Republic of the Philippines
SUPREME COURT
Manila
INTELLECTUAL PROPERTY
ASSOCIATION OF THE
PHILIPPINES,
Plaintiff,
- versus - G.R. No. 204605
July 19, 2016
HON. PAQUITO OCHOA, IN
HIS CAPACITY AS EXECUTIVE
SECRETARY,
HON. ALBERT DEL ROSARIO,
IN HIS CAPACITY AS SECRETARY
OF THE DEPARTMENT OF
FOREIGN AFFAIRS, AND
HON. RICARDO BLANCAFLOR,
IN HIS CAPACITY AS THE
DIRECTOR GENERAL OF THE
INTELLECTUAL PROPERTY OFFICE
OF THE PHILIPPINES
Defendants.
x--------------------------------------x
PETITION FOR CERTIORARI AND PROHIBITION
DEFENDANTS’ POSITION PAPER
DEFENDANTS, through the undersigned counsel unto this
Honorable Court, most respectfully submit this verified Position Paper,
and avers that:
PREFATORY STATEMENT
The Plaintiff in this case is the Intellectual Property Association
of the Philippines (IPAP), an association of law firms and individual
practitioners in Intellectual Property Law, with office address at 2304
a, Tektite West Tower, PSE Center, Exchange Rd., Pasig, Metro
Manila, where the said association could be served with summons and
other legal process of this Honorable Office.
STATEMENT OF THE CASE
The Madrid System for the International Registration of Marks
{Madrid System), which is the centralized system providing a one-stop
solution for registering and managing marks worldwide, allows the
trademark owner to file one application in one language, and to pay
one set of fees to protect his mark in the territories of up to 97 member-
states.2 The Madrid System is governed by the Madrid Agreement,
concluded in 1891, and the Madrid Protocol, concluded in 1989.3
The Madrid Protocol, which was adopted in order to remove the
challenges deterring some countries from acceding to the Madrid
Agreement, has two objectives, namely: (1) to facilitate securing
protection for marks; and (2) to make the management of the
registered marks easier in different countries.4
In 2004, the Intellectual Property Office of the Philippines (IPOPHL),
the government agency mandated to administer the intellectual
property system of the country and to implement the state policies on
intellectual property, began considering the country's accession to
the Madrid Protocol. However, based on its assessment in 2005, the
IPOPHL needed to first improve its own operations before making the
recommendation in favor of accession. The IPOPHL thus implemented
reforms to eliminate trademark backlogs and to reduce the turnaround
time for the registration of marks.5
In the meanwhile, the IPOPHL mounted a campaign for information
dissemination to raise awareness of the Madrid Protocol. It launched a
series of consultations with stakeholders and various business groups
regarding the Philippines' accession to the Madrid Protocol. It
ultimately arrived at the conclusion that accession would benefit the
country and help raise the level of competitiveness for Filipino brands.
Hence, it recommended in September 2011 to the Department of
Foreign Affairs (DFA) that the Philippines should accede to the Madrid
Protocol.6
After its own review, the DFA endorsed to the President the country's
accession to the Madrid Protocol. Conformably with its express
authority under Section 9 of Executive Order No. 459 (Providing for the
Guidelines in the Negotiation of International Agreements and its
Ratification) dated November 25, 1997, the DFA determined that
the Madrid Protocol was an executive agreement. The IPOPHL, the
Department of Science and Technology, and the Department of Trade
and Industry concurred in the recommendation of the DFA.7
On March 27, 2012, President Benigno C. Aquino III ratified the Madrid
Protocol through an instrument of accession. The instrument of
accession was deposited with the Director General of the World
Intellectual Property Organization (WIPO) on April 25,
2
2012,8 The Madrid Protocol entered into force in the Philippines on July
25, 2012.9
Plaintiff IPAP, an association of more than 100 law firms and
individual practitioners in Intellectual Property Law whose main
objective is to promote and protect intellectual property rights in
the Philippines through constant assistance and involvement in
the legislation of intellectual property law,10 has commenced this
special civil action for certiorari and prohibition11 to challenge the
validity of the President's accession to the Madrid
Protocol without the concurrence of the Senate, Citing Pimentel,
Jr. v. Office of the Executive Secretary, the IPAP has averred:
Nonetheless, while the President has the sole authority to negotiate
and enter into treaties, the Constitution provides a limitation to his
power by requiring the concurrence of 2/3 of all the members of the
Senate for the validity of the treaty entered into by him. Section 21,
Article VII of the 1987 Constitution provides that "no treaty or
international agreement shall be valid and effective unless concurred
in by at least two-thirds of all the Members of the Senate." The 1935
and the 1973 Constitution also required the concurrence by the
