IP Association V Ochoa

9/20/2020 SUPREME COURT REPORTS ANNOTATED VOLUME 797 9/20/2020 SUPREME COURT REPORTS ANNOTATED VOLUME 797
Department of Foreign Affairs; Jurisdiction; In

the Philippines, the Department of Foreign Affairs
(DFA), by virtue of Section 9, Executive Order (EO)
No. 459, is initially given the power to determine
whether an agreement is to be treated as a treaty or as
an executive agreement.—In the Philippines, the DFA,
by virtue of Section 9, Executive Order No. 459, is
initially given the power to determine whether an
agreement is to be treated as a treaty or as an
executive agreement. To determine the issue of
whether DFA Secretary Del Rosario gravely abused
G.R. No. 204605. July 19, 2016.* his discretion in making his determination relative to
the Madrid Protocol, we review the jurisprudence on
INTELLECTUAL PROPERTY ASSOCIATION the nature of executive agreements, as well as the
OF THE PHILIPPINES, petitioner, vs. HON. subject matters to be covered by executive
PAQUITO OCHOA, in his capacity as Executive agreements.
Secretary, HON. ALBERT DEL ROSARIO, in Mercantile Law; Trademarks; Copyrights;
his capacity as Secretary of the Department of Executive Agreements; The registration of trademarks
Foreign Affairs, and HON. RICARDO and copyrights have been the subject of executive
BLANCAFLOR, in his capacity as the Director agreements entered into without the concurrence
General of the Intellectual Property Office of the
Philippines, respondents.
_______________
Remedial Law; Civil Procedure; Locus Standi; * EN BANC.

Words and Phrases; Legal standing refers to “a right
of appearance in a court of justice on a given
question.”—Legal standing refers to “a right of
appearance in a court of justice on a given question.” 135
According to Agan, Jr. v. Philippine International Air
Terminals Co., Inc., 402 SCRA 612 (2003), standing is
“a peculiar concept in constitutional law because in VOL. 797, JULY 19, 2016 135
some cases, suits are not brought by parties who have Intellectual Property Association of the
been personally injured by the operation of a law or Philippines vs. Ochoa
any other government act but by concerned citizens,
taxpayers or voters who actually sue in the public
interest.” of the Senate.—The registration of trademarks
and copyrights have been the subject of executive
central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 1/132 central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 2/132
agreements entered into without the concurrence of under the Madrid Protocol are still examined
the Senate. Some executive agreements have been according to the relevant national law. In that regard,
concluded in conformity with the policies declared in the Intellectual Property Office of the Philippines
the acts of Congress with respect to the general (IPOPHL) will only grant protection to a mark that
subject matter. meets the local registration requirements.—The IPAP
Same; Intellectual Properties; Trademarks; misapprehends the procedure for examination under
Madrid Protocol; Department of Foreign Affairs (DFA) the Madrid Protocol. The difficulty, which the IPAP
Secretary Del Rosario’s determination and treatment illustrates, is minimal, if not altogether inexistent.
of the Madrid Protocol as an executive agreement, The IPOPHL actually requires the designation of the
being in apparent contemplation of the express state resident agent when it refuses the registration of a
policies on intellectual property as well as within his mark. Local representation is further required in the
power under Executive Order (EO) No. 459, are submission of the
upheld.—DFA Secretary Del Rosario’s determination

and treatment of the Madrid Protocol as an executive

agreement, being in apparent contemplation of the
express state policies on intellectual property as well 136
as within his power under Executive Order No. 459,
are upheld. We observe at this point that there are no
136 SUPREME COURT REPORTS
hard and fast rules on the propriety of entering into a
ANNOTATED
treaty or an executive agreement on a given subject as
an instrument of international relations. The primary Intellectual Property Association of the
consideration in the choice of the form of agreement is Philippines vs. Ochoa
the parties’ intent and desire to craft their
international agreement in the form they so wish to Declaration of Actual Use, as well as in the
further their respective interests. The matter of form submission of the license contract. The Madrid
takes a back seat when it comes to effectiveness and Protocol accords with the intent and spirit of the IP
binding effect of the enforcement of a treaty or an Code, particularly on the subject of the registration of
executive agreement, inasmuch as all the parties, trademarks. The Madrid Protocol does not amend or
regardless of the form, become obliged to comply modify the IP Code on the acquisition of trademark
conformably with the time-honored principle of pacta rights considering that the applications under the
sunt servanda. The principle binds the parties to Madrid Protocol are still examined according to the
perform in good faith their parts in the agreements. relevant national law. In that regard, the IPOPHL
Same; Same; Same; Same; The Madrid Protocol will only grant protection to a mark that meets the
does not amend or modify the Intellectual Property local registration requirements
Code of the Philippines (IP Code) on the acquisition of
trademark rights considering that the applications .
BRION, J., Separate Concurring Opinion:
Madrid Protocol; Executive Agreements; View that create laws that are binding in the Philippines, which
the Madrid Protocol is valid and effective in the the Executive has
Philippines as an executive agreement that the

President can enter into without need of Senate

concurrence. The reason, stated at its simplest, is that
the President was merely implementing a policy 137
previously approved through a law by Congress, when
he signed the Madrid Protocol as an executive
VOL. 797, JULY 19, 2016 137
agreement.—Section 21, Article VII of the 1987
Constitution is a reflection of this setup. It is a Intellectual Property Association of the
carefully worded provision in the Constitution made Philippines vs. Ochoa
to ensure that the President’s prerogative in the
conduct of international affairs is subject to the check
the duty to implement and enforce. The
and balance by the Senate, requiring that the Senate
Judiciary, on the other hand, resolves conflicts that
first concur in international agreements that the
may arise from the implementation of these laws and,
President enters into before they take effect in the
on occasion, nullifies acts of government (whether
Philippines. Under this regime, the Madrid Protocol is
legislative or executive) that have been made with
valid and effective in the Philippines as an executive
grave abuse of discretion under the Court’s expanded
agreement that the President can enter into without
jurisdiction in Article VIII, Section 1 of the 1987
need of Senate concurrence. The reason, stated at its
Constitution. That each branch of government is
simplest, is that the President was merely
supreme in its own sphere does not, however, mean
implementing a policy previously approved through a
that they no longer interact with or are isolated from
law by Congress, when he signed the Madrid Protocol
one another in the exercise of their respective duties.
as an executive agreement. The obligations under the
To be sure, one branch cannot usurp the power of
Madrid Protocol are thus valid and effective in the
another without violating the principle of separation
Philippines for having been made pursuant to the
of powers, but this is not an absolute rule; rather, it is
exercise of the President’s executive powers.
a rule that operates hand in hand with arrangements
Political Law; Separation of Powers; View that the that allow the participation of one branch in another
Philippine government operates under the branch’s action under the system of checks and
complementary principles of separation of powers and balances that the Constitution itself provides. The
checks and balances.—The Philippine government Constitution in fact imposes such joint action so that
operates under the complementary principles of one branch can check and balance the actions of the
separation of powers and checks and balances. The other, to ensure public accountability and guard
three functions of government are concentrated in its against the tyrannical concentration of power.
three great branches, with each branch supreme in its
Same; Treaties; View that while a treaty ratified
own sphere: the Legislature possesses the power to
by the President is binding upon the Philippines in the
international plane, it would need the concurrence of Philippines vs. Ochoa

