Supan, Fatima M.

Copyright infringement takes on three forms namely administrative, civil or criminal. As an administrative complaint, it can be brought before the Intellectual
Property Office while it may be filed in regular courts as a criminal or civil case . As a criminal offense, copyright infringement is punishable by imprisonment
ranging from one (1) year to nine (9) years and a fine ranging from Fifty Thousand Pesos (P50,000.00) to One Million Five Hundred Thousand Pesos
(P1,500,000.00) depending on the value of the infringing materials, damage to the copyright owner and the number of offenses committed.
What enforcement actions are available to intellectual property owners whose rights are being infringed in the Philippine market?

The IP owner may work with government agencies to conduct a raid

action pursuant to a valid search warrant or a visit/inspection pursuant
to some of the government agencies’ visitorial powers.

Raid actions are usually conducted by the National Bureau of Investigation

(Intellectual Property Rights Division) and the Philippine National Police
(Criminal Investigation and Detection Group).

The Optical Media Board and the Intellectual Property Enforcement

Office can conduct inspections and issue warning letters through
their visitorial powers.

The course of action depends on the end goal of the IP owner. If the
owner wants to seize a huge inventory of counterfeit items, it is best
to conduct a raid action. If the aim is to deter continuing infringing
acts done in a small scale, a visit/inspection by the Intellectual
Property Enforcement Office or the Optical Media Board may suffice.
TRADEMARK INFRINGEMENT

Administrative Action

An administrative action for trademark infringement, unfair competition and/or false designation
may be filed with the Bureau of Legal Affairs (BLA) of the IPO within four (4) years from the date
of commission of the violation, or if the date be unknown, from the date of discovery of the
violation. The total amount of damages claimed should be Php 200,000 or more.

Provisional remedies, such as an injunction, are available.

The administrative penalties available may include the issuance of a cease and desist order;
condemnation and seizure of infringing products; imposition of administrative fines ranging
from Php 5,000 to Php 150,000 and an additional fine of up to Php 1,000 for each day of
continuing violation; cancellation or withholding of any permit, license, or registration granted
or being secured from the IPO; the assessment of damages; censure; and other analogous
penalties or sanctions.
Civil Action
An IP owner may file a civil action to recover damages
from any person who infringes his or her rights.

The award of damages shall be either the reasonable profit the IP owner would have made,
had the infringer not infringed his rights, or the profit that the infringer actually received from
the infringement.

In the event that such damages cannot be ascertained with reasonable certainty, the court
may award as damages a reasonable percentage based upon the amount of gross sales
received by the infringer in connection with the use of the IP owner’s trademark.

In cases where actual intent to mislead the public or to defraud the IP owner is
shown, the damages may be doubled upon the discretion of the court.

Other forms of relief, such as injunction and the impounding of the counterfeit
products, sales invoices and other documents evidencing sales, are also
available as remedies to the IP owner.
Criminal Action

A criminal action may be initiated by filing a complaint with the prosecutor.

The prosecutor then conducts the preliminary investigation to determine if there are
reasonable grounds for infringement. If there are reasonable grounds, the prosecutor will
issue an order recommending the filing of criminal information in court.

After the filing of the criminal information, the court will issue a warrant of arrest. The accused
has the option to post bail. Once the accused is arrested and/or posts bail, he or she will be
arraigned. The court will then proceed to try the criminal case and if the accused is found
guilty of infringement beyond a reasonable doubt, it will issue a decision of conviction.

The IP owner will participate in the civil aspect of the criminal action if he is
claiming damages.

A person found guilty in a criminal case for trademark infringement, unfair competition,
and/or false designation will be imprisoned for a term of two (2) to five (5) years, and will be
ordered to pay a fine ranging from Php 50,000 to Php 200,000.