15 August 2012
Ignacio Sapalo of Sapalo Velez Bundang and Bulilan looks at the importance of the Philippines’ accession to the Madrid Protocol, and what it will mean for the existing IP Code
On April 25 2012, the government of the Philippines deposited with the director general of the World Intellectual Property Organization (WIPO) its instrument of accession to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the Madrid Protocol). This instrument was in the form of an executive agreement which was signed by President Benigno Aquino III on March 27 2012. It was not, however, concurred in by the Philippine Senate. The Protocol will enter into force, with respect to the Philippines, on July 25 2012.
The objective of the Philippine accession to the Madrid Protocol, as stated in the Intellectual Property Office of the Philippine’s (IPOPHL) office order number 139 of June 13 2012, would be to address “the need of trade mark holders to have access to a global infrastructure that would allow them to secure protection for their marks through a simple, transparent, and cost-effective manner”.
We congratulate the IPOPHL for this initiative, which will make it easier for our trade mark owners to obtain the registration of their marks in foreign jurisdictions. That the unfettered enjoyment of these rights should not be taken for granted is everyone’s concern, and so every effort must be taken to ensure that the implementation of the Madrid Protocol cannot later on be questioned because of a legal infirmity affecting its validity. It is in consideration of this concern that we write this article.
With all due respect, we disagree with the conclusion made in office order number 139 that the Madrid Protocol does not amend the Intellectual Property Code of the Philippines (IP Code). We will argue in this paper that the March 27 2012 Executive Agreement will be considered a treaty and hence, our accession to the Madrid Protocol will not be valid and effective without complying with the constitutional mandate to have the Philippine Senate approve it.
Registrations in multiple countries
The Madrid Protocol provides for a new system of the registration of marks in foreign countries. It facilitates the registration of trade marks in multiple jurisdictions through a single application. It does not create an international registration per se; rather, it creates a bundle of national rights, which are administered centrally by the International Bureau (IB) of WIPO. Instead of seeking protection separately in each individual country or jurisdiction of interest, the Madrid Protocol provides a mechanism for obtaining trade mark protection in many countries around the world.
In the Madrid Protocol, an applicant who is a national or owns a business that is domiciled in a member state of the Madrid Protocol can initiate the process of obtaining an international registration by filing an international application in the office of origin – any IP office of a Contracting Party (CP) of the Madrid Protocol. In the international application, the applicant designates the countries where he will seek protection. After it is forwarded to the IB by the office of origin and the formality requirements are found to have been met, the IB will register the mark in the International Register. The IB will notify the offices of the designated Contracting Parties (CP) of the international registration and inform the office of origin accordingly, and send a certificate to the holder. The office of the designated CP will then conduct a substantive examination according to its local laws. If no refusal by the CP is notified before the expiry of one and a half years (or 18 months) from notification of territorial extension to the IB, the protection of the mark in the CP concerned will, from the date of international registration, be the same as if the mark has been registered in the CP.
The IP Code, on the other hand, on the basis of section 3 of the International Conventions and Reciprocity of the Code, hand in hand with the Paris Convention for the Protection of Intellectual Property and the Agreement on Trade Related Aspects of Intellectual Property (TRIPs), which were duly ratified by the Philippines and concurred in by the Philippine Senate, permits a Filipino national to directly apply for and obtain a trade mark registration in a foreign country that is a signatory of the Paris Convention or TRIPs. According to the national treatment principle provided by these treaties, a Filipino enjoys, as regards the protection of intellectual property, the advantages that the other members of these treaties may grant to their nationals.
Clearly, the differences between the two systems are too glaring to be ignored.
Amendments to the IP Code
Administrator
In the Madrid Protocol, the international registration for trade marks and related duties will be performed by the IB. To make the system work, the IP offices of the CP will have to surrender some of their functions to the IB as will be discussed below.
Who can file an application?
In the Madrid Protocol and IP Code, the requirements as to the applicant’s domicile or place of business are the same, but differ as to nationality. Under the Madrid Protocol, the applicant should be a national of a member state of the Madrid Protocol; under the IP Code, he must be a Filipino or a national of a member of the Paris Convention or TRIPs or of a state with a reciprocity agreement with the Philippines.
There is no condition set in the Madrid Protocol that for a state to qualify as a member it should be a member of the Paris Convention or TRIPs, or any other treaty for the protection of intellectual property rights. The Madrid Protocol constitutes a genre in itself.
Replacement principle
While the Madrid Protocol mentions a replacement principle, there is no such principle in the IP Code. The replacement principle provides that where a mark that is the subject of a national or regional registration in the office of a CP is also the subject of an international registration, and both registrations stand in the name of the same person, the international registration is deemed to replace the national or regional registration, without prejudice to any right acquired by virtue of the latter.
Despite this proviso, it is arguable whether existing rights will not be affected: after the change of status to an international registration, it would become vulnerable to the so-called central attack as will be discussed below.
The formality examination
The IB shall formally examine whether an applicant has complied with the formality requirements under Articles 3 and 3ter.
