Why this affects you

The Revised Rules introduce substantial changes to the IP litigation process, and will have a significant effect on how companies approach, avoid or prepare for litigation.

Applicability

The Revised Rules will apply to newly-filed cases (i.e., those filed on or after 16 November 2020). It will also apply to all pending IP cases as of the effectivity date, except to the extent that in the opinion of the court, application of the Revised Rules would not be feasible or would work injustice.

Salient Changes Introduced by the Revised Rules

1. Timeline for the promulgation of judgment

Rule 8, Section 1 of the Revised Rules provides for a shorter period of sixty (60) calendar days after pre-trial for the court to render judgement. This is in contrast to the applicable period for regular cases provided for in the recently issued Revised Rules on Civil Procedure, which gives the court ninety (90) calendar days from the termination of pre-trial to promulgate its decision. This amendment can hopefully contribute to the speedy disposition of IP rights cases in the Philippines, and consequently lead to the declogging of court dockets.

2. New rule on Special Commercial Courts

Under the Revised Rules, the Special Commercial Courts in Baguio City, Iloilo City, Cebu City, Cagayan de Oro City and Davao City, in addition to the previously authorized Special Commercial Courts in Quezon City, Manila City, Makati City, and Pasig City, shall also be vested with the authority to act on applications for the issuance of writs of search and seizure in both civil and criminal actions. Such search warrants shall be enforceable nationwide. This is a significant amendment since it increased the number of Special Commercial Courts that have the authority to issue search warrants which can be enforced anywhere in the Philippines.

3. Prohibited pleadings and motions

The prohibited pleadings and motions contained in Rule 3, Section 4 of the old rules have also been amended to allow for motions to dismiss on the grounds of lack of jurisdiction, litis pendentia, res judicata and prescription. Likewise, the Revised Rules also allow for motions for postponement, but only if it is based on acts of God, force majeure or physical inability of the witness to appear and to testify. The grounds raised for the postponement of the hearing due to physical inability of the witness to appear must be justified and substantiated. Thus, the Revised Rules are more detailed and allows for more leeway in the allowance of both motions to dismiss and motions for postponement.

4. Integration of the salient features of the Revised Rules of Civil Procedure in the Revised Rules

In revising the old rules, the salient and significant features of the Revised Rules of Civil Procedure were integrated into the current Revised Rules. The Revised Rules now require the complaint and the answer to include the evidence in support thereof. Furthermore, the answer by the defendant to the complaint shall similarly be filed within thirty (30) calendar days from service of summons, while the answer to counterclaims or cross-claims shall be filed and served within fifteen (15) calendar days from service of the answer in which they are pleaded.

Under Rule 3, Section 4(c), replies are no longer prohibited as long as an actionable document is attached in the answer. The Revised Rules also incorporate the amended provision of the Revised Rules of Civil Procedure on substituted service of summons. In relation to the foregoing, extraterritorial service of summons, as provided for in international conventions to which the Philippines is a party, shall now also be allowed in the Revised Rules.

Lastly, similar to the language employed in the Revised Rules of Civil Procedure, the Revised Rules are now also considered as gender-sensitive.

5. Integration of the salient features of the Revised Guidelines for Continuous Trial of Criminal Cases in the Revised Rules

In relation to the applicable provisions for criminal cases, the salient points of the Revised Guidelines for Continuous Trial of Criminal Cases were incorporated and adopted into the Revised Rules of Civil Procedure. These include the incorporation of additional grounds for prohibited motions, the mandatory use of judicial affidavits, the simultaneous setting of arraignment and pre-trial, austere rules on postponement, proper scheduling of the trial of cases, proper stipulation of facts and testimonies of witnesses, and other related rules intended to expedite the resolution of criminal cases.

6. Use of electronic means in relation to the various modes of discovery

In relation to the modes of discovery, the Revised Rules provide that courts may now allow a deponent to give his or her deposition through electronic means. Furthermore, the present rules also state that the other modes of discovery under the Rules of Court, including the use of electronic means, shall be allowed. This is a significant change from the present practice since depositions and other modes of discovery may now be conducted via teleconferencing, videoconferencing and other electronic means.

