The Firm's Intellectual Property Group created an in-house investigative arm that provides efficient, cost-effective and responsive programs for the enforcement of intellectual property rights in the Philippines. Among the services we provide are:
Market Surveys
The principal objective of a market survey is to identify manufacturers, importers, distributors, wholesalers and retailers of infringing products. The market survey shall cover all the cities and municipalities in Metro Manila and, if necessary, may also cover other key cities in the Philippines.
Periodic reports on the results of the market survey will be provided. The reports shall contain the name and location of the establishment, an estimate of the stock volume of counterfeit products, and other relevant information. In case of positive results, we shall give you the option to serve a demand letter or to further investigate in preparation for the application and enforcement of a search warrant.
Drafting and Service of Cease and Desist Letter
For small retail outlets or for establishments with a low stock volume of infringing goods, it is generally more cost-effective to serve demand letters on the owners of these outlets. We shall transmit to you a draft of the demand letter and, if said draft is acceptable to you, we shall cause the service of the same on the target.
Surveillance and Investigation
We can conduct an in-depth surveillance and investigation of the target establishment in order to identify its owners/operators and make test purchases of infringing goods for evidentiary purposes, which will be done very discreetly. If necessary and appropriate, the purchase shall be documented by photo and/or video.
We shall likewise conduct identity checks with the Securities and Exchange Commission (SEC), Department of Trade and Industry (DTI), and other relevant government agencies, not only of the registered owners of the target establishment, but also of the persons or entities who aid or abet the infringement of intellectual property rights.
It must be noted that under Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines, those who aid or abet in the infringement of intellectual property rights are themselves liable for infringement. In fact, our Firm is the first law firm to successfully obtain a resolution finding probable cause against the organizer of an exhibit/fair for aiding or abetting the infringement of intellectual property rights actually committed by a stall operator.
Application and Enforcement of Search Warrant
Our services include the preparation of documents relating to the filing of the request for investigation support by law enforcement agencies such as the National Bureau of Investigation (NBI) and/or the Philippine National Police (PNP). The NBI and/or the PNP must conduct their own test-purchase and confirm the findings of our earlier surveillance and investigation, which is essential for the application of a search warrant. If necessary and appropriate, a member of our investigating team will accompany the law enforcers.
Our legal team shall draft and prepare the Applications for Search Warrant, the affidavits of all the witnesses and the sketches of the locations of the targets. We shall likewise be responsible for the collation of the evidence to be presented in court.
Our legal team shall supervise the proceedings for the application for the issuance of search warrant and ensure that the search warrant will be issued on the same day of the application. We shall also guarantee the presence of all the witnesses during said application and brief them of the proceedings.
The search warrant application will be done in close coordination with the investigating team. This is to ensure that infringing goods will be found in the target establishments during the enforcement of the search warrant.
Our legal team will accompany the law enforcers during the enforcement of the search warrant to ensure that all the requirements for a valid search and seizure are satisfied. We shall likewise be responsible with the logistics and the manpower during the raid as well as the storage of the seized items.
After the raid, we shall conduct another discreet investigation of the target establishment to determine whether said establishment is still engaged in the sale of infringing goods.
Filing of Criminal/Civil Case
Under the Intellectual Property Code of the Philippines, the remedies against violators of intellectual property rights consist of judicial and administrative remedies. The judicial remedies include civil actions for the recovery of damages and injunction based on infringement and/or unfair competition and criminal prosecutions for acts constituting infringement or unfair competition.
In regard to civil actions, our services consist of the initiation of the civil action. These include the preparation and filing of the civil complaint in the regular courts and the conduct of the trial until promulgation of judgment including appeals, if any.
