BENGZON

OVERVIEW OF THE RULES OF

NEGRE
UNTALAN PROCEDURE OF INTELLECTUAL
PROPERTY CASES
Intellectual Property Attorneys

FERDINAND M. NEGRE 8 June 2018

OBJECTIVE

At the end of the session, participants shall have a

comprehensive view of the Rules of Procedure for
Intellectual Property cases.
OUTLINE OF DISCUSSION
• Background: the TRIPs Agreement

• A.M. 10-3-10-SC
• A.M. 02-1-06-SC

• Jurisdiction over cases of infringement of IP rights

• Relevant jurisprudence
Background: the TRIPs Agreement

Part III. Enforcement of Intellectual Property Rights

Article 41
1. Members shall ensure that enforcement procedures
as specified in this Part are available under their law so as
to permit effective action against any act of infringement
of intellectual property rights covered by this Agreement…
Background: the TRIPs Agreement

Part III. Enforcement of Intellectual Property Rights

Article 41
2. Procedures concerning the enforcement of intellectual
property rights shall be fair and equitable. They shall not
be unnecessarily complicated or costly, or entail
unreasonable time-limits or unwarranted delays.
A.M. 10-3-10-SC

RULES OF PROCEDURE FOR INTELLECTUAL

PROPERTY RIGHTS CASES
A.M. No. 10-3-10-SC
• RULES OF PROCEDURE FOR INTELLECTUAL
PROPERTY CASES
• Approved: 18 October 2011
• Consists of rules for:
• Civil procedure
• Criminal procedure
• Rules on evidence
• Destruction of seized goods pending trial
A.M. No. 10-3-10-SC

SEC. 2. In what courts applicable. These Rules shall be

observed by the Regional Trial Courts designated by the
Supreme Court as Special Commercial Courts.

SEC. 3. Where applicable, the Rules of Court shall apply

suppletorily to proceedings under these Rules.
A.M. No. 10-3-10-SC: Civil Procedure
•Applies to the civil actions involving:
• Trademarks/tradename infringement, unfair competition

• Patent/utility model/industrial design infringement

• False designation of origin/false description or representation

(Section 169, IPC)
• Civil actions for copyright infringement

• Actions concerning:

• Trademark license contracts (Section 150, IPC)

• Cancellation of collective marks (Section 167, IPC)
• Breach of contract (Section 194, IPC)
A.M. No. 10-3-10-SC: Civil Procedure
Objective: speedy; summary in nature

Rule 3, Section 1: Allowable pleadings

❑ Complaint
❑ Compulsory counterclaim pleaded in the answer
❑ Cross-claims pleaded in the answer
❑ Answers to the pleadings above

NOTE: All pleadings must be verified

A.M. No. 10-3-10-SC: Civil Procedure
Rule 3, Section 4: Prohibited Pleadings

a) Motion to dismiss;
b) Motion for a bill of particulars;
c) Motion for reconsideration of a final order or judgment,
except with regard to an order of destruction issued under
Rule 20 hereof;
d) Reply;
e) Petition for relief from judgment;
A.M. No. 10-3-10-SC: Civil Procedure
Rule 3, Section 4: Prohibited Pleadings

f) Motion for extension of time to file pleadings or other written

submissions, except for the answer for meritorious reasons;
g) Motion for postponement intended for delay;
h) Third-party complaint;
i) Intervention;
j) Motion to hear affirmative defenses; and
k) Any pleading or motion which is similar to or of like
effect as any of the foregoing
A.M. No. 10-3-10-SC: Civil Procedure

Rule 3, Section 3

• When party-litigant is a corporation, the

verification/certification of non-forum shopping required
should be executed by a natural person duly authorized
by the corporation, through a special power of attorney
or a board resolution for the purpose, attached to the
complaint
A.M. No. 10-3-10-SC: Civil Procedure

Rule 3, Section 5: Affidavits

• Affidavit Evidence
• Required to be submitted with and as part of the complaint or
answer
• No more direct examination; subject to cross-examination in case of
trial
• Question-and-Answer format; Numbered sequentially
A.M. No. 10-3-10-SC: Civil Procedure

