IP News

SUPREME COURT Votes 13-0, Affirms Validity of Madrid Protocol

In IPAP v Executive Secretary (G.R. No. 204605), promulgated last 19 July 2016, the Supreme Court en banc voted 13-0 to dismiss the petition for certiorari and prohibition filed by the Intellectual Property Association of the Philippines (“IPAP”) against the Executive Secretary, the Secretary of Foreign Affairs, and the Director General of the Intellectual Property Office of the Philippines (“IPOPHL.”)

The petitioner IPAP argued that the accession of the Philippines to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (“Madrid Protocol”) is unconstitutional because the Madrid Protocol is a treaty, which requires the concurrence of the Senate in order to be valid and effective.

IPAP also argued that the implementation of the Madrid Protocol is unconstitutional because it conflicts with the Intellectual Property Code (“IP Code,”) which requires the designation of a resident agent for the processing of foreign trademark applications.

The Court ruled that DFA’s determination and treatment of the Madrid Protocol as an executive agreement was valid. Such determination was sanctioned by Executive Order No. 459 (Providing for the Guidelines in the Negotiation of International Agreements and its Ratification), which gives the DFA the power to determine whether an agreement is a treaty, or an executive agreement.

The Court ruled there was no conflict between the Madrid Protocol and the IP Code, pointing out that this contention stands on a false premise because it concerns two different methods of registration. Speaking through Justice Bersamin, the Court explained that “the method of registration through the IPOPHL, as laid down in the IP Code, is distinct and separate from the method of registration through the WIPO, as set in the Madrid Protocol.” Being separate methods, the Madrid Protocol neither amends nor modifies the IP Code on the acquisition of trademark rights. The Court discussed that the applications under the Madrid Protocol are still examined according to the relevant national law. Perhaps from this case we can get a glimpse of the Supreme Court’s stance in adapting to the ever-growing commercial landscape where change is the only thing that is constant. As Justice Leonen stated in his Concurring Opinion:

“I have no doubt that many of the lawyers who practice in the field of trademark protection in Intellectual Property Law do not have the myopic goal of simply being administrative agents or local post offices for owners of foreign marks. I have full confidence that they can meet the skill and accreditation requirements to work under the Madrid Protocol as well as any foreign lawyer. In an era of more transnational transactions and markets evolving from national boundaries, we should adapt as a profession, as surely as our products become more competitive. The sooner our profession adapts, the better it can assist our entrepreneurs and our own industries to weather the difficult political economies of the world market.”

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