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PHILIPPINE ACCESSION TO THE MADRID PROTOCOL CONSTITUTIONAL; PROTOCOL NOT VIOLATIVE OF THE IP CODE

Upholding the constitutionality of President Benigno S. Aquino III’s ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol), the Supreme Court En Banc speaking through Justice Lucas Bersamin held that the Protocol is an executive agreement that does not require the concurrence of the Senate. In a decision dated July 19, 2016 ordering the dismissal of the petition for Special Civil Action for Certiorari filed by Intellectual Property Association of the Philippines (IPAP), the Court further held that “there is no conflict between the Madrid Protocol and the IP Code”, as “[t]he method of registration through the IPOPHL, as laid down by the IP Code, is distinct and separate from the method of registration through the WIPO, as set in the Madrid Protocol.”

The Madrid Protocol is an international agreement that establishes a simplified procedure for a trademark owner to apply for protection of a trademark in each of the 97 countries that are members to the agreement. It allows an applicant to file a single application, in one language, through one national IP Office, such as the IPOPHL, instead of filing applications in each country where protection is sought. On March 27, 2012, President Aquino signed the Philippines’ Instrument of Accession to the Protocol, and the Protocol entered into force in the country on July 25, 2012.

 

On December 14, 2012, representing themselves as a Philippine corporation composed of more than 100 leading law firms and individual practitioners in the realm of intellectual property law, the IPAP challenged the determination made by the Department of Foreign Affairs (DFA) Secretary that the Protocol was an executive agreement which only required ratification by the President. It argued that the Protocol was a treaty that required the concurrence of the Senate. Alternatively, IPAP argued that even if accession is declared constitutional, the Protocol’s implementation was unconstitutional because it conflicts with Section 125 of Republic Act No. 8293, or the Intellectual Property Code of the Philippines (IP Code). According to IPAP, Section 125 of the IP Code requires that foreign trademark owners seeking protection of their trademarks in the Philippines must file their applications with the IPO through a resident agent.

Speaking on the Supreme Court ruling, IPOPHL Director General Josephine R. Santiago lauded the Decision of the Court and noted that the ruling impacts positively on “the IPOPHL’s thrust in enhancing and streamlining procedures for IP protection as the Madrid Protocol paved the way for remarkable increases in trademark filings from both residents and non-residents. This alternative approach opens new and more opportunities for local IP practitioners. But more importantly, the Office sees the ruling as an implied message of the Court’s openness to making IP a tool for economic development.”

The Supreme Court’s ruling upholding PH accession to the Madrid Protocol is also seen as supportive of the initiative of the national government to promote the modernization and globalization of the Micro, Small and Medium Enterprises (MSMEs). The Madrid Protocol provides a platform for Filipino entrepreneurs to penetrate and expand their market overseas, without fear of their brands being copied or counterfeited. With the confirmation that the Philippines’ accession to the Protocol is legal and constitutional, more Filipino IP owners may avail of this simplified procedure to protect their brands abroad, boosting the competitive advantage of PH products in the global arena. As a further consequence, more global brands would also now be enticed to enter the Philippine market, knowing that it would be easier to protect their trademarks here. This would in turn make world-class quality products more readily available to the Filipino consumers. The recent ruling therefore provides a conducive business environment for both local and foreign brands.

A copy of the Supreme Court Decision is available here.

 

For more information on applying for trademark protection under the Madrid Protocol, please visit our Madrid Protocol page, available here.