the legislature before it can be considered as valid and
effective in the Philippine domestic jurisdiction.—
an international agreement concluded between
While a treaty ratified by the President is binding
States in written form and governed by International
upon the Philippines in the international plane, it
Law, whether embodied in a single instrument or in
would need the concurrence of the legislature before it
two or more related instruments and whatever its
can be considered as valid and effective in the
particular designation. The Philippines was a
Philippine domestic jurisdiction. Prior to and even
signatory of the Vienna Convention at the time the
without concurrence, the treaty, once ratified, is valid
1986 Constitutional Commission deliberated on and
and binding upon the Philippines in the international
crafted the 1987 Constitution. Deliberations of the
plane. But in order to take effect in the Philippine
Constitutional Commission even referred to the
domestic plane, it would have to first undergo
Vienna Convention on treaties while discussing what
legislative concurrence as required under the
is now Article VII, Section 21.
Constitution.
Same; Executive Agreements; View that an
Same; International Agreements; View that in the
executive agreement, when examined under the
international sphere, the term international agreement
definition of what constitutes a treaty under the
covers both a treaty, an executive agreement, or by
Vienna Convention on Treaties, falls within the
whatever name or title an agreement may be called, as
Convention’s definition.—Despite the attempt in the
long as it is concluded between States, is in written
1987 Constitution to ensure that all international
form, and is governed by international law.—In the
agreements, regardless of designation, be the subject
international sphere, the term international
of Senate concurrence, the Constitution likewise
agreement covers both a treaty, an executive
acknowledged that the President can enter into
agreement, or by whatever name or title an
executive agreements that the Senate no longer needs
agreement may be called, as long as it is concluded
to concur in. An executive agreement, when
between States, is in written form, and is governed by
examined under the definition of what constitutes a
international law. Thus, the Vienna Convention on
treaty under the Vienna Convention on Treaties, falls
the Law on treaties provide: Article 2. Section 1(a)
within the Convention’s definition. An executive
“Treaty” means
agreement as used in Philippine law is definitely “an
international agreement concluded between States in
written form and governed by International Law,
whether embodied in a single instrument or in two or
138 more related instruments and whatever its particular
designation[.]” The confusion that the seemingly
138 SUPREME COURT REPORTS differing treatment of executive agreement brings,
ANNOTATED however, is more apparent than real when it is
considered that both instruments — a treaty and an
Intellectual Property Association of the
executive agreement — both have constitutional Treaties are international agreements that need
recognition that can be reconciled: an executive concurrence from the Senate. They do not originate
agreement is an exception to the Senate concurrence solely from the President’s duty as the executor of the
requirement of Article VII, Section 21 of the 1987 country’s laws, but from the shared function that the
Constitution; it is an international agreement that Constitution mandated between the President and the
does not need Senate concurrence to be valid and Senate under Article VII, Section 21 of the 1987
effective in the Philippines. Its exceptional character Constitution. Between the two, a treaty exists on a
arises from the reality that the Executive possesses higher plane as it carries the authority of the
the power and duty to execute and implement laws President and the Senate. Treaties, which have the
which, when considered together with the President’s impact of statutory law in the Philippines, can amend
foreign affairs powers, authorizes the President to or prevail over prior statutory enactments. Executive
agree to international obligations that he can already agreements — which are at the level of implementing
implement as Chief Executive of the Philippine rules and regulations or administrative orders in the
government. In other words, the President can ratify domestic sphere — have no such effect. These cannot
as executive agreements those obligations that he can contravene or amend statutory enactments and
already execute and implement because they already treaties.
carry prior legislative authorization, or have already Same; Same; Same; International Agreements;
gone through the View that when an international agreement merely
implements an existing agreement, it is properly in the

form of an executive agreement. In contrast, when an

international agreement involves the introduction of a
139 new subject matter or an amendment of existing
agreements or laws, then it should properly be in the
form of a treaty.—When an international agreement
VOL. 797, JULY 19, 2016 139
merely implements an existing agreement, it is
Intellectual Property Association of the properly in the form of an executive agreement. In
Philippines vs. Ochoa contrast, when an international agreement involves
the introduction of a new subject matter or an
amendment of existing agreements or laws, then it
treaty-making process under Article VII, Section
should properly be in the form of a treaty. Otherwise,
21 of the 1987 Constitution.
the enforceability of this international agreement in
Same; Same; Treaties; View that treaties, which the domestic sphere should be carefully examined, as
have the impact of statutory law in the Philippines, it carries no support from the legislature. To
can amend or prevail over prior statutory enactments. emphasize, should an executive agreement amend or
Executive agreements — which are at the level of contravene statutory enactments and treaties, then it
implementing rules and regulations or administrative is void and cannot be enforced in the Philippines; the
orders in the domestic sphere — have no such effect.— Executive who issued it had no authority to issue an
instrument that is contrary to or outside of a can file for the international recognition of his
legislative act or a treaty. In this sense, an executive trademark with the same office.
agreement that creates new obligations or amends Same; Same; Same; Trademarks; View that the
existing ones, has been issued Madrid Protocol does not replace the procedure for the
registration of trademarks under the Intellectual

Property Code of the Philippines (IP Code); neither

does it impose or change the substantive requirements
140 for the grant of a trademark.—A foreign national may,
in applying for an international registration of his
trademark, include the Philippines as among the
jurisdictions with which he seeks to register his
ANNOTATED
trademark. Upon receipt of his application from the
Intellectual Property Association of the IPO of his country of origin, the WIPO would forward
Philippines vs. Ochoa the application to the Philippine Intellectual Property
Office (IPOPHL). The IPOPHL would then conduct a
with grave abuse of discretion amounting to a substantive examination of the application, and
lack of or excess of jurisdiction, and can be judicially determine whether the trademark may be registered
nullified through judicial review. under Philippine law. Note, at this point, that the
Madrid Protocol does not replace the procedure for the
Same; Same; Madrid Protocol; View that under registration of trademarks under the IP Code; neither
the Madrid System, a person can register his does it impose or change the substantive
trademark internationally by filing for an requirements for the grant of a trademark. Whether
international registration of his trademark in one of through the mechanism under the Madrid Protocol or
the contracting parties (CP) under the Madrid System. the IP Code, the requirements for a successful
—Applying these standards to the contents of the trademark registration remain the same.
Madrid Protocol, I find that the obligations in this
international agreement may be the subject of an Same; Same; Same; View that the trademark
executive agreement. The Madrid Protocol registration filed through the Madrid Protocol is valid
facilitates the Philippines’ entry to the Madrid for ten (10) years from the date of registration, the
System. Under the Madrid System, a person can same period of protection granted to registrants
register his trademark internationally by filing

for an international registration of his

trademark in one of the contracting parties (CP)
under the Madrid System. Once a person has 141
filed for or acquired a trademark with the IPO
in his country of origin (that is also a CP), he
VOL. 797, JULY 19, 2016 141

