The Philippines: Accession to the Madrid Protocol is valid
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

The Philippines: Accession to the Madrid Protocol is valid

On July 19 2016, the Supreme Court (SC), in GR 204605, entitled Intellectual Property Association of the Philippines (IPAP) v Hon. Paquito Ochoa, in his capacity as Executive Secretary, et al, ruled that the Madrid Protocol is an executive agreement and that its ratification by President Aquino is valid and constitutional.

The IPAP, an association of IP law practitioners, filed the action seeking to declare the accession of the Philippines to the Madrid Protocol unconstitutional on the ground of lack of concurrence by the Senate, and because it conflicts with Section 125 of RA 8293 (the IP Code), on the necessity of appointing a resident agent to represent a foreign trade mark applicant.

The SC distinguished between treaties and international agreements which require the Senate's concurrence, and executive agreements which may be validly entered into without the Senate's concurrence. The SC noted that agreements with respect to the registration of trade marks have been concluded by the executive with various countries without the Senate's concurrence. Citing the declaration of state policy with respect to intellectual property as stated in the IP Code, the SC held that the IPAP was mistaken in asserting that there was no congressional act that authorised accession of the Philippines to the Madrid Protocol.

The SC also held that there was no conflict between the Madrid Protocol and the IP Code. The method of registration through the Intellectual Property Office of the Philippines (IPOPHL) as expressly stated in the IP Code is distinct and separate from the method of registration through the WIPO. The IPOPHL requires the designation of a resident agent when it refuses the registration of a mark, and when filing the declaration of actual use.

The Madrid Protocol does not amend nor modify the IP Code since trade mark applications filed through the Madrid Protocol are examined under the provisions of the IP Code. The SC further held that IPAP misapprehends the procedure for examination under the Madrid Protocol, and that the difficulty claimed by IPAP is minimal or inexistent. Hence the SC dismissed the IPAP petition for lack of merit.

Hechanova_Editha-100

Editha R Hechanova


Hechanova & Co., Inc.Salustiana D. Ty Tower104 Paseo de Roxas AvenueMakati City 1229, PhilippinesTel: (63) 2 812-6561Fax: (63) 2 888-4290

editharh@hechanova.com.ph  

www.hechanova.com.ph

more from across site and ros bottom lb

More from across our site

Tamara Moll discusses solving the mysteries of the universe over lunch, desk dancing, and why even old cookie recipes could benefit from IP love
Women leaders at four firms discuss how they handle clients' diversity requirements and build strong teams
The new head of Phillips Ormonde Fitzpatrick outlines his vision for the firm and explains why D&I measures need constant work
Based on surveys covering more than 25,000 in-house lawyers, the series provides insights into what law firms must score highly on when pitching to in-house counsel
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tony Nguyen, who returned to Fish & Richardson this month after a year travelling overseas, tells Managing IP how and why he took the plunge
Tom Treutler, who previously managed the Vietnamese office of Tilleke & Gibbins, has joined East IP
Counsel discuss upcoming AI and data privacy legislation and what they’ve learned since Chile joined the Madrid Protocol
INTA has postponed its planned Annual Meeting in Dubai, but the organisation should think carefully about whether it wants to go there at all
The firm has named its new managing director after its former Asia head resigned earlier this year
Gift this article