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.
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