legislature to the treaties entered into by the executive.12
According to the IPAP, the Madrid Protocol is a treaty, not an
executive agreement; hence, respondent DFA Secretary Albert
Del Rosario acted with grave abuse of discretion in determining
the Madrid Protocol as an executive agreement.13chanrobleslaw
The IPAP has argued that the implementation of the Madrid
Protocol in the Philippines, specifically the processing of foreign
trademark applications, conflicts with the IP Code,14 whose
Section 125 states:
Sec. 125. Representation; Address for Service. - If the applicant is
not domiciled or has no real and effective commercial establishment in
the Philippines, he shall designate by a written document filed in the
office, the name and address of a Philippine resident who may be
served notices or process in proceedings affecting the mark. Such
notices or services may be served upon the person so designated by
leaving a copy thereof at the address specified in the last designation
filed. If the person so designated cannot be found at the address given
in the last designation, such notice or process may be served upon the
Director. (Sec. 3, R.A. No. 166 a)
It has posited that Article 2 of the Madrid Protocol provides in
contrast:
3
Article 2
Securing Protection through International Registration
(1) Where an application for the registration of a mark has been filed
with the Office of a Contracting Party, or where a mark has been
registered in the register of the Office of a Contracting Party, the person
in whose name that application (hereinafter referred to as "the basic
application") or that registration (hereinafter referred to as "the basic
registration") stands may, subject to the provisions of this Protocol
secure protection for his mark in the territory of the Contracting Parties,
by obtaining the registration of that mark in the register of the
International Bureau of the World Intellectual Property Organization
(hereinafter referred to as "the international registration," "the
International Register," "the International Bureau" and "the
Organization", respectively), provided that,
(i) where the basic application has been filed with the Office of a
Contracting State or where the basic registration has been made
by such an Office, the person in whose name that application or
registration stands is a national of that Contracting State, or is
domiciled, or has a real and effective industrial or commercial
establishment, in the said Contracting State,
(ii) where the basic application has been filed with the Office of a
Contracting Organization or where the basic registration has
been made by such an Office, the person in whose name that
application or registration stands is a national of a State member
of that Contracting Organization, or is domiciled, or has a real
and effective industrial or commercial establishment, in the
territory of the said Contracting Organization.
(2) The application for international registration (hereinafter referred to
as "the international application") shall be filed with the International
Bureau through the intermediary of the Office with which the basic
application was filed or by which the basic registration was made
(hereinafter referred to as "the Office of origin"), as the case may be.
(3) Any reference in this Protocol to an "Office" or an "Office of a
Contracting Party" shall be construed as a reference to the office that
is in charge, on behalf of a Contracting Party, of the registration of
marks, and any reference in this Protocol to "marks" shall be construed
as a reference to trademarks and service marks.
(4) For the purposes of this Protocol, "territory of a Contracting Party"
means, where the Contracting Party is a State, the territory of that State
and, where the Contracting Party is an intergovernmental organization,
the territory in which the constituting treaty of that intergovernmental
organization applied.
4
The IPAP has insisted that Article 2 of the Madrid Protocol means that
foreign trademark applicants may file their applications through the
International Bureau or the WIPO, and their applications will be
automatically granted trademark protection without the need for
designating their resident agents in the country.15
Moreover, the IPAP has submitted that the procedure outlined in
the Guide to the International Registration of Marks relating to
representation before the International Bureau is the following, to wit:
Rule 3(1)(a) 09.02 References in the Regulations, Administrative
Instructions or in this Guide to representation relate only to
representation before the International Bureau. The questions of
the need for a representative before the Office of origin or the
Office of a designated Contracting Party (for example, in the
event of a refusal of protection issued by such an Office), who
may act as a representative in such cases and the method of
appointment, are outside the scope of the Agreement, Protocol
and Regulations and are governed by the law and practice of the
Contracting Party concerned.
