOPHL recently released Amendments to the Revised Rules on Mediation. The salient points are as follows:

1. Mediation proceedings at the level of appeals with the Office of the Director General (ODG) are no longer mandatory.
2. The pre-mediation conference has been renamed as follows: Alternative Dispute Resolution (ADR) Conference.
3. At the ADR Conference and again if the mediation proceedings are terminated, the parties will be briefed of their option to submit the dispute to arbitration in accordance with existing IPOPHL arbitration rules and guidelines.
4. If the parties do not settle, once a Non-Settlement of Dispute has been furnished by the Bureau of Legal Affairs- Alternative Dispute Resolution Services (BLA-ADRS), the adjudication proceedings will immediately resume.

These amendments reflect the IPOPHL’s commitment to furnish IP rights holders with a variety of options in the settlement of IP-related disputes. These also show the BLA’s resolve to facilitate speedier resolution of cases.

The Amendments will take effect on March 29, 2024.

The firm, in behalf of its clients, Fast Retailing Co., Ltd., and COGI Pty. Ltd., recently cooperated with the Bureau of Customs in the seizure and destruction of counterfeit UNIQLO and Cotton On goods. These goods were seized from a shipment inspection conducted at the Subic Bay Port on July 2023. After prompt notification by the Customs authorities, members of the firm were able to certify that these goods were counterfeit, resulting in the destruction of 3,852 Cotton On and 2,161 Uniqlo items. This collaboration signals the joint effort of the private and public sectors to eliminate the proliferation of pirated goods, solidifying the status of the IPOPHL as a leader in ASEAN anti-piracy efforts.

On November 15, 2023, members of the firm joined longtime client, Fast Retailing Co., Ltd., in the IPOPHL Enforcement Summit. The IPOPHL Enforcement Summit is a three-day event showcasing the various initiatives of a number of notable brands, in conjunction with the government, in combating counterfeits. The Summit allowed the firm’s representatives, along with other mainstays in the field, to discuss best practices and future plans.

AVP Legal Atty. Ana Singcol, assisted by the firm’s Atty. Montini Felicilda, presented Fast Retailing’s anti-counterfeit actions, including the seizure of counterfeit items in coordination with the Bureau of Customs and the conduct of test buys to ascertain the authenticity of UNIQLO products found on e-commerce websites.

Atty. Singcol and Atty. Felicilda likewise met with the IPOPHL’s Director General Rowel S. Barba, among other key government officials, to discuss these initiatives moving forward, including the possibility of joining the IPOPHL’s Memorandum of Understanding with various e-commerce websites to address challenges in enforcement.

The firm congratulates the IPOPHL on a successful event and looks forward to more events furthering brand protection and awareness.

We support the creativity of artists and their works in all forms. Federis Law Firm is the proud Counsel of Georcelle Dapat-Sy, the most sought-after choreographer in the Philippines today, having created some of the most riveting dance choreographies performed by popular singers and actresses in sold-out concerts in the country.

Ms. Dapat-Sy is the first to record copyright for choreographic works at the IPOPHL. Copyright law recognizes choreographic works as protected intellectual creations under Sec. 172.1(e) of the IP Code. Ms. Dapat-Sy runs a successful dance studio, inspiring hundreds of young artists to follow their passion for dancing. Her decision to deposit for recordation many of her new choreographies is a personal statement that just like any other works, the creations of dancers must be recognized and protected under the copyright laws.

Complaints for trademark infringement were filed against the proprietors of Edlimbos Bicycle Trading and Starbright Bicycle Trading before the Prosecution Offices in Mandaue City and Cebu Province respectively. These follow the raids conducted by the firm, in coordination with the National Bureau of Investigation and Neo Zigma, Shimano’s official distributor in the Philippines, which yielded a total of 3,716 bicycle parts, fittings, and accessories bearing the mark “SHIMANO”.

These recent filings reflect Shimano’s resolve to do what it takes to minimize, if not eradicate, all counterfeiting activities in the Philippines. It will continue to work with NBI, Neo Zigma, and Federis Law Office in all investigations and raid actions against infringement of Shimano products wherever they occur in the Philippines.

Working alongside the agents of the National Bureau of Investigation’s Intellectual Property Rights Division, Atty. Montini Felicilda and Mr. Isaias Villanueva of Federis and Associates conducted two (2) simultaneous raids on May 25, 2023 against the warehouses of Starbright Bicycle Trading and Edlimbros Bicycles in Mandaue City, Cebu, suspected sellers of counterfeit SHIMANO products.

An assortment of 3,328 pieces of bicycle parts, fittings, and accessories bearing the mark “SHIMANO” were seized from Starbright Bicycle Trading while 388 bicycle parts, fittings, and accessories bearing the mark “SHIMANO” were confiscated from Edlimbros Bicycles.