Intellectual Property Association of the already pointed out, the Madrid Protocol merely
Philippines vs. Ochoa allows the WIPO’s International Bureau to file an
application before the IPOPHL on behalf of the
foreign national that filed for an international
under the Intellectual Property Code of the
registration before the WIPO. This practice is not
Philippines (IP Code).—Upon receipt and examination
prohibited under the IP Code, and may even be
of this application, the IPOPHL Still possesses the
arguably encouraged under the declaration of state
discretion to grant or deny the same. The applicant or
policy in the IP Code. Notably, the IP Code does not
registrant (whether through the Madrid Protocol or
require personal filing of the application for
the traditional means under the IP Code) would also
trademark registration; neither does it prohibit the
still have to file a declaration of actual use of mark
submission of the application on behalf of an
with evidence to that affect within three years from
applicant. Indeed, the registration process under the
the filing date of the application, otherwise, its
Madrid Protocol would, in effect, dispense with the
registration shall be cancelled. The trademark
requirement of naming a domestic representative for
registration filed through the Madrid Protocol is valid
foreign nationals not domiciled in the Philippines
for ten years from the date of registration, the same
upon filing his application for trademark registration,
period of protection granted to registrants under the
as mandated in Section 124 of the IP Code.
IP Code.
Same; Same; Same; View that the registration
process under the Madrid Protocol would, in effect,
dispense with the requirement of naming a domestic
142
representative for foreign nationals not domiciled in
the Philippines upon filing his application for
trademark registration, as mandated in Section 124 of 142 SUPREME COURT REPORTS
the Intellectual Property Code of the Philippines (IP ANNOTATED
Code).—Since the Executive is already authorized to Intellectual Property Association of the
create implementing rules and regulations that Philippines vs. Ochoa
streamline the trademark registration process
provided under the IP Code, then the Philippines’
obligation under the Madrid Protocol may be Same; Same; Same; View that the Madrid
implemented without subsequent Senate concurrence. Protocol, in streamlining the procedure for registering
This obligation to recognize applications filed through trademarks of foreign nationals, in effect directed the
the WIPO already has prior legislative authorization, domestic representative’s participation where
given that the Executive can, in the course of necessary and merely postponed the naming of a
implementing Section 124 of the IP Code, draft domestic representative requirement under Section 124
implementing rules that streamline the procedure of the Intellectual Property Code of the Philippines (IP
without changing its substantive aspects. As I have Code).—A domestic representative is still integral to

the process of registering a trademark in the Madrid Protocol; Trademarks; View that through
Philippines, All foreign nationals not domiciled in the the Philippines’ accession to the Madrid Protocol and
Philippines would still have to name a domestic hence, adoption of the Madrid System for the
representative in the course of his application for International Registration of Marks (Madrid System),
registration, otherwise, his trademark would, at the an applicant who is not domiciled in the Philippines
very least, be cancelled after three years of nonuse. but a national of a Contracting Party is now given the
The Madrid Protocol, in streamlining the procedure option to file his application in the Intellectual
for registering trademarks of foreign nationals, in Property (IP) Office of his own home
effect directed the domestic representative’s
participation where necessary and merely postponed
the naming of a domestic representative requirement
under Section 124 of the IP Code. The Protocol did not
all together forego with it. 143

VOL. 797, JULY 19, 2016 143
PERLAS-BERNABE, J., Concurring Opinion:
Intellectual Property Code of the Philippines; Philippines vs. Ochoa
Trademarks; View that Section 122 of Republic Act
(RA) No. 8293 or the “Intellectual Property Code of the country and thereupon, secure protection for his
Philippines” (IP Code) provides that “[t]he rights in a mark.—Through the Philippines’ accession to the
mark shall be acquired through registration made Madrid Protocol and hence, adoption of the Madrid
validly in accordance with the provisions of this System for the International Registration of Marks
law.”—Section 122 of Republic Act No. (RA) 8293 or (Madrid System), an applicant who is not domiciled in
the “Intellectual Property Code of the Philippines” (IP the Philippines but a national of a Contracting Party
Code) provides that “[t]he rights in a mark shall be is now given the option to file his application in the IP
acquired through registration made validly in Office of his own home country and thereupon, secure
accordance with the provisions of this law.” For protection for his mark.
applicants not domiciled in the Philippines, Section
124 of the IP Code requires “[t]he appointment of an Same; Same; View that Article 5 of the Madrid
agent or representative”: Section 124. Requirements of Protocol which provides that “any Office of a
application.—124.1. The application for the Contracting Party which has been notified by the
registration of the mark shall be in Filipino or in International Bureau of an extension to that
English and shall contain the following: x x x x (e) The Contracting Party x x x shall have the right to declare
appointment of an agent or representative, if the in a notification of refusal that protection cannot be
applicant is not domiciled in the Philippines. granted in the said Contracting Party to the mark
which is the subject of such extension.”—The non-
domiciliary’s filing of an application in the IP Office of
his home country is only the initial step to secure 144

protection for his mark. Significantly, the application,
after having been formally examined by the WIPO,
has to be referred to the national or regional IP Office
ANNOTATED
of the country in which the applicant seeks protection
for the conduct of substantive examination. Intellectual Property Association of the
Ultimately, it is the latter office (in our case the Philippines vs. Ochoa
Intellectual Property Office of the Philippines
[IPOPHL]) which decides to accept or refuse any substantive alterations to our local law on
registration. This is reflected in Article 5 of the trademarks, i.e., the IP Code.
Madrid Protocol which provides that “any Office of a
Contracting Party which has been notified by the Madrid Protocol; Trademarks; View that there is
International Bureau of an extension to that no merit in petitioner Intellectual Property Association
Contracting Party x x x shall have the right to declare of the Philippines’ (IPAP’s) supposition that the
in a notification of refusal that protection cannot be Madrid Protocol conflicts with Section 125 of the
granted in the said Contracting Party to the mark Intellectual Property Code of the Philippines (IP Code).
which is the subject of such extension.” —Even without delving into the issue of its legal
standing, there is no merit in petitioner Intellectual
Intellectual Property Code of the Philippines; Property Association of the Philippines’ supposition
Trademarks; View that the grounds for refusal of that the Madrid Protocol conflicts with Section 125 of
protection enumerated in the Paris Convention, the IP Code. As the ponencia aptly pointed out, “[t]he
specifically under Article 6quinquies (B) thereof, are Madrid Protocol does not amend [or] modify the IP
substantially the same grounds for refusal for Code on the acquisition of trademark rights[,]
registration of marks as enumerated under Section considering that the applications under the Madrid
123.1 of the Intellectual Property Code of the Protocol are still examined according to the relevant
Philippines (IP Code).—It bears stressing that the national law,” and “in [this] regard, the IPOPHL will
grounds for refusal of protection enumerated in the only grant protection to a mark that meets the local
Paris Convention, specifically under Article registration requirements.”
6quinquies (B) thereof, are substantially the same
grounds for refusal for registration of marks as Same; Same; View that the Madrid Protocol only
enumerated under Section 123.1 of the IP Code. This provides for a centralized system of international
further strengthens the classification of the Madrid registration of marks, which, in no way, denies the
Protocol as a mere executive agreement and not as a authority of the Philippines, through the Intellectual
treaty, considering that it does not introduce Property Office of the Philippines (IPOPHL), to
substantively examine and consequently, grant or
reject an application in accordance with our own laws
and regulations.—The Madrid Protocol only provides
for a centralized system of international registration

of marks, which, in no way, denies the authority of the jurisdiction on the part of any branch or
Philippines, through the IPOPHL, to substantively instrumentality of the government.” This
examine and consequently, grant or reject an constitutional mandate is sparse in its qualification of
application in accordance with our own laws and the nature of the action of “any branch or
regulations. Hence, it does not involve a change in our instrumentality of the government.” Whether this
national policy, which necessitates the need for a Court may limit it only to judicial or quasi-judicial
treaty. Its attribution as an executive agreement was actions will be constitutionally suspect. The
therefore correct, negating the existence of any grave requirement is that there should be, in a justiciable
abuse of discretion tantamount to lack or excess of case, a clear showing that there is “grave abuse of
jurisdiction. discretion amounting to lack or excess of jurisdiction.”
Political Law; Delegation of Powers; International

