There is no value to having intellectual property if they are not properly and efficiently enforced. Intellectual property rights owners have to be vigilant against infringers and must have the right strategy to ensure that their intellectual property are enforced at all times. In order to come up with an effective and cost-efficient enforcement strategy, several factors such as nature of the infringing act, the profile of the infringing party, the volume of the infringing items and location of retail stores and warehouse have to be taken into consideration. Our lawyers are resourceful and creative strategists who can devise an effective enforcement strategy suited to clients’ needs.
Our firm can conduct market surveys for the purpose of locating, identifying and verifying counterfeiters and their infringing activities. The work entails actual market visits and pretext inquiries which are effective in identifying the source of counterfeit products, the names and addresses of the persons involved in infringing activities, the location of warehouses, the number of inventory of infringing products, the sources of counterfeit products and the distribution outlets. Market surveys are usually done in collaboration with expert private investigators.
Actual verification of records and papers filed by infringers or counterfeiters with the Securities and Exchange Commission (SEC), Department of Trade and Industry (DTI), Intellectual Property Office, the Business Permit Section of the Local Government Unit involved and other government regulatory agencies, if applicable, are also conducted.
Our firm can also conduct online searches for any infringement activities being conducted on the internet. In case of counterfeiting through the internet, our firm also conducts proprietary search of domain names.
Issuance of Cease and Desist Letters
A campaign for issuance of cease and desist letters against infringers is a one of the most cost-effective ways in enforcing one’s intellectual property rights. If there is no deliberate intent to infringe, more often than not, a third party will cease any unauthorized use of intellectual property once a letter of demand is received. If the infringer is only dealing with small quantities of counterfeit items rendering a search and seizure or raid action impractical, then a cease and desist letter might be a better course of action for the intellectual property rights owner. A cease and desist letter campaign may also be used against enterprises which use or register a trade name, business name or corporate name which is identical to or confusingly similar with one’s trademark or trade name.
Our firm can assist clients in writing cease and desist letters and in conducting follow-up work after the letters are sent out. Our firm can assist clients in verifying compliance with the cease and desist letters and in the negotiation and drafting of settlement agreements or deeds of undertaking.
Recordal of IP with the Bureau of Customs
The Bureau of Customs (BOC) of the Philippines has a system of recording intellectual property rights which enables the BOC Intellectual Property Unit to alert intellectual property owners or their representatives if there are suspected shipments of counterfeit goods. The BOC may block the entry of counterfeit goods once their counterfeit nature is confirmed.
Aumento & Ponce can assist clients in registering their intellectual property rights with the BOC . The firm can receive alerts on suspected shipments on behalf of clients and can assist in the actual physical inspection of these goods.
Registration with the BOC is an economical way of protecting one’s intellectual property rights in the Philippines. Its effectiveness is increased if an owner is assisted by counsels or local representatives who are able to work closely with officers of the BOC, particularly with its Intellectual Property Unit.
Search, Seizure and Destruction of Counterfeit Items
A search and seizure action is done through a court-issued search warrant that will be enforced by authorized enforcement officers such as the agents from the National Bureau of Investigation (NBI) or the Philippine National Police (PNP).
Aumento & Ponce works closely with credible private investigators specializing in investigating intellectual property violations to determine the location and quantity of the counterfeit items as well as the identity and relevant details of the infringers. We also work closely with agents of the National Bureau of Investigation and the Philippine National Police in conducting search and seizure operations, starting with the preparation of necessary documents needed in applying for a court issued search warrant. After the infringing goods are seized, we also assist clients in drafting and filing the complaint with the public prosecutors’ office in order for a criminal case to be filed against the infringers.
Our firm can also assist in securing an order from the proper court for the destruction of the seized counterfeit items.
Summary of Services for Enforcement
- Publication of Warning Advertisements
- Conduct of Market Surveys
- Issuance of Cease and Desist Letters
- Recordal of Intellectual Property Rights with the Bureau of Customs
- Search and Seizure Actions Against Infringers
- Seizure and Destruction of Counterfeit Items