Rule 4, Section 2: Service of summons, orders and

other court processes

1. Sheriff or other court officers

2. Counsel or plaintiff’s representative
3. Any private person authorized by court
A.M. No. 10-3-10-SC: Civil Procedure
Rule 4, Section 2: Service of summons, orders and
other court processes

For foreign corporation:

• Resident agent or designated gov’t agency
• Personal service with DFA through foreign court
• Publication or registered mail
• Facsimile or electronic means with proof of service
• Any other means
Writs of Search and Seizure

• Special Commercial Courts

Quezon City Manila

Pasig City Makati City

• Have authority to act on applications for the issuance of writs of

search and seizure in civil actions
• Writs issued by these courts are enforceable nationwide
• Concurrent jurisdiction with other special commercial courts
within territorial jurisdiction (Rule 2, Sec. 2)
Writs of Search and Seizure

Rule 3, Section 6: Failure to file complaint where a writ

of search and seizure issued

• Issuing court may lift writ and order return of seized goods
• Upon motion of party whose goods were seized
• With notice to applicant
• No case filed with appropriate court or quasi-judicial agency
(including IPO) within 31 days from date of issuance of writ
Writs of Search and Seizure

Rule 3, Section 6: Failure to file complaint where a writ

of search and seizure issued

• Court may also order disposal of goods if

• No motion for return of seized goods is filed within 60 days
from issuance of writ
• After hearing with notice to the parties
 Appeal
45 days On Pleadings
or Position
Paper in 30
STEPS days**
15 days
Pre-trial 5 days * Judgment
30 days
Trial
Answer 30 days Clarificatory Hearing
15 days
Service of
15 days 45 days
Summons

5 days *from period for **summary judgment

availing of, or in
Filing of compliance with Rule
complaint 5: Modes of Discovery
A.M. No. 10-3-10-SC: Criminal Procedure

Rule 8: Judgments

• Judgments and final orders are executory pending appeal

• Unless: restrained by a higher court

• Appeal within 15 days; Petition for Review (Rule 43)

A.M. No. 10-3-10-SC: Criminal Procedure

Applies to the following cases:

• Repetition of Infringement of Patent, Utility Model and Industrial
Design
• Trademark Infringement, Unfair Competition
• False Designations of Origin; False Description or Representation
• Copyright infringement
• Other violations of intellectual property rights as may be defined
by law
A.M. No. 10-3-10-SC: Criminal Procedure

• Prohibited motions:
• Motion to quash the information, except on the ground of lack
of jurisdiction;
• Motion for extension of time to file affidavits or any other
papers; and
• Motion for postponement intended for delay
A.M. No. 10-3-10-SC: Criminal Procedure

 Judge may immediately dismiss the case if the evidence on record

clearly fails to establish probable cause.
 If judge finds probable cause, he shall issue:
 Warrant of arrest; or,

 Commitment order, if accused has already been arrested

 In case of doubt on the existence of probable cause, the judge may

order the prosecutor to present additional evidence within five (5)
days from notice and the issue must be resolved by the court within
fifteen (15) days from the presentation of the additional evidence.
A.M. No. 10-3-10-SC: Criminal Procedure

Rule 11, Section 4: Disposition of goods seized pursuant to search

warrant
• Search warrant may be quashed if, no criminal complaint is filed
within 60 days from its issuance.
• By motion of party whose goods were taken and with notice to
applicant
• If no motion to quash is filed, the issuing court shall require the
parties, including the private complainant, if any, to show cause why
the search warrant should not be quashed.
 Appeal
STEPS 60 days
30 days

15 days

Memoranda Judgment
Dismiss or require Trial**
Pre-trial*
respondent to submit
Arraignment
counter-affidavit
Filing of
10 days Information
Preliminary *Within 30 days
investigation excluding:
**60 days for each
1. Mediation of party to present
Filing of verified civil aspect evidence-in-chief
complaint with 2. JDR
DOJ
Evidence in Patent Cases
• Letters patent issued by Bureau of Patents presumed
valid
• Prima facie evidence of existence and validity during term
specified therein
• Same rules apply to infringement cases involving utility
models and industrial designs - is this rule sound?

