Rules for filing actions for violation of intellectual property

       On October 18, 2011, the Supreme Court approved A.M. 10-3-10-SC prescribing Rules of Procedure for Intellectual Property Rights Cases.

        The Rules shall be observed by the Regional Trial Courts designated by the Supreme Court as Special Commercial Courts.      When the court determines that the civil or criminal action involves complex issues, it shall issue a special order that the regular procedure prescribed in the Rules of Court shall apply, stating the reason therefor.

Under said Rules, the Special Commercial Courts designated by the Supreme Court are those Special Commercial Courts in Quezon City, Manila, Makati and Pasig.

These Special Commercial Courts shall also have authority to act on applications for the issuance of search warrants involving violations of the Intellectual Property Code (IP Code), which search warrants shall be enforceable nationwide.   Within their respective territorial jurisdictions, the Special Commercial Courts in the judicial regions where the violation of intellectual property rights occurred shall have concurrent jurisdiction to issue search warrants.  Accordingly, the Executive Judges are hereby relieved of the duty to issue search warrants involving violations of the Intellectual Property Code in criminal cases as stated in Sec. 12, Chapter V of A.M. No. 03-8-02-SC (Guidelines on the Selection and Appointment of Executive Judges and Defining their Powers, Prerogatives and Duties).

        Orders issued by the courts under these Rules are immediately executory unless restrained by a superior court.

        Any pleading, motion, opposition, defense or claim filed by any interested party shall be supported by verified statements that the affiant has read the same and that the factual allegations therein are true and correct of his personal knowledge or based on authentic records, and shall contain as annexes such documents as may be deemed by the party submitting the same as supportive of the allegations in the affidavits.  (Section 5)

        Actions which can be filed under the Rules are:

1)          all civil actions for violations of intellectual property rights provided for in Republic Act 8293 or the Intellectual Property Code, as amended, including civil actions for Infringement of Patent (Section 76), Utility Model (Section 108) and Industrial Design (Section 119), Trademark Infringement (Section 155 in relation to Section 163), Unfair Competition (Section 168 in relation to Section 163), actions concerning trademark license contracts (Section 150 in relation to Section 163), actions concerning imported merchandise or goods bearing infringing marks or trade names (Section 166 in relation to Section 163), actions for cancellation of the registration of a collective mark (Section 167 in relation to Section 163), False Designations of Origin; False Description or Representation (Section 169 in relation to Section 163), Breach of Contract (Section 194), civil actions for infringement of copyright, moral rights, performers’ rights, producers’ rights, and broadcasting rights (Sections 177, 193, 203, 208, 211, and 216), and other violations of intellectual property rights as may be defined by law.

2)          All criminal actions for violations of intellectual property rights provided for in Republic Act 8293 or the Intellectual Property Code, as amended, including Repetition of Infringement of Patent (Section 84), Utility Model (Section 108) and Industrial Design (Section 119), Trademark Infringement (Section 155 in relation to Section 170), Unfair Competition (Section 168 in relation to Section 170), False Designations of Origin; False Description or Representation (Section 169.1 in relation to Section 170), infringement of copyright, moral rights, performers’ rights, producers’ rights, and broadcasting rights (Section 177, 193, 203, 208 and 211 in relation to Section 217), and other violations of intellectual property rights as may be defined by law.

On the other hand, the Intellectual Property Code (IP Code) provides an alternative venue for redress for aggrieved parties in IP violation cases by filing administrative complaints before the Bureau of Legal Affairs (BLA) of the Intellectual Property Office, Philippines.  The BLA has original jurisdiction and power to hear and decide the case at the first instance (i.e., from the inception of the case) if the total damages claimed are two hundred thousand pesos (P200,000) and above. The commencement of an action under the Bureau’s Rules is independent and without prejudice to the filing of an action with the regular courts.

The Rules of Court have suppletory effect to IPOs Rules and Regulations on Administrative Complaints for Violations of Laws involving Intellectual Property Rights.