The advent of newer, faster and more accessible technology nowadays makes it easier for businesses to foster brand recognition and goodwill and promote their goods and services to a wider and more diverse market with a view to increasing potential profits. However, with this expanded reach comes increased vulnerability to the loss or theft of information which might lead to third-party violations or infringements of the Intellectual Property Rights Rights (“IP Rights”) of a business.

Among the common offenses for violations of IP Rights in the Philippines include (1) Trademark Infringement, (2) Unfair Competition and (3) Copyright Infringement.  These offenses in certain instances may exist at the same time and may be availed of simultaneously.

Enforcement Strategies

Fortunately for businesses whose IP Rights have been breached, numerous remedies and strategies are available to counter and stop infringing activities and to pursue violators for compensation for the damages they suffered and the imposition of the concomitant penalties, including imprisonment. Below is a brief discussion of strategies that businesses may employ.

Warning or Cease and Desist Letters

This strategy involves the sending of letters to the infringers with a threat to criminally sue them unless they stop their infringing activities. This may be used together with public notices or advertisements for a more forceful impact.  

This is more effective for those offenses where imprisonment is possible.

Advertisements / Public Notices

This strategy involves informing the public of where the original products may be purchased through the publishing in newspapers, magazines, or other publications of general circulation, or in webpages or social media accounts.

Report Violations with the Intellectual Property Office (“IPO”)

The owner of the intellectual property (“IP owner”) may report or file a complaint with the Intellectual Property Rights Enforcement Office (“IEO”) of the IPO for violations of their IP Rights.

This strategy is the middle ground between the previous strategies and a formal action with the courts. Furthermore, the IEO may issue orders to compel the infringer to respect the rights of the IP owner.

Search and Seizure Operations

This strategy involves the conduct of raids for the seizure of counterfeit goods.  It is an aggressive and proactive approach that may discourage further brand infringement, allows for evidence gathering, and ensures that counterfeit goods are taken out of commerce.

Criminal Actions

This strategy involves the filing of a criminal case in court.  For criminal actions, it is important that evidence against the violator is collected and that they are properly identified.  Otherwise, the case will be dismissed.  Additionally, filing a criminal case may serve as an avenue for settlement between the parties.

Border Control

This strategy involves the registration of IP owners of their IP rights with the Bureau of Customs (“BOC”). The registration helps the BOC in identifying counterfeit shipments into the Philippines, as they will know who are the authorized importers of the IP owners.

If done efficiently, this strategy is effective considering that most counterfeit goods are imported into the Philippines.

Considerations of Management

In deciding which strategy to use in enforcing their IP Rights, most businesses take the cost of the strategy as their primary consideration. However, no matter how costly these strategies may be, they are necessary for the protection of the goodwill of the business.

To lessen the burden of businesses, it is prudent to treat IP enforcement costs as part of their marketing or advertising budget – as IP protection enhances the goodwill of  brand.  The establishment of strong industry associations also allows for a collective action against the same infringer, thus enabling the members of the association to split the costs of the action.

Registration and maintenance of your IP right, when available, is also highly recommended, as registration establishes or confirms the owner’s rights over a certain intellectual property.

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