The seized products were certified as counterfeit by a representative of Neo Zigma, Shimano’s official supplier in the Philippines, who was present at these raids. Complaints for infringement against Rolly Gica Gomez and Kirsten Sarena Lim, owners of Starbright Bicycle Trading and Edlimbros Bicycles, respectively, will follow.

These recent raids follow an earlier raid conducted on March 22, 2022 by SHIMANO against Hyx Enterprises of Guiguinto, Bulacan, which yielded 10,506 pieces of assorted counterfeit  SHIMANO bicycle parts.

This series of raids is a clear indication that SHIMANO is serious in its efforts to rid the Philippine market of counterfeit SHIMANO products.  It is closely monitoring the market for any counterfeiting activities and will continue to work closely with the NBI, Neo Zigma, and the Federis Law Office in implementing its anti-counterfeiting activity in the country.

Registration of Geographical Indications is now available in the Philippines. The Rules and Regulations on Geographical Indications (GI-RR), which issued on 5 October 2022, establishes a GI registration system. Any interested party may now apply to register a GI with the IP Office of the Philippines (IPOPHL).

Under this system GI is defined as any indication which identifies a good as originating in a territory, region or locality, where a given quality, reputation, or other characteristics of the good is essentially attributable to its geographical origin, and/or human factors.

GI receives protection in the Philippines only if registered under the GI-RR. A registered GI is protected against: (1) third party uses of geographical names other than the true place of origin in a manner that can mislead the public, (2) use of GI which falsely represents that the goods originate in another territory, (3) and use of a GI on a good that does not originate from the place indicated in the GI even if accompanied by the name of the place where the goods originates from, or even if accompanied by expressions such as “kind”, “type”, “style”, imitation”, “method”, “as produced in” or other similar qualifying terms, (4) use of a GI which constitutes an act of unfair competition within the meaning of Art. 10bis of the Paris Convention.

The Bureau of Trademarks will maintain a Register of Protected Geographical Indications. The registration includes publication and allows for the filing of third-party observations or objections.

Foreign applicants must be a national of, or a juridical entity organized in or has an effective commercial or industrial establishment in a country which is a party to the World Trade Organization or other international conventions concerning the protection of GI to which the Philippines is also a party.

Along with other standard application requirements, an applicant must submit a government certification validating the causal link between the specific quality, reputation or other characteristics of the goods and the geographic area which it originated and a technical information pertaining to the product specifications.

A foreign applicant will be required to submit a certification from the competent government agency in the country of origin that the GI is a registered or protected GI in that country.

The system will protect homonymous GI’s but may require owners to comply with certain conditions to differentiate one GI from another to avoid misleading the public. The principle of first in time first in right will apply. Full text of the rules is here: https://tinyurl.com/GIregulations/

Cheers to our Managing Partner, Mila Federis, for making it once again to the “Philippines Top 100 Lawyers 2022” and for being included in the Asian Legal Business “Asia Top 15 IP Lawyers 2022” ranking.

The Asian Legal Business ranking highlights the top 15 IP lawyers across Asia “who have consistently delivered high-quality IP work and set high standards in the IP space, while earning accolades from their colleagues, superiors, and clients.” Full details can be found here. Asian Legal Business Online is published by Thomson Reuters.

Known as the “A-List”, the Asia Business Law Journal ranking “is based on extensive research conducted and nominations received from in-house counsel in the Philippines and elsewhere, as well as Philippines-focused partners in international law firms.” Further details can be found here

Thank you Thomson Reuters, and thank you to all our clients that continue to enable our firm’s CULTURE OF SERVICE®.

• IPOPHIL will resume operations on May 18, 2020.

• Case hearings and trials are suspended until further notice.

• Extended Deadlines
  May 31, 2020 is the new deadline when original deadlines fell on March 16 to March 31, 2020.
  Original deadlines of April 1 to May 15, 2020 are extended for 60 days.

• No Extended Deadlines
  No extensions for submission of Third Party Observation and Adverse Information for utility model and design applications for PPR, medical/healthcare equipment/devices and pharmaceutical products urgently needed to address the COVID-19 health situation.
  Voluntary surrender of patents, utility models and industrial designs. The formal requirement on verification shall be complied with upon resumption of normal operations on May 18, 2020
  Priority Rights Claims. Applications claiming priority must be filed within the prescribed priority date.

• Online Filings for New Applications.  Only online filings are allowed during the lockdown.
  When online filings resulted in multiple identical online applications, applicants must notify IPOPHIL by email to [email protected]which application will be given due course. Absent this notice, the IPOPHIL will consider the first application.

• Fictitious Online Applications. Applications for inventions, utility models, and industrial designs containing highly-questionable entries (e.g. title, name, address) and/or unintelligible specification details not compliant with Sec. 32 of the IP Code, indicating lack of bona fide intention to seek protection, shall be considered fictitious applications. Such fictitious applications shall be filtered, removed, and removed from the system.

• Payments. Payment of filing fees for online filings is extended for 60 dates but the official filing date if the date that it was filed online.