With the continuous rise of online transactions amid the pandemic, new rules at the Intellectual Property Office of the Philippines (IPOPHL) have expanded the powers of its Intellectual Property Rights Enforcement Office (IEO), enabling it to curb online counterfeiting and piracy more effectively.
Under IPOPHL’s Memorandum Circular (MC) 2020-049, or the “Revised Rules of Procedure on Administrative Enforcement Intellectual (IP) Rights,” the electronic, digital, or online channels have been expressly included as part of the IEO’s scope in exercising its enforcement functions.
According to the new regulation, the exercise of IPOPHL’s enforcement powers shall cover manufacturing, production, importation, exportation, distribution, trading, displaying, broadcasting, streaming and offering for sale, including other preparatory steps necessary to carry out the sale of counterfeit and pirated goods or contents to the public, including electronic, digital or online means provided that there is no pending case before any office, tribunal, quasi-judicial body, or court involving the same issue/s or subject matter.
The new rules also expanded IEO’s actions in response to an administrative complaint from the right holder regarding counterfeiting and piracy.
An enforcement order is served to, but not limited to, carry out the following actions:
- Request removal of counterfeit goods or pirated goods or content, including advertisements about such goods or content, or the blocking of access thereto, in coordination with the appropriate agency, body, or intermediary service providers.
- Give a cease-and-desist order.
- Order the removal of counterfeit and pirated goods or content from physical establishments; and
- Endorse and refer to other government offices the cancellation of permits and licenses, such as business permits.
Moreover, the agency’s director said that the expanded rules drastically shortened the standard period given to offenders for compliance with IEO decisions —now in 72 hours from the previous 60 days — ensuring faster corrective actions. The IEO can now also conduct its monitoring in both online and physical marketplaces. This monitoring allows the IEO to take on a more proactive approach and help brand owners screen markets of IP violating listings, with prospects of reporting possible infringements to concerned IP right holders for their validation and appropriate action.
IPOPHL recalled that piracy reports and complaints surged to a record-high of 121 in 2020, the year the COVID-19 lockdown compelled a massive shift to online transactions. The 2020 figure also exceeded the total annual reports and complaints received in the four years from 2016 to 2019, strongly indicating an unprecedented trend of online counterfeiting and piracy that needs to be urgently addressed.
The interagency National Committee on IP Rights, which IPOPHL steers as vice-chair and acting chair, is also consolidating its value of seizures in 2020, which are initially appearing to be relatively high in comparison to previous years despite the limited operations due to the quarantine. The report is expected to be released by IPOPHL within the first semester of the year.
Accordingly, IPOPHL urged domestic companies to value their brand by ensuring their intellectual property are protected online. The agency stressed that a company’s brand is an asset and requires IP protection against rising IPO violations. They suggested that micro, small, and medium enterprises (MSMEs) should conduct an audit of these brand components in terms of how well they are protected online.
The agency also recommended the creation of a dedicated brand marketing and protection team to shield these components from the many threats existing online. They added that IP protection is crucial because it is harder to monitor counterfeit products online since you do not have a physical address or store to go after. It also appealed to consumers to patronise local original products and support the legitimate MSMEs and businesses who are crying for help from the consuming Filipinos in this time of the pandemic.