• Technical Advice
• Creation of a committee of 3 (motu proprio or on motion)
• IPO to provide equipment, technical facilities and personnel
Evidence in Copyright Cases

• Presumption of existence of copyright by affidavit

evidence
• Effect of registration and deposit of work with National
Library or IPO:
• Does not carry with it presumption of ownership of copyright
• Is not considered a condition sine qua non to claim copyright
infringement
Evidence in Trademark Infringement and Unfair
Competition
• Certificate of registration is prima facie evidence of
• Validity
• Ownership
• Registrant’s exclusive right to use
Evidence in Trademark Infringement and Unfair
Competition
• In case an identical mark or sign is used for identical
goods or services (counterfeit goods)
• Presumption of likelihood of confusion
• Factors considered in other cases
• Polaroid factors meant to address confusing and inconsistent
application of holistic and dominancy test
Evidence in Trademark Infringement and
Unfair Competition
Polaroid Factors:
1. Strength of plaintiff’s mark
2. Degree of similarity between the plaintiff’s and defendant’s
marks
3. Proximity of products or services
4. Likelihood that the plaintiff will bridge the gap
5. Evidence of actual confusion
6. Defendant’s good faith in adopting the mark
7. Quality of defendant’s product or service
8. Sophistication of the buyers
Order of Destruction
• Anytime after filing of complaint or information
• Notice and summary hearing
• Conditions:
• Inventory and photographs taken
• Witnessed and attested by:
• Accused/defendant or representative, or barangay officer
• Complainant, counsel or representative
• Seizing office or representative
• Representative samples preserved
• Bond posted
A.M. 02-1-06-SC

RULE ON SEARCH AND SEIZURE IN CIVIL ACTIONS

FOR INFRINGEMENT OF INTELLECTUAL PROPERTY
RIGHTS
A.M. 02-1-06-SC
• RULE ON SEARCH AND SEIZURE IN CIVIL ACTIONS
FOR INFRINGEMENT OF IPRs
• Approved: January 30, 2002
• Coverage:
• Provisional search and seizure and impounding of documents
and articles in pending and intended civil actions
• For the purpose of preventing infringement and preserving
relevant evidence
Grounds for Application of Writ
• Any delay is likely to cause irreparable harm to intellectual
property right holder; or
• Where there is a demonstrable risk of evidence being
destroyed
Nature of the Writ
• Ex parte
• Made in light of pending or intended civil action for
infringement
• Directs alleged infringing defendant or expected adverse
party to admit persons named in the order into his
premises and allow:
• Search and seizure of any document and article specified in
the order
• Inspection, copying, photographing
• Audio and visual recordings
Filing of Application
• A.M. 03-03-03-SC: Special Commercial Courts
• At the place where:
• Alleged violation occurred or is to occur; or
• Place to be searched
• A.M. 10-3-10-SC: SCCs in 4 MM cities with nationwide
jurisdiction
• At the election of applicant
• Except: Where complaint of infringement has already been
filed, where case is pending
Examination
• Application must be acted upon with 24 hours from filing
• Judge must examine the applicant and witnesses he may produce
• Searching questions and answers

• In writing and under oath or affirmation

• Examination will be recorded

• Sworn statements and affidavits made by application and witnesses

will form part of records of the case
• Hearing on application of writ shall be held in chambers of the judge
• Confidentiality of proceeding must be maintained by court personnel
Bond Requirement

• Applicant is required to post a cash bond, surety bond or

other equivalent security
• In favor of defendant or expected adverse party
• Conditioned on the undertaking of the applicant that he will pay:
• All costs which may be adjudged to defendant or expected adverse party
• All damages which the latter may sustain by reason of the issuance of the
writ
The Commissioner
• Independent Commissioner appointed by the court to
supervise the proper enforcement of the writ
• Member of the Philippine Bar
• Proven competence, integrity, and probity
• Receives reasonable compensation
• As may be determined by the court
• Charged as cost of the suit
When to Serve the Writ
• Writ must be served only on:
• Weekdays
• 8:00am – 5:00pm
• Except: When court directs that the writ may be served on
any day and any time for compelling reasons
• Compelling reasons must be stated in the application and
properly proven
Manner of Search and Seizure