This amendment can prove very useful, especially during the current pandemic, wherein different community quarantine schemes are imposed resulting in travel restrictions and the enforcement of social distancing protocols.

7. Proof of actual use of a mark in trademark infringement and unfair competition cases

In contrast to the old rules, the Revised Rules enumerate which shall be accepted as proof of actual use of a mark in trademark infringement and unfair competition cases.

Rule 18, Section 2 of the Revised Rules consider the following as proof of actual use of the mark:

(a) labels of the mark as it is used;

(b) downloaded pages from the website of the applicant or registrant clearly showing that the goods are being sold or the services are being rendered in the Philippines;

(c) photographs, including digital photographs printed on ordinary paper, of goods bearing the marks as these are actually used or of the stamped or marked container of goods and of the establishment/s where the services are being rendered;

(d) brochures or advertising materials showing the actual use of the mark on the goods being sold or services being rendered in the Philippines;

(e) for online sale, receipts of sale of the goods or services rendered or other similar evidence of use, showing that the goods are placed on the market or the services are available in the Philippines or that the transaction took place in the Philippines;

(f) copies of contracts for services showing the use of the mark.
Computer printouts of the drawing or reproduction of marks will not be accepted as evidence of use; and

(g) such other proofs that the court may deem acceptable.

It is also provide that computer printouts of the drawing or reproduction of marks will not be accepted as evidence of use.

The foregoing enumeration adopts the acceptable proof of use of a mark as reflected in the current Trademark Regulations issued by the Philippine Intellectual Property Office.

8. Disposal of infringing goods, related objects or devices

The Revised Rules provide that even when no criminal complaint is filed but the seized goods are hazardous, the court should order their destruction. Moreover, the Revised Rules provide that if no criminal complaint and motion for the return of the seized items are filed by the parties, the court may subject the seized goods to disposal and/or destruction.

Likewise, the Revised Rules include the manner or method of disposal of infringing goods, related objects or devices, depending on their nature and circumstances and whether the foregoing are hazardous or not. Crushing, shredding, discarding at sanitary landfills, incineration, encapsulation or other methods that do not pose any risk to the environment or public health and safety as methods of destruction may be allowed by the court, depending on the nature and circumstances of the infringing goods, related objects or devices.

However, open burning or placement of these goods in non-sanitary and open landfills are not allowed. Courts may also issue an order disposing of the infringing goods, related objects or devices by recycling or by way of donation for humanitarian use, subject to certain conditions provided for by the Revised Rules.

9. Market survey as evidence to prove the primary significance of a mark or its likelihood of confusion

The Revised Rules include a new provision on market survey as evidence to prove the primary significance, distinctiveness or status of a mark to the relevant public, including its distinctiveness, its descriptive or generic status, its strength or well-known status. It can also be offered in evidence to prove likelihood of confusion. A market survey is defined under the Revised Rules as a scientific market or consumer survey which a party may offer in evidence before the courts of justice.

This provision relating to the offer of a market survey in evidence before the courts of justice to prove the primary significance of a mark or its likelihood of confusion is not present in the old rules.

10. Application of and adherence to the Revised Rules

Lastly, a new provision was incorporated in the Revised Rules for monitoring the application of and adherence of concerned individuals to the present rules. Rule 22 of the Revised Rules specifically provides that the application of and adherence to the rules shall be subject to the periodic monitoring of the Office of the Court Administrator (OCA) by visitation and submission of data.

For this purpose, all courts covered by the Revised Rules shall accomplish and submit a periodic report of data in a form to be generated and distributed by the OCA. Moreover, Rule 22 of the Revised Rules also mandates the training of judges and court personnel by the Philippine Judicial Academy in coordination with the OCA. This new provision ensures that the Revised Rules will be implemented properly and efficiently by the courts.

*Authored by Quisumbing Torres, a member firm of Baker & McKenzie International, a Swiss Verein. Please contact QTInfoDesk@quisumbingtorres.com for inquiries.