List of Marks Published for Opposition

   The IPO has released Volume VI, Issue Nos. 8, 9, 10, 11, 12 and 13 of the IPO Gazette, which contain the list of marks published for opposition. Issue Nos. 8 and 9 were released on 13 November 2003, Issue Nos. 10 and 11 on 18 December 2003, Issue No. 12 on 07 January 2004 and Issue No. 13 on 09 February 2004. The list of the marks published for opposition in Issue Nos. 8, 9, 10, 11, 12 and 13, which our Firm is offering as a service to our clients free of charge, may be viewed at
IPO Official Gazette Vol. 6, No. 10 (Dec. 18, 2003),
IPO Official Gazette Vol. 6, No. 11 (Dec. 18, 2003),
IPO Official Gazette Vol. 6, No. 12 (Jan. 7, 2004)  and
IPO Official Gazette Vol. 6, No. 13 (Feb. 9, 2004), respectively.

   Interested parties have up to thirty (30) days from the date of release of the IPO Gazette to file their opposition to the marks published therein. In the event that the period for filing an opposition has expired without any opposition having been filed or the denial of the oppositions filed, the IPO issues a Notice of Issuance to the applicant. Thereafter, upon compliance with the Notice of Issuance and payment by the applicant of the required fee, the corresponding Certificates of Registration are then issued by the IPO.

   Our clients are notified individually when their mark, or one that is identical or confusingly similar thereto, is published for opposition.

IPO Restructures its Schedule of Fees

   Under IPO Office Order No. 128 issued on 21 December 2003, the IPO has restructured its schedule of fees and charges. The increase is aimed at helping the IPO: (1) recover its accumulated operational costs resulting from the 1997 Asian financial crisis; and (2) modernize through the streamlining of procedures, use of automation, improvement of human resource capabilities, systems enhancement of working conditions, and the establishment and maintenance of a customer-oriented performance management system. The increase in fees ranges from thirty percent (30%) to three hundred percent (300%).

   The increase in general fees and fees for inter partes cases, administrative complaints for violations of intellectual property laws, voluntary licensing, intellectual property information and search devices, and dispute settlement involving technology transfer arrangements took effect on 16 January 2004. The increase in patent, industrial design, utility model and trademark-related fees, which was originally scheduled to take effect on 01 March 2004, shall become effective on 15 March 2004.

   The revised schedule of fees may be viewed at IPO Restructured Schedule of Fees.

   Republic Act No. 9239, otherwise known as the Optical Media Act of 2003 (the “Optical Media Act”), was signed into law by President Gloria Macapagal Arroyo on 10 February 2004 and became effective on 02 March 2004. The Optical Media Act seeks to protect and promote intellectual property rights by regulating the manufacture, mastering, replication, importation and exportation of optical media, which, if unregulated, would be inimical to economic growth and public interest.

   The Optical Media Act originated from Senate Bill No. 2660 and House Bill No. 5225. The said bills were subjected to debates in the House of Representatives and the Senate for over three (3) years before the law was finally enacted. Proponents of the law argue that the Optical Media Act would hit the problem of piracy at its very roots by limiting and regulating the materials used to propagate intellectual property infringing content.

   Although it is called the Optical Media Act, the law applies equally to both optical and magnetic media. Optical media is defined under the law as a storage medium or device in which information including sounds, images or any combination of both, or software codes has been stored by mastering and/or replication, which may be accessed and read using a lens scanning mechanism employing a high intensity light source such as laser or such other means as may be developed. On the other hand, magnetic media is defined under the law as a storage medium or device characterized by a base, usually plastic, coated with ferric oxide powder, in which visual and/or aural information, or software code, may be recorded or stored, including, but not limited to, magnetic tape, cassettes, video tape, diskettes, and floppy discs.

   One of the significant changes introduced by the Optical Media Act is the reorganization of the Videogram Regulatory Board (VRB) into the Optical Media Board (OMB). The OMB is tasked, among others, to supervise, regulate, grant or renew licenses and registrations of individuals engaged in any of the following activities:

   1.    Importation, exportation, acquisition, sales or distribution of optical media, manufacturing equipment, parts and accessories and manufacturing materials used or intended for use in the mastering, manufacture or replication of optical media;

   2.    Possession or operation of the manufacturing equipment, parts and accessories, or the possession, acquisition, sale or use of manufacturing materials for the mastering, manufacture or replication of optical media; and

   3.    The mastering, manufacture, replication, importation or exportation of optical media.

   The licenses granted by the OMB shall be valid for three (3) years and shall be subject to conditions as the OMB may impose. The licenses to be issued by the OMB are conditions precedent for securing business permits, licenses or registrations from other appropriate authorities and are necessary for the release of manufacturing equipment from customs and economic zones. The OMB also has the power to revoke, suspend or cancel any license that it has given. Furthermore, the OMB is given the express power to conduct inspections of establishments with or without prior notice and to deputize representatives of different sectors that would help in the implementation of the rules and regulations of OMB.

   The OMB is also required to develop and adopt a system of Source Identification (“SID”) Codes that is of international recognition and acceptance. All persons or entities that are registered and licensed by the OMB shall be given SID Codes, which will in turn be applied to all mastered, manufactured or replicated optical media.