Agreements; View that I am not prepared to grant that
LEONEN, J., Separate Concurring Opinion:
the President can delegate to the Secretary of the
Department of Foreign Affairs (DFA) the prerogative to
Constitutional Law; Judicial Power; View that
determine whether an international agreement is a
judicial power includes “the duty . . . to determine
treaty or an executive agreement.—I am not prepared
whether or not there has been a grave abuse of
to grant that the President can delegate to the
discretion amounting to lack or excess of jurisdiction
Secretary of the Department of Foreign Affairs the
on the part of any branch or instrumentality of the
prerogative to determine whether an international
government.”—The procedural vehicle
agreement is a treaty or an executive agreement. Nor
notwithstanding, the Rules of Court cannot limit the
should this case be the venue to declare that all
powers granted to this Court by the Constitution
executive agreements need not undergo senate
itself.
concurrence. Tracing the history of Article VII,
Section 21 of the Constitution reveals, through the
“[c]hanges or retention of language and syntax[,]” its
congealed meaning. The pertinent constitutional
145 provision has evolved into its current broad
formulation to ensure that the power to enter into a
VOL. 797, JULY 19, 2016 145 binding international agreement is not concentrated
on a single government department.
Philippines vs. Ochoa Same; Treaties; View that the power and
responsibility to enter into treaties is now shared by
the executive and legislative departments.—This
Recalling Article VIII, Section 1 of the 1987 Court, in the recent case of Saguisag v. Ochoa, Jr.,
Constitution, judicial power includes “the duty . . . to 779 SCRA 241 (2016), characterized this exception as
determine whether or not there has been a grave having “left a large margin of discretion that the
abuse of discretion amounting to lack or excess of
President could use to bypass the Legislature an agreement requires senate concurrence not only
altogether.” This Court noted this as “a departure runs counter to the principle of checks and balances;
from the 1935 Constitution, which explicitly gave the it may also render the constitutional requirement of
President the power to enter into treaties only with senate concurrence meaningless.
the concurrence of the [National Assembly].” As in the Same; International Agreements; Presidency; View
1935 Constitution, this exception is no longer present that as long as the subject matter of the agreement
in the current formulation of the provision. The power covers political issues and national policies of a more
and responsibility to enter into treaties is now shared permanent character, the international agreement
by the executive and legislative departments. must be concurred in by the Senate.—Article VII,
Furthermore, the role of the legislative Section 21 does not limit the requirement of senate
concurrence to treaties alone. It may cover other

international agreements, including those classified

as executive agreements, if: (1) they are more
146 permanent in nature; (2) their purposes go beyond the
executive function of carrying out national policies
and traditions; and (3) they amend existing treaties or
statutes. As long as the subject matter of the
ANNOTATED
agreement covers political issues and national policies
Intellectual Property Association of the of a more permanent character, the international
Philippines vs. Ochoa agreement must be concurred in by the Senate.
Intellectual Property Code of the Philippines;
department is expanded to cover not only treaties Madrid Protocol; View that it may be unnecessary in
but international agreements in general as well. this case to determine whether the Madrid Protocol
Same; Same; Presidency; View that an amends Section 125 of the Intellectual Property Code
interpretation that the executive has unlimited of the Philippines (IP Code).—It may be unnecessary
discretion to determine if an agreement requires senate in this case to determine whether the Madrid Protocol
concurrence not only runs counter to the principle of amends Section 125 of the Intellectual Property Code.
checks and balances; it may also render the The Solicitor General makes a persuasive argument
constitutional requirement of senate concurrence that the accession to this international agreement
meaningless.—Having an option does not necessarily does not per se remove the possibility of appointing a
mean absolute discretion on the choice of resident agent. Petitioner likewise acknowledges that
international agreement. There are certain national domestic requirements regarding local representation
interest issues and policies covered by all sorts of may be reserved by the executive upon accession to
international agreements, which may not be dealt the Madrid Protocol.
with by the President alone. An interpretation that

the executive has unlimited discretion to determine if

147 Foreign Affairs, does not require the concurrence

of the Senate.

VOL. 797, JULY 19, 2016 147
Antecedents
Philippines vs. Ochoa The Madrid System for the International
Registration of Marks (Madrid System), which is
SPECIAL CIVIL ACTIONS in the Supreme the centralized system providing a one-stop
Court. Certiorari and Prohibition. solution for registering and managing marks
The facts are stated in the opinion of the worldwide, allows the trademark owner to file
Court. one application in one language, and to pay one
Lorna Patajo-Kapunan, Sonya Margarita set of fees to pro-
Benemerito-Castillo, Deanna Melissa S. Lorenzo-
Singian, Maria Carmen Hazel N. Humangit and _______________
Katrina Ortega Clemente for petitioner.
The Solicitor General for respondents. 1 Rollo, p. 4.

BERSAMIN, J.:
148
In this special civil action for certiorari and
prohibition, the Intellectual Property
Association of the Philippines (IPAP) seeks to 148 SUPREME COURT REPORTS
declare the accession of the Philippines to the ANNOTATED
Protocol Relating to the Madrid Agreement Intellectual Property Association of the
Concerning the International Registration of Philippines vs. Ochoa
Marks (Madrid Protocol) unconstitutional on the
ground of the lack of concurrence by the Senate,
tect his mark in the territories of up to 97
and in the alternative, to declare the
member-states.2 The Madrid System is governed
implementation thereof as unconstitutional
by the Madrid Agreement, concluded in 1891,
because it conflicts with Republic Act No. 8293,
and the Madrid Protocol, concluded in 1989.3
otherwise known as the Intellectual Property
The Madrid Protocol, which was adopted in
Code of the Philippines (IP Code).1
order to remove the challenges deterring some
We find and declare that the President’s
countries from acceding to the Madrid
ratification is valid and constitutional because
Agreement, has two objectives, namely: (1) to
the Madrid Protocol, being an executive
facilitate securing protection for marks; and (2)
agreement as determined by the Department of