Label or tag items if

cannot be delivered
manually
Delivery to
Preparation warehouse
of detailed
Take list For examination purposes,
specified
applicant/representative
items into In presence of
Search by shall be allowed access to
custody applicant or
Sheriff materials
representative and
under supervision
Service of sheriff
of Writ
Sheriff’s Return
• Verified
• Made within 3 days from enforcement of writ
• Contain:
• Full statement of proceedings under the writ
• Complete inventory of the documents and articles searched, inspected,
copied, seized, and impounded
• Objections of defendant on manner and regularity of service of the writ
• Serve copies on:
• Applicant
• Defendant/Expected adverse party
• Commissioner
Claim for Damages
• Grounds:
• Writ is discharged
• Found after trial that no infringement or threat of infringement of IP
right
• Court will order applicant to compensate
defendant/expected adverse party upon the bond
• Upon motion of defendant/expected adverse party
• For any injury or damage suffered by issuance and enforcement
of writ
JURISDICTION
Jurisdiction for IP Cases
INTELLECTUAL PROPERTY OFFICE REGULAR COURTS

Inter-partes cases:
• Oppositions to TM applications;
• Petitions to cancel TM
registrations;
• Petitions to cancel patents, UM
registrations, ID registrations;
• Petitions for Compulsory Licensing.
Jurisdiction for IP Cases
INTELLECTUAL PROPERTY OFFICE REGULAR COURTS

Administrative actions for IPVs where the Civil actions for violations of IPRs
total damages claimed are two hundred irrespective of the total damages
thousand pesos (P200,000.00) or more. claimed.
Cases involving: Cases involving:
• Trademarks/trade name infringement, • Trademarks/trade name infringement,
unfair competition unfair competition
• Patent/utility model/industrial design • Patent/utility model/industrial design
infringement infringement
• Civil actions for copyright infringement • Civil actions for copyright infringement
• False designation of origin/false • False designation of origin/false
description or representation (Section description or representation (Section
169, IPC) 169, IPC)
Jurisdiction for IP Cases
INTELLECTUAL PROPERTY OFFICE REGULAR COURTS
Criminal actions involving:
• Repetition of Infringement of Patent,
Utility Model (Section 108) and
Industrial Design
• Trademark Infringement, Unfair
Competition
• False Designations of Origin; False
Description or Representation
• Copyright infringement
JURISPRUDENCE
Jurisdiction for IP Cases
 Which between MTC level courts and RTCs have
jurisdiction to hear, try and decide cases involving
intellectual property rights?

Manolo Samson vs. Judge Reynaldo Daway, et.al.

G.R. Nos. 160054-55, [2004]
Samson vs. Daway
Issue:
Which court has jurisdiction over criminal and civil cases for
violation of intellectual property rights?
Samson vs. Daway
Issue:
Which court has jurisdiction over criminal and civil cases for
violation of intellectual property rights?

Held:
RTC.
Samson vs. Daway
RTC has jurisdiction over criminal and civil cases for
violation of intellectual property rights

1. R.A. No. 8293 and R.A. No. 166 are special laws conferring
jurisdiction over violations of intellectual property rights to the
Regional Trial Court. They should therefore prevail over R.A. No.
7691, which is a general law.

• Statutory Construction: In case of conflict between a general law

and a special law, the latter must prevail.
Procedure if IP case not raffled to SCC
 If an intellectual property case is raffled to an RTC branch
not designated as a Special Commercial Court, what
procedure should be followed?

Gonzales v. GJH Land, Inc.

G.R. 202664. [2015]
Gonzales v. GJH Land, Inc.
Facts:
• Gonzales filed a complaint against GJH Land, Inc. with the
RTC of Muntinlupa City
• An intra-corporate complaint regarding sale of shares in GJH Land,
Inc.
• Case was raffled to Branch 276, which was not a Special
Commercial Court
• GJH Land filed motion to dismiss on grounds of lack of
jurisdiction over the subject matter.
• Motion to dismiss was granted
Gonzales v. GJH Land, Inc.
Issue
• Did Branch 276 err in dismissing the case for lack of
jurisdiction over the subject matter?

Held:
• Yes. The case should have been referred to the Executive
Judge for re-docketing as a commercial case and assignment
to the single Special Commercial Court in the RTC of
Muntinlupa.
Gonzales v. GJH Land, Inc.

