July 29, 2016
The Philippines’ accession to the Madrid Agreement Concerning the International Registration of Marks, also known as the Madrid Protocol, has been declared valid and constitutional by the Supreme Court. This paves the way for the continuation of the availability of Madrid Protocol applications as a cheaper alternative for protecting trademarks rights in the Philippines and internationally.
The Madrid Protocol currently has 97 member-countries, with the Philippines as one of the newer members. The Madrid Protocol allows for a simplified procedure for trademark owners to apply for protection of a trademark in the member-countries. Under the Madrid Protocol, an applicant may file a single application through one national Intellectual Property Office instead of filing an application in each country where protection is being sought.
The Philippines’ Instrument of Accession to the Protocol was signed by the Philippine president on March 27, 2012. A petition was thereafter filed by Intellectual Property Association of the Philippines (IPAP) to question the constitutionality of the Philippine president’s ratification of the Madrid Protocol, mainly pointing out that the ratification of the Senate is required before the same can take into effect.
The Madrid Protocol, it was argued, is a treaty that required the concurrence of the Philippine Senate. Alternatively, IPAP argued that even if accession is declared constitutional, the Madrid Protocol’s implementation was unconstitutional because it is in conflict with Section 125 of Republic Act No. 8293, or the Intellectual Property Code of the Philippines (IP Code), with respect to the requirement that foreign trademark owners must file their applications in the Philippines with the IPOPHL through a resident agent.
The Supreme Court held in its decision dated July 19, 2016 that the Madrid Protocol is an executive agreement that does not require the concurrence of the Senate. It further held that there is no conflict between the Madrid Protocol and the IP Code, citing that that the method of registration through the IPOPHL, as laid down by the IP Code, is distinct and separate from the method of registration through the WIPO, as set in the Madrid Protocol.
A full copy of the decision of the Supreme Court in IPAP vs. Ochoa, et al. (G.R. No. 204605) can be downloaded here.