to make the management of the registered 4 Benefits of the Madrid System,

marks easier in different countries.4 http://www.wipo.int/madrid/en/madrid_benefits.html (last
In 2004, the Intellectual Property Office of visited March 31, 2016).
the Philippines (IPOPHL), the government
agency mandated to administer the intellectual
property system of the country and to implement
the state policies on intellectual property, began 149
considering the country’s accession to the
Madrid Protocol. However, based on its
assessment in 2005, the IPOPHL needed to first VOL. 797, JULY 19, 2016 149
improve its own operations before making the Intellectual Property Association of the
recommendation in favor of accession. The Philippines vs. Ochoa
IPOPHL thus implemented reforms to eliminate
trademark backlogs and to reduce the of Foreign Affairs (DFA) that the Philippines
turnaround time for the registration of marks.5 should accede to the Madrid Protocol.6
5 Rollo, pp. 170-171. After its own review, the DFA endorsed to the
In the meanwhile, the IPOPHL mounted a President the country’s accession to the Madrid
campaign for information dissemination to raise Protocol. Conformably with its express authority
awareness of the Madrid Protocol. It launched a under Section 9 of Executive Order No. 459
series of consultations with stakeholders and (Providing for the Guidelines in the Negotiation
various business groups regarding the of International Agreements and its Ratification)
Philippines’ accession to the Madrid Protocol. It dated November 25, 1997, the DFA determined
ultimately arrived at the conclusion that that the Madrid Protocol was an executive
accession would benefit the country and help agreement. The IPOPHL, the Department of
raise the level of competitiveness for Filipino Science and Technology, and the Department of
brands. Hence, it recommended in September Trade and Industry concurred in the
2011 to the Department recommendation of the DFA.7
On March 27, 2012, President Benigno C.
_______________ Aquino III ratified the Madrid Protocol through
an instrument of accession. The instrument of
2 Madrid – The International Trademark System,
accession was deposited with the Director
http://www.wipo.int/madrid/en/ (last visited March 31, 2016).
General of the World Intellectual Property
3 Madrid Agreement Concerning the International
Organization (WIPO) on April 25, 2012,8 The
Registration of Marks,
Madrid Protocol entered into force in the
http://www.wipo.int/treaties/en/registration/madrid/ (last
Philippines on July 25, 2012.9
visited March 31, 2016).
Petitioner IPAP, an association of more than
100 law firms and individual practitioners in
Intellectual Property Law whose main objective the Senate for the validity of the treaty entered into
is to promote and protect intellectual property by him. Section 21, Article VII of the 1987
rights in the Philippines through constant Constitution provides that “no treaty or international
assistance and involvement in the legislation of agreement shall be valid and effective unless
intellectual property law,10 has commenced this concurred in by at least two-thirds of all the Members
special civil action for certiorari and of the Senate.” The 1935 and the 1973 Constitution
prohibition11 to challenge the validity of the also required the concurrence by the legislature to the
President’s accession to the Madrid Protocol treaties entered into by the executive.12
without the concurrence of the Senate. Citing
Pimentel, Jr. v. Office of the Executive Secretary,
the IPAP has averred: According to the IPAP, the Madrid Protocol is
a treaty, not an executive agreement; hence,
respondent DFA Secretary Albert Del Rosario
acted with grave abuse of discretion in
_______________
determining the Madrid Protocol as an executive
6 Id., at pp. 172-175. agreement.13
7 Id., at pp. 175-176. The IPAP has argued that the
8 http://www.wipo.int/treaties/en/notifications/madridp- implementation of the Madrid Protocol in the
gp/treaty_madridp_gp_194.html. Philippines, specifically the processing of foreign
9 Rollo, pp. 57-58. trademark applications, conflicts with the IP
10 Id., at p. 5. Code,14 whose Section 125 states:
11 Id., at pp. 1-30.
Sec. 125. Representation; Address for Service.
—If the applicant is not domiciled or has no real and

effective commercial establishment in the Philippines,

he shall designate by a written document filed in the
150 office, the name and address of a Philippine resident
who may be served notices or process in proceedings
affecting the mark. Such notices or services may be
served upon the person so designated by leaving a
ANNOTATED
copy thereof at the address specified in the last
Intellectual Property Association of the designation filed. If the person so designated cannot
Philippines vs. Ochoa be found at the address given in the last designation,
such notice or process may be served upon the
Nonetheless, while the President has the sole Director. (Sec. 3, R.A. No. 166a)
authority to negotiate and enter into treaties, the
Constitution provides a limitation to his power by
requiring the concurrence of 2/3 of all the members of
_______________ international registration,” “the International

Register,” “the International Bureau” and “the
12 G.R. No. 158088, July 6, 2005, 462 SCRA 622, 632-
Organization,” respectively), provided that:
633.
13 Rollo, pp. 16-21. (i) where the basic application has been
14 Id., at p. 21. filed with the Office of a Contracting State or
where the basic registration has been made by
such an Office, the person in whose name that
application or registration stands is a national
151 of that Contracting State, or is domiciled, or has
a real and effective industrial or commercial
establishment, in the said Contracting State,
VOL. 797, JULY 19, 2016 151 (ii) where the basic application has been
Intellectual Property Association of the filed with the Office of a Contracting
Philippines vs. Ochoa Organization or where the basic registration
has been made by such an Office, the person in
whose name that application or registration
It has posited that Article 2 of the Madrid
stands is a national of a State member of that
Protocol provides in contrast:
Contracting Organization, or is domiciled, or

has a real and effective industrial or
Article 2

Securing Protection through International
Registration
152
(1) Where an application for the registration of a
mark has been filed with the Office of a Contracting
Party, or where a mark has been registered in the 152 SUPREME COURT REPORTS
register of the Office of a Contracting Party, the ANNOTATED
person in whose name that application (hereinafter Intellectual Property Association of the
referred to as “the basic application”) or that Philippines vs. Ochoa
registration (hereinafter referred to as “the basic
registration”) stands may, subject to the provisions of commercial establishment, in the territory of
this Protocol secure protection for his mark in the the said Contracting Organization.
territory of the Contracting Parties, by obtaining the
registration of that mark in the register of the (2) The application for international registration
International Bureau of the World Intellectual (hereinafter referred to as “the international
Property Organization (hereinafter referred to as “the application”) shall be filed with the International

Bureau through the intermediary of the Office with _______________

which the basic application was filed or by which the
15 Id., at pp. 21-22.
basic registration was made (hereinafter referred to
as “the Office of origin”), as the case may be.

(3) Any reference in this Protocol to an “Office” or

an “Office of a Contracting Party” shall be construed
as a reference to the office that is in charge, on behalf 153
of a Contracting Party, of the registration of marks,
and any reference in this Protocol to “marks” shall be
VOL. 797, JULY 19, 2016 153
construed as a reference to trademarks and service
marks. Intellectual Property Association of the
(4) For the purposes of this Protocol, “territory of Philippines vs. Ochoa
a Contracting Party” means, where the Contracting
Party is a State, the territory of that State and, where Bureau. The questions of the need for a representative
the Contracting Party is an intergovernmental before the Office of origin or the Office of a designated
organization, the territory in which the constituting Contracting Party (for example, in the event of a
treaty of that intergovernmental organization applied. refusal of protection issued by such an Office), who
may act as a representative in such cases and the
method of appointment, are outside the scope of the
The IPAP has insisted that Article 2 of the Agreement, Protocol and Regulations and are
Madrid Protocol means that foreign trademark governed by the law and practice of the Contracting
applicants may file their applications through Party concerned.
the International Bureau or the WIPO, and their
applications will be automatically granted
trademark protection without the need for which procedure is in conflict with that under
designating their resident agents in the Section 125 of the IP Code, and constitutes in
country.15 effect an amendment of the local law by the
Moreover, the IPAP has submitted that the Executive Department.16
procedure outlined in the Guide to the The IPAP has prayed that the
International Registration of Marks relating to implementation of the Madrid Protocol in the
representation before the International Bureau Philippines be restrained in order to prevent
is the following, to wit: future wrongs considering that the IPAP and its
constituency have a clear and unmistakable
Rule 3(1)(a) 09.02 References in the Regulations, right not to be deprived of the rights granted
Administrative Instructions or in this Guide to them by the IP Code and existing local laws.17
representation relate only to representation before the In its comment in behalf of the respondents,
International the Office of the Solicitor General (OSG) has