• RTCs, as courts of general jurisdiction, have jurisdiction

over commercial cases by virtue of RA 8799.
• Special Commercial Courts exercise the RTCs’
jurisdiction over such cases by virtue of special rules by
the Supreme Court.
Gonzales v. GJH Land, Inc.

Notes:
1. RA 8799 – transferred jurisdiction over cases enumerated
under Sec. 5 of PD 902-A to RTCs
2. AM No. 00-11-03-SC – designation of certain RTCs to try
and decide cases formerly cognizable by the SEC
3. AM No. 03-03-03-SC – consolidated commercial SEC
courts and Intellectual Property Courts in one RTC branch
in a particular locality
Gonzales v. GJH Land, Inc.
Procedure in case commercial case is raffled to a branch
that is not a Special Commercial Court:

• If only one SCC in RTC acquiring jurisdiction over the

commercial case:

• Refer the case to the Executive Judge for re-docketing as a

commercial case. The Executive Judge should then assign the
case to the SCC
Gonzales v. GJH Land, Inc.
Procedure in case commercial case is raffled to a branch
that is not a Special Commercial Court:

• If multiple SCCs in RTC:

• Executive Judge will order the re-raffling of the case among the
SCCs after re-docketing it as a commercial case.
Gonzales v. GJH Land, Inc.
Procedure in case commercial case is raffled to a branch
that is not a Special Commercial Court:

• If no SCC in RTC:

• refer the case to the nearest RTC with a designated SCC within
the judicial region. RTC to which case was referred should re-
docket case as commercial case and raffle or assign the case to a
SCC.
Concurrent Jurisdiction of BLA-IPO and
SCCs
Do the IPO and regular courts have concurrent jurisdiction
over intellectual property cases?

In-N-Out Burger, Inc. v. Sehwani, Inc.

G.R. 179127 [2008]
In-N-Out Burger, Inc. v. Sehwani, Inc.
Facts:
• In-N-Out Burger, Inc. applied for trademark and service mark
with IPO for In-N-Out and In-N-Out Burger & Arrow Design
• In-N-Out found out that Sehwani, Inc. had already obtained a
trademark registration for mark IN N OUT (inside of the letter O
formed a star)
• In-N-Out filed administrative complaint with BLA-IPO for unfair
competition and cancellation of trademark registration
• BLA-IPO ruled in favor of In-N-Out on ownership issue
• But found that Sehwani, Inc. was not guilty of unfair competition
In-N-Out Burger, Inc. v. Sehwani, Inc.
• In-N-Out filed appeal before IPO Director General
• Director General modified BLA-IPO’s decision and found
Sehwani guilty of unfair competition
• Sehwani filed an appeal before Court of Appeals
• CA reversed IPO Director General’s decision
• In its decision, CA declared that Sec. 163 of the IP Code
confers upon regular courts the sole jurisdiction to hear
and decide cases involving provisions of the IP Code
• Therefore, IPO had no jurisdiction to rule on the matter
In-N-Out Burger, Inc. v. Sehwani, Inc.
Issue:
• Do the IPO-BLA and the IPO Director General have
jurisdiction over administrative proceedings on violations of
the IP Code?

Held:
• Yes.
In-N-Out Burger, Inc. v. Sehwani, Inc.
• Nothing in Sec 163 of the IP Code vests sole jurisdiction
over IP cases in civil courts, to the exclusion of
administrative bodies
• Sec 160 and 170 also recognize the concurrent
jurisdiction of civil courts and the IPO over
intellectual property cases
In-N-Out Burger, Inc. v. Sehwani, Inc.
• IP Code expressly recognizes appellate jurisdiction of
Director General over decisions of the BLA-IPO
• Function of the BLA-IPO include (Sec 10, IP Code):
• Hear and decide opposition to application for registration of marks,
cancellation of trademarks, cancellation of patents, etc.
• Exercise original jurisdiction in administrative complaints for
violations of laws involving IP rights
Phil Pharmawealth v. Pfizer
Facts:
• Pfizer filed a Complaint for patent infringement against Phil
Pharmawealth with Bureau of Legal Affairs of the Intellectual Property
Office (BLA-IPO)
• Pharmawealth submitted bids for the supply of Sulbactam Ampicillin in several
hospitals without consent of Pfizer, who had patent rights over the substance
• BLA-IPO issued preliminary injunction but denied an Extension; Pfizer
filed Special Civil Action for Certiorari with Court of Appeals
• Meantime, Pfizer filed another complaint with RTC of Makati for
Infringement involving another patent but covering the same
Sulbactam Ampicillin
Phil Pharmawealth v. Pfizer
• Elements of res judicata
1. Former judgment must be final
2. Court which rendered it has jurisdiction over the subject
matter and the parties
3. Judgment must be on the merits
4. There must be identity of parties, subject matter, and causes
of action
• RTC/SCCs have concurrent jurisdiction with the BLA-IPO
over cases involving infringement of IP rights
Coverage of A.M. 02-1-06-SC
To what cases does A.M. 02-1-06-SC apply?