This is a major deviation from the standard rule followed in most IP offices. Thus, the IPOPHL is mandated to examine the applicant’s compliance with both the formal and substantive requirements of a trade mark application fixed by the IP Code.
There is no room for the IPOPHL to take back this function from the IB because for the Madrid Protocol to work, the examination of the formal requirements, which are common to all international applications, must be centrally performed by the IB.
Appointment of representative
Under the Madrid Protocol, the role of a legal representative is not well-defined except when a CP issues a refusal of the registration. Communications relating to the applications, even during substantive examination, mainly flow among the office of origin, the IB and the IP office of the CP. However, after the IB has been notified of CP’s provisional refusal, the holder will have to submit to the jurisdiction of the CP to seek the reversal of the refusal.
Under section 124 of the IP Code, the application shall contain “the appointment of an agent or representative, if the applicant is not domiciled in the Philippines”. This is clearly one instance in which the IPOPHL gives up its right to impose an important requirement in order to comply with the Madrid Protocol.
Cancellation of registration
The only time that an international registration can be cancelled under the Madrid Protocol is through a request for cancellation at the IB by the office of origin. Furthermore, this may only be done when the basic application or registration, before the expiration of the five years from the date of international registration, has been withdrawn, has lapsed, has been renounced or has been the subject of a final decision of rejection, revocation, cancellation or invalidation, in respect of all or some of the goods and services listed in the international registration.
In this case, the IPOPHL replaces the procedure adopted by the IP Code to cancel a trade mark registration with that formulated by the Madrid Protocol.
Post registration
According to Article 4 of the Madrid Protocol, Rule 18 of IPOPHL’s office order number 139 provides that “any recordings made in the International Register in respect of an international registration, shall, to the extent that it applies to the Philippines as a Designated Contracting Party, have the same effect as if it had been recorded by the IPOPHL in its register of mark”.
On the other hand, the IP Code requires that “the Office shall maintain a Register in which shall be registered marks, numbered in the order of their registration, and all transactions in respect of each mark, required to be recorded by virtue of this law and…the Office shall record any change of address, or address for service, which shall be notified to it by the registered owner”.
This illustrates how the IPOPHL accommodates the Madrid Protocol on the recordal of activities that takes place after the issuance of a registration.
Validity of executive agreement
Article VII, section 21 of the 1987 Constitution provides that “no treaty or international agreement shall be valid and effective unless concurred in by at least two-thirds of all the members of the Senate”.
The Vienna Convention defines a treaty as “an international agreement concluded between States in written form and governed by international law, whether embodied in a single instrument or in two or more related instruments and whatever its particular designation”. A treaty can assume various names such as convention, pact, covenant, charter, protocol, concordat, modus vivendi. In this case, we are dealing with what is known as the Madrid Protocol.
Treaties are not the only form of international agreements. Our jurisprudence recognises executive agreements which have been entered into without the concurrence by the Senate.
The rule is that executive agreements which are in the character of original agreements of a permanent nature or which establish national policy require concurrence. Such agreements, whatever the name given to them, are in fact treaties. But executive agreements which are merely the implementation of treaties, statutes or well established policy, or that are transitory, do not require concurrence. They will come under administrative regulation.
Widely accepted is the rule that an executive agreement can only implement, and not amend or repeal, an existing domestic law.
The March 27 2012 Executive Agreement, in the context of our earlier discussion, clearly amends the IP Code.
International and domestic law
The Philippines follows the dualist theory, wherein the international law system is distinct from the domestic law system.
Since the international and domestic systems are distinct and operate separately, for international law to become part of domestic law it must be expressly and specifically transformed into domestic law through the appropriate constitutional machinery.
If no step is taken to validate the Madrid Protocol – although its validity will not be open to dispute in the sphere of international law, because a state may not plead its own law as an excuse for failure to comply with international law – Philippine courts have jurisdiction to declare that it is not valid and effective because it is in conflict with our Constitution
To prevent this, it is imperative that the IPOPHL initiate immediate steps to comply with Article VII, section 21 of the 1987 Constitution.
IGNACIO S SAPALO
Ignacio Sapalo is the managing partner in Sapalo Velez Bundang and Bulilan. He obtained a Bachelor of science in engineering in 1963 and a Bachelor of law from Ateneo de Manila in 1967. He was director of the Philippine Bureau of Patents, Trade Marks and Technology Transfer from 1987 to 1996. During this time, he led the group that drafted the 1998 IP Code of the Philippines. Ignacio is the author of Background Reading Material on the Intellectual Property System of the Philippines (WIPO, 1994) and has been a professor of IP at the Ateneo School of Law since 1991. He is the founder and president of the Intellectual Property Foundation, the president of Iprobe (an IP investigation and consulting firm), a member of the executive board of the International Chamber of Commerce of the Philippines and of the board of trustees of the Philippine Dispute Resolution Center. Ignacio is also a member of the Integrated Bar of the Philippines, the Philippine Bar Association, the Association Internationale pour la Protection de la Propriété Intellectuelle, the Asian Patent Attorney’s Association and the Intellectual Property Association of the Philippines.
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