stated that the IPAP does not have the locus The following issues are to be resolved,
standi to challenge the accession to the Madrid namely:
Protocol; that the IPAP cannot invoke the I. Whether or not the IPAP has locus
Court’s original jurisdiction absent a showing of standi to challenge the
any grave abuse of discretion on the part of the President’s ratification of the Madrid
respondents; that the President’s ratification of Protocol;
the Madrid Protocol as an executive agreement II. Whether or not the President’s
is valid because the Madrid Protocol is only ratification of the Madrid
procedural, does not create substantive rights, Protocol is valid and constitutional; and
and does not require the amendment of the IP III. Whether or not the Madrid Protocol is
Code; that the IPAP is not entitled to the in conflict with
restraining order or injunction because it suffers the IP Code.
no damage from the ratification by the
President, and there is also no urgency for such Ruling of the Court
relief; and the IPAP has no clear unmistakable
right to the relief sought.18 The petition for certiorari and prohibition is
without merit.

_______________ A.
The issue of legal standing to sue, or locus
16 Id., at pp. 22-24. standi
17 Id., at pp. 24-28.
18 Id., at pp. 177-178. The IPAP argues in its reply19 that it has the
locus standi to file the present case by virtue of
its being an association whose members stand to
be injured as a result of the enforcement of the
154 Madrid Protocol in the Philippines; that the
injury pertains to the acceptance and approval of
applications submitted through the Madrid
154 SUPREME COURT REPORTS Protocol without local representation as required
ANNOTATED by Section 125 of the IP Code;20 and that such
Intellectual Property Association of the will diminish the rights granted by the IP Code
Philippines vs. Ochoa to Intellectual Property Law practitioners like
the members of the IPAP.21
Issues The argument of the IPAP is untenable.
Legal standing refers to “a right of
appearance in a court of justice on a given
question.”22 According to Agan, Jr. v. Phil- standi of the petitioners due to the ever-present need
to regulate the invocation of the intervention of the
_______________ Court to correct any official action or policy in order to
avoid obstructing the efficient functioning of public
19 Id., at pp. 283-307. officials and offices involved in public service. It is
20 Id., at pp. 284-286. required, therefore, that the petitioner must have a
21 Id., at p. 23. personal stake in the outcome of the controversy, for,
22 Black’s Law Dictionary, p. 941 (6th ed., 1991). as indicated in Agan, Jr. v. Philippine International
Air Terminals Co., Inc.:

The question on legal standing is
whether such parties have “alleged such a
personal stake in the outcome of the
155 controversy as to assure that concrete
adverseness which sharpens the
VOL. 797, JULY 19, 2016 155 presentation of issues upon which the
court so largely depends for illumination
of difficult constitutional questions.”
Philippines vs. Ochoa
Accordingly, it has been held that the
interest of a person assailing the
ippine International Air Terminals Co., Inc.,23 constitutional-
standing is “a peculiar concept in constitutional
law because in some cases, suits are not brought
_______________
by parties who have been personally injured by
the operation of a law or any other government 23 G.R. Nos. 155001, 155547, and 155661, May 5, 2003,
act but by concerned citizens, taxpayers or 402 SCRA 612, 645.
voters who actually sue in the public interest.” 24 G.R. Nos. 191002, 191032, 191057, 191149, and A.M.
The Court has frequently felt the need to No. 10-2-5-SC, March 17, 2010, 615 SCRA 666.
dwell on the issue of standing in public or
constitutional litigations to sift the worthy from
the unworthy public law litigants seeking
redress or relief. The following elucidation in De
156
Castro v. Judicial and Bar Council24 offers the
general understanding of the context of legal
standing, or locus standi for that purpose, viz.: 156 SUPREME COURT REPORTS
ANNOTATED
In public or constitutional litigations, the Court is
often burdened with the determination of the locus
Philippines vs. Ochoa the direct injury test were allowed to be treated in the
same way as in Araneta v. Dinglasan.
ity of a statute must be direct and In the 1975 decision in Aquino v. Commission on
personal. He must be able to show, not Elections, this Court decided to resolve the issues
only that the law or any government act is raised by the petition due to their “far-reaching
invalid, but also that he sustained or is in implications,” even if the petitioner had no personality
imminent danger of sustaining some direct to file the suit. The liberal approach of Aquino v.
injury as a result of its enforcement, and Commission on Elections has been adopted in several
not merely that he suffers thereby in some notable cases, permit-
indefinite way. It must appear that the

person complaining has been or is about to

be denied some right or privilege to which
he is lawfully entitled or that he is about 157
to be subjected to some burdens or
penalties by reason of the statute or act
complained of. VOL. 797, JULY 19, 2016 157
It is true that as early as in 1937, in People v. Vera, Philippines vs. Ochoa
the Court adopted the direct injury test for
determining whether a petitioner in a public action
ting ordinary citizens, legislators, and civic
had locus standi. There, the Court held that the
organizations to bring their suits involving the
person who would assail the validity of a statute must
constitutionality or validity of laws, regulations, and
have “a personal and substantial interest in the case
rulings.
such that he has sustained, or will sustain direct
However, the assertion of a public right as a
injury as a result.” Vera was followed in Custodio v.
predicate for challenging a supposedly illegal or
President of the Senate, Manila Race Horse Trainers’
unconstitutional executive or legislative action rests
Association v. De la Fuente, Anti-Chinese League of
on the theory that the petitioner represents the public
the Philippines v. Felix, and Pascual v. Secretary of
in general. Although such petitioner may not be as
Public Works.
adversely affected by the action complained against as
Yet, the Court has also held that the requirement
are others, it is enough that he sufficiently
of locus standi, being a mere procedural technicality,
demonstrates in his petition that he is entitled to
can be waived by the Court in the exercise of its
protection or relief from the Court in the vindication
discretion. For instance, in 1949, in Araneta v.
of a public right.25
Dinglasan, the Court liberalized the approach when
the cases had “transcendental importance.” Some
notable controversies whose petitioners did not pass The injury that the IPAP will allegedly suffer
from the implementation of the Madrid Protocol
is imaginary, incidental and speculative as 158 SUPREME COURT REPORTS

opposed to a direct and material injury required ANNOTATED
by the foregoing tenets on locus standi. Intellectual Property Association of the
Additionally, as the OSG points out in the Philippines vs. Ochoa
comment,26 the IPAP has misinterpreted Section
125 of the IP Code on the issue of
little question that the issues raised herein
representation. The provision only states that a
against the implementation of the Madrid
foreign trademark applicant “shall designate by
Protocol are of transcendental importance.
a written document filed in the office, the name
Accordingly, we recognize IPAP’s locus standi to
and address of a Philippine resident who may be
bring the present challenge. Indeed, the Court
served notices or process in proceedings affecting
has adopted a liberal attitude towards locus
the mark”; it does not grant anyone in particular
standi whenever the issue presented for
the right to represent the foreign trademark
consideration has transcendental significance to
applicant. Hence, the IPAP cannot justly claim
the people, or whenever the issues raised are of
that it will suffer irreparable injury or
paramount importance to the public.28
diminution of rights granted to it by Section 125