Yao v. People
G.R. 168306 [2007]

and

Del Rosario v. Donato, Jr.

G.R. 180595 [2010]
Yao v. People
Facts:
• RTC Cavite issued search warrant against petitioners
(incorporators and officers of Masagana Gas Corporation)
• Alleged violation of Sec. 155, in relation to Sec. 170 of IP Code
• Search warrant was served on petitioners by several NBI
operatives
• On Motion to Quash SW, Petitioners claim that because no
action for infringement has been filed against them “up to
present,” seized articles should be returned in accordance
with Sec. 20 of A.M. 02-1-06-SC
Yao v. People
Sec. 20 of A.M. 02-1-06-SC (Rule on Search and Seizure
in Civil Actions for Infringement of Intellectual Property
Rights)

“The writ shall also, upon motion of the expected adverse

party, be set aside and the seized documents and articles
returned to the expected adverse party if no case is filed with
the appropriate court within thirty-one (31) calendar days from
the date of issuance of the writ.”
Yao v. People
Issue:
• Does petitioner have right to the return of the goods seized
goods under Sec. 20 of A.M. 02-1-06-SC?

Held:
• No. A.M. 02-1-06-SC does not apply to this case because the
offense complained of is for criminal action.
Yao v. People
• A.M. 02-1-06-SC applies only to searches and seizures in
civil actions for infringement of Intellectual Property rights
• “Rule on on Search and Seizure in Civil Actions for
Infringement of Intellectual Property Rights”
• Sec. 1. Coverage – This Rule governs the provisional seizure
and impounding of documents and articles in pending and
intended civil actions…
• Offense complained of in this case is for criminal violation
of Sec. 155 in relations to Sec. 170 of IP Code.
Del Rosario v. Donato, Jr.
Facts:
• Branch 57 of RTC - Angeles City granted search warrant
applied for by respondent NBI agent Donato, Jr.
• Alleged storage and sale of fake Marlboro cigarettes by Petitioner
• Search warrant was implemented against Petitioner but no
fake cigarettes were found
• Petitioners filed civil complaint for damages against
respondents before Branch 62 of RTC – Angeles City
• Respondents moved to dismiss the complaint on grounds of forum
shopping (among others).
• RTC denied motion.
Del Rosario v. Donato, Jr.
• Respondents filed Certiorari before CA
• CA annulled RTC’s orders stating that Petitioners were
guilty of forum shopping
• CA invoked Sec. 21 of A.M. 02-1-06-SC

“Where no complaint is filed against the expected adverse

party, the motion shall be filed with the court which issued
the writ.”
Del Rosario v. Donato, Jr.
Issue:
• Was the CA correct in deciding that Petitioner is guilty of forum
shopping based on Sec. 21 of A.M. 02-1-06-SC?

Held:
• No. Subject search warrant was not issued under A.M. 02-1-
06-SC
Del Rosario v. Donato, Jr.
• Philip Morris did not file a civil action for infringement of its
trademark against Del Rosarios
• Warrant was applied for and issued under Sec. 3, 4, 5,
and 6 of Rules 126 of the Rules of Criminal Procedure
Recap: Learning Objectives
Participants should have acquired a working view of
the Rules of Procedure for Intellectual Property Cases

• Salient features of A.M. 10-3-10-SC

• A.M 02-1-06-SC
• Jurisdiction over cases of violation of IP rights
• Relevant jurisprudence
BENGZON
NEGRE

THANK YOU FOR LISTENING!

UNTALAN
Intellectual Property Attorneys

FERDINAND M. NEGRE