    Violation of the provisions of the Optical Media Act is punishable by imprisonment ranging from thirty (30) days to six (6) years. Subsequent offenders may be imprisoned for up to nine (9) years. Fines ranging from Twenty-Five Thousand Pesos (P25,000.00) to Three Million Pesos (P3,000,000.00) may likewise be imposed. Alien offenders, in addition to other penalties that may be imposed, would face deportation after serving their sentence.

   Computer technology and the growth of the Internet have given rise to various copyright law challenges which have caused considerable concern among owners and users of copyright materials. It is undeniable that in this day and age, carriers and Internet service providers (“ISPs”) must deal with the uncertainty of liability for copyright infringements by unknown sources.

    In a digital world connected by various networks, anyone knowledgeable of commonplace information technology can easily make and distribute an unlimited number of perfect copies of works protected by copyright. Copyrighted works which are digitalized can be downloaded, stored and transmitted with facility and at no cost. Thus, it has become more difficult to prevent unauthorized use of copyrighted and private materials.

    To protect copyright from being used freely in the digital environment, digital based safeguards are being developed to counter copyright infringement. Such solutions include digital watermarking and dithering, spider programs and installation of © - chips.

    New technology called “digital watermarking” or “fingerprinting” now allows users to embed in images, video and printed documents identifying information in digital code which is invisible to the human eye but readable by computers and software. For audio works, digital watermarking is achieved by tucking inaudible copyright and licensing data into recorded music, after which a studio overpaints the recording with a thin wash of noise, a technique known as “dithering”. When digital watermarking is combined with new tracking services offered by some of the same companies that provide the watermarking technology, copyright owners can, in theory, find all illegal copies of their photos and music on the Internet and take appropriate legal action.

   Another software-based solution used to combat copyright infringement are the so-called “spider programs”. “Spiders”, i.e. computer programs which download web documents and analyze them, crawl from web site to web site cataloguing music-related files in search of copyright infringers. When a spider finds a link at a certain web site, it proceeds to download the documents located at the linked web addresses as well, and repeats the process with each new link. Because most web pages contain links to other pages, a spider can start almost anywhere.

    On the other hand, © - chips provide a hardware-based solution, unlike digital watermarking, dithering and spider programs which are all software based. © - chips are hardware embedded in televisions, computers, telephones, music players to regulate the flow of copyrighted material. © - chips are premised on the theory that rights-management systems based purely on software are ultimately not sufficient to combat copyright infringement. It is projected that © - chips will eventually be built into future generations of PCs as a hard-wired, and therefore tamper-proof, substitute for some of the software in more orthodox systems.

    Ultimately, the protection of copyright in the digital environment rests primarily on the Industrial Technology industry which must develop standards, procedures and technology that will maintain and promote copyright. Preventive actions would have to be taken against a background in which the extent of legal protection remains largely untested.

   Philippine copyright law is contained in Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (“IP Code”), which enacted the country’s obligations under the World Trade Organization and prior copyright treaties.

   Under Philippine law, original intellectual creations in the literary and artistic domain, as well as their derivative works, are protected from the moment of their creation. Because of this, registration or deposit of a copyright with the Philippine government is not a prerequisite in order to be entitled to copyright protection. Nevertheless, a “certificate of deposit” from the Philippine National Library and the Supreme Court Library facilitates transactions not only with third parties but also with enforcement agencies which normally rely on such certificates as evidence of an intellectual property creator's rights. The certificate may thus aid a copyright owner in asking Philippine law enforcers for protection, particularly in seeking police action against copyright infringement.

   The IP Code requires two (2) copies or reproductions of the work to be registered and deposited with the National Library and the Philippine Supreme Court Library within three (3) weeks after the first public dissemination of the work, after which a certificate of deposit shall be issued upon payment of the prescribed fee.

   Any person can invoke copyright protection provided it is a national, domiciliary or has effective commercial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law. The IP Code allows copyright owners or their heirs to designate a society or association of artists, writers or composers to enforce their economic and moral rights on their behalf.

   Copyright can be protected administratively through recourse to the Philippine Intellectual Property Office (“IPO”), which is authorized by law to issue restraining orders, confiscate infringing products as well as paraphernalia used, and impose administrative fines. This is without prejudice to, and is independent of, recourse to Philippine courts.

    An action for injunction is available to the copyright owner to restrain the defendant from infringing the owner’s copyright. The courts can prevent the entry of imported infringing goods into commercial channels; seize and impound infringing copies and devices as well as the means used to make them; and order their destruction. Moreover, Philippine law allows a copyright owner to apply ex parte for the issuance of a writ of search and seizure against the infringer, which application is granted in cases where delay is likely to cause irreparable harm to the copyright owner or where there is demonstrable risk that the evidence shall be destroyed. All of this is without prejudice to the award of damages to the copyright owner and the imposition of penalties on the infringer, ranging from fines to imprisonment.

   It may be noted that copyright protection is not limited to administrative action or litigation in court. Copyright owners may enforce their rights through other channels such as the media and government agencies such as the Bureau of Customs and the Optical Media Board (formerly the Videogram Regulatory Board).

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