of the IP Code from the implementation of the
B.
Madrid Protocol.
Accession to the
Nonetheless, the IPAP also emphasizes that
Madrid Protocol was constitutional
the paramount public interest involved has
The IPAP submits that respondents
transcendental importance because its petition
Executive Secretary and DFA Secretary Del
asserts that the Executive Department has
Rosario gravely abused their discretion in
overstepped the bounds of its authority by
determining that there was no need for the
thereby cutting into another branch’s functions
Philippine Senate’s concurrence with the
and responsibilities.27 The assertion of the IPAP
Madrid Protocol; that the Madrid Protocol
may be valid on this score. There is
involves changes of national policy, and its being
of a permanent character requires the Senate’s
_______________ concurrence,29 pursuant to Section 21, Article
25 Id., at pp. 722-726. (Bold emphasis is part of the
VII of the Constitution, which states that “no
original text)
treaty or international agreement shall be valid
26 Rollo, p. 183.
and effective unless concurred in by at least two-
thirds of all the Members of the Senate.”
27 Id., at pp. 286-289.
Before going further, we have to distinguish
between treaties and international agreements,
which require the Senate’s concurrence, on one
hand, and executive agreements, which may be
158
validly entered into without the Senate’s concurrence after executive ratification. This term
concurrence. may include compacts like conventions, declarations,
covenants and acts.
c. Executive Agreements – similar to treaties except
that they do not require legislative concurrence.
_______________

28 Francisco, Jr. v. Nagmamalasakit na mga The Court has highlighted the difference
Manananggol ng mga Manggagawang Pilipino, Inc., G.R. between treaties and executive agreements in
Nos. 160261, 160262, 160263, 160277, 160292, 160295, Commissioner of Customs v. Eastern Sea
160310, 160318, 160342, 160343, 160360, 160365, 160370, Trading,31 thusly:
160376, 160392, 160397, 160403, and 160405, November 10,
International agreements involving political issues
2003, 415 SCRA 44, 139.
or changes of national policy and those involving
29 Rollo, pp. 16-21.
international arrangements of a permanent character
usually take the form of treaties. But international
agreements embodying adjustments of detail carrying
out well-established national policies and traditions
159 and those involving arrangements of a more or less
temporary nature usually take the form of executive
agreements.
VOL. 797, JULY 19, 2016 159
Philippines vs. Ochoa In the Philippines, the DFA, by virtue of
Section 9, Executive Order No. 459,32 is initially
Executive Order No. 459, Series of 1997,30 notes given the power to determine
the following definitions, to wit:
_______________
Sec. 2. Definition of Terms.—
a. International agreement – shall refer to a 30 Providing for the Guidelines in the Negotiation of
contract or understanding, regardless of International Agreements and its Ratification (issued
nomenclature, entered into between the Philippines November 25, 1997 by President Ramos).
and another government in written form and 31 No. L-14279, October 31, 1961, 3 SCRA 351, 356.
governed by international law, whether embodied in a
single instrument or in two or more related
instruments.
b. Treaties – international agreements entered into 160
by the Philippines which require legislative
160 SUPREME COURT REPORTS agreements covering such subjects as

ANNOTATED commercial and consular relations, most-
Intellectual Property Association of the favored-nation rights, patent rights,
Philippines vs. Ochoa trademark and copyright protection, postal
and navigation arrangements and the
whether an agreement is to be treated as a

treaty or as an executive agreement. To _______________
determine the issue of whether DFA Secretary 32 SEC. 9. Determination of the Nature of the
Del Rosario gravely abused his discretion in Agreement.—The Department of Foreign Affairs shall
making his determination relative to the Madrid determine whether an agreement is an executive agreement
Protocol, we review the jurisprudence on the or a treaty.
nature of executive agreements, as well as the 33 Supra note 31 at pp. 355-357.
subject matters to be covered by executive
agreements.
The pronouncement in Commissioner of
Customs v. Eastern Sea Trading33 is instructive,
to wit: 161
x x x The concurrence of said House of Congress is

required by our fundamental law in the making of VOL. 797, JULY 19, 2016 161
“treaties” (Constitution of the Philippines, Article VII, Intellectual Property Association of the
Section 10), which are, however, distinct and different Philippines vs. Ochoa
from “executive agreements,” which may be validly
entered into without such concurrence. settlement of claims. The validity of these has
never been seriously questioned by our courts.
“Treaties are formal documents which
x x x x
require ratification with the approval of two
Agreements with respect to the
thirds of the Senate. Executive agreements
registration of trademarks have been
become binding through executive action
concluded by the Executive with various
without the need of a vote by the Senate or by
countries under the Act of Congress of March 3,
Congress.
1881 (21 Stat. 502). x x x
x x x x
x x x x
“x x x the right of the Executive to enter into
binding agreements without the necessity of In this connection, Francis B. Sayre, former U.S.
subsequent Congressional approval has been High Commissioner to the Philippines, said in his
confirmed by long usage. From the earliest days work on “The Constitutionality of Trade Agreement
of our history we have entered into executive Acts”:

Agreements concluded by the President by the Executive without the approval of the
which fall short of treaties are commonly Senate. They cover such subjects as the
referred to as executive agreements and are no inspection of vessels, navigation dues,
less common in our scheme of government than income tax on shipping profits, the
are the more formal instruments — treaties and admission of civil aircraft, customs
conventions. They sometimes take the form of matters, and commercial relations
exchanges of notes and at other times that or generally, international claims, postal
more formal documents denominated matters, the registration of trademarks
‘agreements’ or ‘protocols.’ The point where and copyrights, etcetera. Some of them
ordinary correspondence between this and other were concluded not by specific
governments ends and agreements — whether congressional authorization but in
denominated executive agreements or conformity with policies declared in acts
exchanges of notes or otherwise — begin, may of Congress with respect to the general
sometimes be difficult of ready ascertainment. subject matter, such as tariff acts; while
It would be useless to undertake to discuss here still others, particularly those with respect of
the large variety of executive agreements as the settlement of claims against foreign
such, concluded from time to time. Hundreds of governments, were concluded independently of
executive agreements, other than those entered any legislation. (Emphasis ours)
into under the trade agreements act, have been
negotiated with foreign governments. x x x It
would seem to be sufficient, in order to show As the foregoing pronouncement indicates,
that the trade agreements under the act of 1934 the registration of trademarks and copyrights
are not anomalous in character, that they are have been the subject of executive agreements
not treaties, and that they have abundant entered into without the concurrence of the
precedent in our history, to refer to certain Senate. Some executive agreements have been
classes of agreements heretofore entered into concluded in conformity with the policies
declared in the acts of Congress with respect to
the general subject matter.
It then becomes relevant to examine our state
policy on intellectual property in general, as
162
reflected in Section 2 of our IP Code, to wit:
Section 2. Declaration of State Policy.—The