which procedure is in conflict with that under Section 125 of the IP
Code, and constitutes in effect an amendment of the local law by the
Executive Department.16
The IPAP has prayed that the implementation of the Madrid Protocol in
the Philippines be restrained in order to prevent future wrongs
considering that the IPAP and its constituency have a clear and
unmistakable right not to be deprived of the rights granted them by the
IP Code and existing local laws.17
In behalf of the respondents, this counsel argues that the IPAP does
not have the locus standi to challenge the accession to the Madrid
Protocol; that the IPAP cannot invoke the Court's original jurisdiction
absent a showing of any grave abuse of discretion on the part of the
respondents; that the President's ratification of the Madrid Protocol as
an executive agreement is valid because the Madrid Protocol is only
procedural, does not create substantive rights, and does not require
the amendment of the IP Code; that the IPAP is not entitled to the
restraining order or injunction because it suffers no damage from the
ratification by the President, and there is also no urgency for such
relief; and the IPAP has no clear unmistakable right to the relief
sought.18
ISSUES
5
I. WHETHER OR NOT THE IPAP HAS LOCUS STANDI TO
CHALLENGE THE PRESIDENT'S RATIFICATION OF
THE MADRID PROTOCOL;
II. WHETHER OR NOT THE PRESIDENT'S RATIFICATION OF
THE MADRID PROTOCOL IS VALID AND CONSTITUTIONAL;
AND CRALAWLAWLIBRARY
III. WHETHER OR NOT THE MADRID PROTOCOL IS IN
CONFLICT WITH THE IP CODE.
DISCUSSIONS
PLAINTIFF HAS NO
LEGAL STANDING TO SUE
--------------------------------------------
The argument of the IPAP is untenable.
Legal standing refers to "a right of appearance in a court of justice on
a given question."22 According to Agan, Jr. v. Philippine International
Air Terminals Co., Inc.,23 standing is "a peculiar concept in
constitutional law because in some cases, suits are not brought by
parties who have been personally injured by the operation of a law or
any other government act but by concerned citizens, taxpayers or
voters who actually sue in the public interest."
The injury that the IPAP will allegedly suffer from the implementation
of the Madrid Protocol is imaginary, incidental and speculative as
opposed to a direct and material injury required by the foregoing tenets
on locus standi. Additionally, as the OSG points out in the
comment,26 the IPAP has misinterpreted Section 125 of the IP Code
on the issue of representation. The provision only states that a foreign
trademark applicant "shall designate by a written document filed in the
office, the name and address of a Philippine resident who may be
served notices or process in proceedings affecting the mark;" it does
not grant anyone in particular the right to represent the foreign
trademark applicant. Hence, the IPAP cannot justly claim that it will
suffer irreparable injury or diminution of rights granted to it by Section
125 of the IP Code from the implementation of the Madrid Protocol.
PLAINTIFF MISTAKENLY
CLAIM THAT ACCESSION
TO THE MADRID PROTOCOL
IS UNCONSTITUTIONAL
----------------------------------
6
Section 2 of our IP Code states that the State recognizes that an
effective intellectual and industrial property system is vital to the
development of domestic and creative activity, facilitates transfer
of technology, attracts foreign investments, and ensures market
access for our products. It shall protect and secure the exclusive
rights of scientists, inventors, artists and other gifted citizens to
their intellectual property and creations, particularly when
beneficial to the people, for such periods as provided in this Act.
The use of intellectual property bears a social function. To this end, the
State shall promote the diffusion of knowledge and information for the
promotion of national development and progress and the common
good.
It is also the policy of the State to streamline administrative
procedures of registering patents, trademarks and copyright, to
liberalize the registration on the transfer of technology, and to enhance
the enforcement of intellectual property rights in the Philippines.
In view of the expression of state policy having been made by the
Congress itself, the IPAP is plainly mistaken in asserting that "there
was no Congressional act that authorized the accession of the
Philippines to the Madrid Protocol."34
Accordingly, DFA Secretary Del Rosario's determination and treatment
of the Madrid Protocol as an executive agreement, being in apparent
contemplation of the express state policies on intellectual property as
well as within his power under Executive Order No. 459, are upheld.
We observe at this point that there are no hard and fast rules on the
propriety of entering into a treaty or an executive agreement on a given
subject as an instrument of international relations. The primary
consideration in the choice of the form of agreement is the parties'
intent and desire to craft their international agreement in the form they
so wish to further their respective interests. The matter of form takes a
back seat when it comes to effectiveness and binding effect of the
enforcement of a treaty or an executive agreement, inasmuch as all
the parties, regardless of the form, become obliged to comply
conformably with the time-honored principle of pacta sunt
servanda.35 The principle binds the parties to perform in good faith their
parts in the agreements.36
NO CONFLICT
BETWEEN THE
MADRID PROTOCOL
AND THE IP CODE
--------------------------------
7
The IPAP also rests its challenge on the supposed conflict
between the Madrid Protocol and the IP Code, contending that
the Madrid Protocol does away with the requirement of a resident
agent under Section 125 of the IP Code; and that the Madrid Protocol is
unconstitutional for being in conflict with the local law, which it cannot
modify.