In these civil actions, provisional remedies akin to the Anton Piller Order in the United Kingdom may also be available pursuant to the Rule On Search And Seizure In Civil Actions For Infringement Of Intellectual Property Rights promulgated by the Supreme Court of the Philippines. This Rule governs the provisional seizure and impounding of documents and articles in pending and intended civil actions for the purpose of preventing infringement and preserving relevant evidence in regard to alleged infringement under the IP Code and the TRIPS Agreement. The application for the writ of search and seizure may be availed of ex parte where any delay is likely to cause irreparable harm to the intellectual property right holder or where there is demonstrable risk of evidence being destroyed. The writ of search and seizure directs the alleged infringing defendant or expected adverse party to admit into his premises the persons named in the order and to allow the search, inspection, copying, photographing, audio and audiovisual recording or seizure of any document and article specified in the order. Our services include the preparation of the application for the writ of search and seizure under this Rule and the enforcement and execution of said writ.
In regard to criminal prosecutions, our services include legal representation during the preliminary investigation stage and our appearance as private prosecutor during trial before the regular courts.
Filing of Administrative Case (With Prayer for Injunctive Relief)
The Philippine Intellectual Property Office (“IPO”) is an alternative venue for intellectual property owners. Instead of filing a criminal or civil case with the trial courts, some intellectual property owners prefer to file an administrative case for violation of intellectual property rights with the IPO. It must be emphasized that IPO has the power to issue provisional remedies, including a temporary restraining order, preliminary injunction and preliminary attachment.
The IPO is empowered to exercise original jurisdiction in administrative complaints for violations of laws on intellectual property rights involving claims for damages of not less than two hundred thousand pesos (P200,000.00).
Apart from its well-known function of hearing and deciding oppositions to applications for registration of marks and resolving petitions for cancellation of trademarks and patents, the IPO has the power to adjudicate any case on the protection and enforcement of intellectual property rights provided that the required monetary amount of damages claimed is met. In 2001, the Bureau of Legal Affairs of the IPO began accepting such administrative complaints involving cases of infringement, unfair competition, false and fraudulent declaration, false designation of origin, false description and other intellectual property violations. The IPO is also empowered to issue provisional remedies, e.g., temporary restraining orders and injunctions, in accordance with the Rules of Court.
Adding teeth to the IPO’s authority to hear and decide cases on intellectual property rights violations is the grant of coercive and punitive powers. After formal investigation, the Director of the Bureau of Legal Affairs of the IPO may impose administrative penalties. These include the issuance of a cease and desist order, acceptance of a voluntary assurance of compliance or discontinuance, condemnation or seizure of products subject of the offense, forfeiture of paraphernalia and all real and personal properties used in the commission of the offense, cancellation or withholding of any permit, license, authority, or registration granted by the IPO, censure, the assessment of damages, and other analogous penalties or sanctions.
Our Firm has proven itself capable of successfully representing local and international clients in the litigation of an administrative case before the IPO, from filing the Complaint until the execution of the decision.
Border Control Measures
On 03 September 2002, the Bureau of Customs of the Department of Finance approved Customs Administrative Order No. 6-2002 or the Rules and Regulations Implementing the Intellectual Property Code of the Philippines in relation to Sections 51-60 of the TRIPS Agreement, amending for the purpose Customs Administrative Order (CAO) No. 7-93 on Customs Border Control . Among others, the purpose of Customs Administrative Order No. 6-2002 is to enhance existing procedures, in conformity with international standards specifically set in the TRIPS Agreement on special border control, to prevent the entry into the country of certain prohibited merchandise and to set up administrative guidelines to expedite the handling and disposition of goods the importation of which is prohibited under the Intellectual Property Code of the Philippines and other related laws. In order to avail of the additional protection afforded by Customs Administrative Order No. 6-2002, intellectual property rights owners may request the recordation of their intellectual property rights in the Intellectual Property Rights Registry maintained by the Bureau of Customs.
Our services include the preparation of the application for the recordation of intellectual property rights under Customs Administrative Order No. 6-2002 with the Bureau of Customs as a border control measure to prevent the importation of goods or products that infringe upon all intellectual property rights, and the filing of requests with the Bureau of Customs for suspension of release orders, alert orders and hold orders.
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