State recognizes that an effective intellectual and
ANNOTATED
industrial property system is vital to the
Intellectual Property Association of the development of domestic and creative activity,
Philippines vs. Ochoa facilitates transfer of technology, attracts
foreign investments, and ensures market access
for our products. It shall protect and secure the Protocol as an executive agreement, being in
exclusive rights of scientists, inventors, artists apparent contemplation of the express state
and other gifted citizens to their intellectual policies on intellectual property as well as within
property and creations, particularly when his power under Executive Order No. 459, are
beneficial to the people, for such periods as upheld. We observe at this point that there are
provided in this Act. no hard and fast rules on the propriety of
entering into a treaty or an executive agreement
on a given subject as an instrument of
international relations. The primary
163 consideration in the choice of the form of
agreement is the parties’ intent and desire to
craft their international agreement in the form
VOL. 797, JULY 19, 2016 163 they so wish to further their respective interests.
Intellectual Property Association of the The matter of form takes a back seat when it
Philippines vs. Ochoa comes to effectiveness and binding effect of the
enforcement of a treaty or an executive
The use of intellectual property bears a social agreement, inasmuch as all the parties,
function. To this end, the State shall promote the regardless of the form, become obliged to comply
diffusion of knowledge and information for the conformably with the time-honored principle of
promotion of national development and progress and pacta sunt servanda.35 The
the common good.
It is also the policy of the State to streamline
administrative procedures of registering
patents, trademarks and copyright, to liberalize _______________
the registration on the transfer of technology, and to
34 Rollo, p. 19.
enhance the enforcement of intellectual property
35 Bayan Muna v. Romulo, G.R. No. 159618, February 1,
rights in the Philippines.
2011, 641 SCRA 244, 261.

In view of the expression of state policy

having been made by the Congress itself, the
IPAP is plainly mistaken in asserting that 164
“there was no Congressional act that authorized
the accession of the Philippines to the Madrid
Protocol.”34 164 SUPREME COURT REPORTS
Accordingly, DFA Secretary Del Rosario’s ANNOTATED
determination and treatment of the Madrid Intellectual Property Association of the
Philippines vs. Ochoa cumbersome extraterritorial service of writs and

processes.37
principle binds the parties to perform in good The IPAP misapprehends the procedure for
faith their parts in the agreements.36 examination under the Madrid Protocol. The
difficulty, which the IPAP illustrates, is
C. minimal, if not altogether inexistent. The
There is no conflict between the
Madrid Protocol and the IP Code _______________

36 Vienna Convention on the Law on Treaties (1969),
The IPAP also rests its challenge on the
Art. 26.
supposed conflict between the Madrid Protocol
37 Rollo, p. 23.
and the IP Code, contending that the Madrid
Protocol does away with the requirement of a

resident agent under Section 125 of the IP Code;

and that the Madrid Protocol is unconstitutional
for being in conflict with the local law, which it 165
cannot modify.
The IPAP’s contentions stand on a faulty
VOL. 797, JULY 19, 2016 165
premise. The method of registration through the
IPOPHL, as laid down by the IP Code, is distinct Intellectual Property Association of the
and separate from the method of registration Philippines vs. Ochoa
through the WIPO, as set in the Madrid
Protocol. Comparing the two methods of IPOPHL actually requires the designation of the
registration despite their being governed by two resident agent when it refuses the registration of
separate systems of registration is thus a mark. Local representation is further required
misplaced. in the submission of the Declaration of Actual
In arguing that the Madrid Protocol conflicts Use, as well as in the submission of the license
with Section 125 of the IP Code, the IPAP contract.38 The Madrid Protocol accords with the
highlights the importance of the requirement for intent and spirit of the IP Code, particularly on
the designation of a resident agent. It the subject of the registration of trademarks.
underscores that the requirement is intended to The Madrid Protocol does not amend or modify
ensure that nonresident entities seeking the IP Code on the acquisition of trademark
protection or privileges under Philippine rights considering that the applications under
Intellectual Property Laws will be subjected to the Madrid Protocol are still examined
the country’s jurisdiction. It submits that according to the relevant national law. In that
without such resident agent, there will be a need regard, the IPOPHL will only grant protection to
to resort to costly, time consuming and
a mark that meets the local registration SEPARATE CONCURRING OPINION

requirements.
WHEREFORE, this Court DISMISSES the BRION, J.:
petition for certiorari and prohibition for lack of
merit; and ORDERS the petitioner to pay the I write this Separate Opinion to emphasize
costs of suit. my reasons for concurring with the ponencia’s
SO ORDERED. conclusion that the Philippines’ accession to the
Madrid Protocol through an Executive
Sereno (CJ.), Carpio, Velasco, Jr., Leonardo- Agreement is not unconstitutional.
De Castro, Peralta, Del Castillo, Perez, Reyes and I believe that the time has come for this Court
Caguioa, JJ., concur. to definitively set concrete parameters regarding
Brion, J., See: Concurring Opinion. the treatment of an international agreement as
Mendoza, J., On Official Leave. a treaty or as an executive agreement. To date,
Perlas-Bernabe, J., Please see my we have been using the discussion on what
Concurring Opinion. constitutes an “executive agreement” as
Leonen, J., See Separate Concurring discussed in the case Commissioner of Customs
Opinion. v. Eastern Sea Trading,1 a 1961 case decided
Jardeleza, J., No part. long before the 1987 Constitution took effect
and changed the language of the provision on
the effectivity and validity of international
agreements in the Philippines.
This change in constitutional language
_______________ calls for a clarification of what may be the
subject of executive agreements that no longer
38
need Senate concurrence to be valid and
http://www.wipo.int/madrid/en/members/profiles/ph.html?
effective in the Philippines. The need is now
part=misc. (last visited March 31, 2016)
acute, particularly in the light of the recent
cases questioning the treatment of international
agreements as executive agreements, such as
the Enhanced Defense Cooperation Agreement
166 (EDCA) and now the present Madrid Protocol
case.
To avoid further confusion, the need for
litigation, and the consequent international
ANNOTATED
embarrassment all these can cause, we should
Intellectual Property Association of the now exercise as well our power and duty to
Philippines vs. Ochoa educate the bar and the public in the course of

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9/20/2020 SUPREME COURT REPORTS ANNOTATED VOLUME 797 9/20/2020 SUPREME COURT REPORTS ANNOTATED VOLUME 797

Department of Foreign Affairs; Jurisdiction; In

Remedial Law; Civil Procedure; Locus Standi; * EN BANC.

international plane, it would need the concurrence of Philippines vs. Ochoa

central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 11/132 central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 12/132

central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 13/132 central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 14/132

his home country is only the initial step to secure 144

central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 17/132 central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 18/132

147 Foreign Affairs, does not require the concurrence

central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 23/132 central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 24/132

to make the management of the registered 4 Benefits of the Madrid System,

_______________ international registration,” “the International

central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 29/132 central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 30/132

Bureau through the intermediary of the Office with _______________

central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 31/132 central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 32/132

is imaginary, incidental and speculative as 158 SUPREME COURT REPORTS

160 SUPREME COURT REPORTS agreements covering such subjects as

whether an agreement is to be treated as a

x x x The concurrence of said House of Congress is

central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 43/132 central.com.ph/sfsreader/session/00000174ab2949d11eab3c2f003600fb002c009e/t/?o=False 44/132

Section 2. Declaration of State Policy.—The

Philippines vs. Ochoa cumbersome extraterritorial service of writs and

a mark that meets the local registration SEPARATE CONCURRING OPINION

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