The IPAP's contentions stand on a faulty premise. 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. Comparing the two methods of
registration despite their being governed by two separate systems of
registration is thus misplaced.
In arguing that the Madrid Protocol conflicts with Section 125 of the IP
Code, the IPAP highlights the importance of the requirement for the
designation of a resident agent. It underscores that the requirement is
intended to ensure that non-resident entities seeking protection or
privileges under Philippine Intellectual Property Laws will be subjected
to the country's jurisdiction. It submits that without such resident agent,
there will be a need to resort to costly, time consuming and
cumbersome extraterritorial service of writs and processes.37
The IPAP misapprehends the procedure for examination under
the Madrid Protocol. The difficulty, which the IPAP illustrates, is
minimal, if not altogether inexistent. The IPOPHL actually requires the
designation of the resident agent when it refuses the registration of a
mark. Local representation is further required in the submission of the
Declaration of Actual Use, as well as in the submission of the license
contract.38 The Madrid Protocol accords with the intent and spirit of the
IP Code, particularly on the subject of the registration of trademarks.
The Madrid Protocol does not amend or modify the IP Code on the
acquisition of trademark rights considering that the applications under
the Madrid Protocol are still examined according to the relevant
national law. In that regard, the IPOPHL will only grant protection to a
mark that meets the local registration requirements.
PLAINTIFF IS LIABLE TO
PAY THE COST OF SUIT
-------------------------------------------
The defendants were forced to secure the services of a lawyer
to defend their case, and they spent total amount of Php 175,000.oo
plus the payment of Php 5,000.oo as appearance fee. Hence, plaintiff
should likewise be ordered to pay defendants attorney’s fees.
PRAYER
8
WHEREFORE, premises considered, it is most respectfully
prayed of this Honorable Office to dismiss the instant complaint for
utter lack of merit.
Other reliefs just and equitable under the premises are likewise
prayed for.
9
VERIFICATION
I, ALBERT DEL ROSARIO, of legal age and Filipino, after
having been duly sworn to in accordance with law, depose and state
THAT:
I am one of the defendants, representing the Corporation-
defendent in the above entitled case; I have caused the preparation of
the foregoing document and I have read the same and the contents of
which are true and correct of my own knowledge and/or on the basis
of authentic documents.
AFFIANT SAYETH NAUGHT.
In witness whereof, I hereunto affix my signature this October 26,
2022.
ALBERT DEL ROSARIO
Affiant
10
VERIFICATION
I, PAQUITO OCHOA, of legal age and Filipino, after having been
duly sworn to in accordance with law, depose and state THAT:
I am one of the defendants, representing the Corporation-
defendent in the above entitled case; I have caused the preparation of
the foregoing document and I have read the same and the contents of
which are true and correct of my own knowledge and/or on the basis
of authentic documents.
AFFIANT SAYETH NAUGHT.
In witness whereof, I hereunto affix my signature this October 26,
2022.
PAQUITO OCHOA
Affiant
11
VERIFICATION
I, RICARDO BLANCAFLOR, of legal age and Filipino, after
having been duly sworn to in accordance with law, depose and state
THAT:
I am one of the defendants, representing the Corporation-
defendent in the above entitled case; I have caused the preparation of
the foregoing document and I have read the same and the contents of
which are true and correct of my own knowledge and/or on the basis
of authentic documents.
AFFIANT SAYETH NAUGHT.
In witness whereof, I hereunto affix my signature this October 26,
2022.
RICARDO BLANCAFLOR
Affiant
12
REPUBLIC OF THE PHILIPPINES)
KORONADAL CITY )SS.
SUBSCRIBED AND SWORN to before me this October 26,
2022; affiants exhibiting to me their:
ALBERT DEL ROSARIO TIN I.D. No. 108-945-748-00
PAQUITO OCHOA TIN I.D. No. 109-945-749-00
RICARDO BLANCAFLOR TIN I.D. No. 110-945-750-00
WITNESS MY HAND AND SEAL this October 26, 2022.
DOC. NO._______
PAGE NO._______ NOTARY PUBLIC
BOOK NO._______
SERIES OF 2015.
Copy furnished by registered mail
Registry Receipt No.__________
Koronadal Post Office
Date: September 2, 2015
Counsel for the Plaintiff
2305, Tektite West Tower,
PSE Center, Exchange Rd.,
Pasig, Metro Manila
13
