RULES AND REGULATIONS IMPLEMENTING R.A. 8293, ALSO KNOWN AS THE INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (“IP CODE”) IN RELATION TO SECTIONS 51-60 OF THE TRADE RELATED ASPE…

I.          Objectives

1.         To
give meaning and substance to laws prohibiting the importation of goods
or products that infringe upon all intellectual property rights as
defined in the law.

2.         To
enhance existing procedures (CAO 7-93), in conformity with
international standards specifically set in the TRIPS Agreement on
special border control, to prevent the entry into the country of certain
prohibited merchandises.

3.         To
set up administrative guidelines to expedite the handling and
disposition of goods the importation of which is prohibited under the IP
Code and other related laws.

4.         To
stress the seriousness of the government, more particularly the Bureau
of Customs (“Bureau”), in its drive to combat piracy and counterfeiting
in violation of the IP Code and other related laws.

II.         Administrative Provisions

A.        Definition of Terms

1.         “Intellectual Property Rights” consists of the following:

1.1  Copyright and Related rights

1.2  Trademarks and Service Marks

1.3  Geographic Indication

1.4  Patents for invention, utility model and industrial design

1.5  Lay-out Designs (Topographies) of Integrated Circuits

1.6  Protection of Undisclosed Information

(hereafter to be referred to singly or collectively as “IPR”)

2.    “Infringing Goods” as used in this Order means articles imported in violation of the IP Code and other related laws.

3.    “Mark”
means any visible sign capable of distinguishing the goods (trademarks)
or services (service marks) of an enterprise and shall include a
stamped or marked container of good.

4.    “Collective
Mark” means any visible sign designated as such in the application for
registration and capable of distinguishing the origin or any other
common characteristics, including the quality of goods or services of
different enterprises which use the sign under the control of the
registered owner of the collective mark.

5.         “Trade Name” means the name or designation identifying or distinguishing an enterprise.

6.         “Copyrighted
Work” refers to any of those works whether published or unpublished,
mentioned under Sections 172 and 173 of the IP Code.

7.         “Patented
Invention” refers to any technical solution of a problem in any field
of human activity which is new, involves an inventive step, and is
industrially applicable. It may be or may relate to a product, a
process, or an improvement of any of the foregoing, including
microorganism, non-biological and microbiological processes for which a
patent has been duly issued by the Intellectual Property Office.

8.         “Utility
Model” refers to any new model of implements or tools or of any
industrial product or of part of the same, which does not possess the
quality of invention but which is of practical utility by reason of its
form, configuration, construction or composition.

9.         “Industrial
Design” refers to any composition of lines or colors or any
three-dimensional form, whether or not associated with lines or colors;
provided that such composition or form gives a special appearance to and
can serve as a pattern for an industrial product or handicraft.

10.       “Lay-out
Design”, which is synonymous with “‘Topography”, means the
three-dimensional disposition, however expressed, of the elements, at
least one of which is an active element, and of some or all of the
interconnections of an integrated circuit or such a three-dimensional
disposition prepared for an integrated circuit intended for manufacture.

11.       “Geographical
Indication” are indications which identify a good as originating in the
territory of a country, or a region or locality in the territory, where
a given quality, reputation, or other characteristics of the good are
essentially attributable to its geographical origin.

B.        What Are Prohibited

1.         Those
which shall copy or simulate any mark or trade name registered with the
Intellectual Property Office (“IPO”) in accordance with the IP Code,
without the authorization or consent of the registrant or its duly
authorized agent.

2.         Those
which shall copy or simulate any well-known mark as determined by
competent authority, without the authorization or consent of the owner
or its duly authorized agent.

3.         Those which are judicially determined to be unfairly competing with products bearing marks whether registered or not.

4.         Those
which constitute as a piratical copy or likeness of any work, whether
published or unpublished, on which a copyright subsists.

5.         Those
which present themselves as a substantial simulation of any machine,
article, product, or substance duly patented under the IP Code, without
the authorization or consent of the patentee or its duly authorized
agent.

6.         Those
which use false or misleading description, symbol, or label that is
likely to cause confusion, mistake, or deception as to the affiliation,
connection, or association of the imported goods with another person’s
goods; or those which misrepresent their nature, characteristics,
qualities, or geographic origin.

C.        Who May Request for Suspension of Release

1.         IPR Recorded with BOC

The Bureau shall maintain an IPR Registry
where IP Holders may record their IPR, together with other relevant
information that the Bureau may use for the effective implementation and
enforcement of this Order.

An IPR Holder/Owner, or his agent, may apply
with the Commissioner of Customs for the recording of his IPR and the
product/s covered by such rights upon the submission of the following
requirements:

1.1    An affidavit
attesting that the applicant is the rightful owner of the IPR sought to
be recorded, or in case of a representative or an agent, that he is
duly authorized by the IPR Holder/Owner to make the application, and
that the person or other entities in the submitted list, if any, are so
authorized or not so authorized to make the importation or distribution
of such products covered by the IPR, together with a sufficient
description of the products covered by the IPR sought to be recorded,
together with samples thereof, if possible, to aid the Bureau in
implementing this Order.

1.2    Documentary Requirements

1.2.1    In the
case of IPR registered with the IPO, three (3) certified true copies of
the Certificate of Registration issued by the said office.

1.2.2    In the
case of IPR not registered with the IPO, three (3) certified true copies
of a decision or resolution of a court or other competent authority
declaring or recognizing the claim to an IPR.

1.2.3    In the
case of copyright and related rights, an Affidavit executed by the IPR
Holder/Owner or his duly authorized representative stating that:

1.2.3.1 At the time specified therein, copyright subsists in the work or other subject matter;

1.2.3.2 He or the person named therein is the owner of the copyright; and

1.2.3.3 The copy of the work or other subject matter annexed thereto is a true copy thereof.

1.3    Payment of recordation fee of PHP Two Thousand (P2,000.00) per product but in no case to exceed PHP Twenty Thousand (P20,000) per IPR Holder/Owner.

The foregoing documentary requirements are
solely for the purpose of identifying the IPR Holder/Owner and providing
the Bureau with minimum information that will help its officers in
effectively monitoring and evaluating infringing goods at the border.  Such
requirements therefore may in certain meritorious circumstances be
liberalized for as long as the basic purposes for which the above
requirements are imposed are achieved.  The IPR Holder/Owner or his representative shall be notified of the time and place of examination.

The recordation of IPRs
and product or products covered therein shall be valid for two (2)
years from date of the recording and renewable every two years
thereafter.

On the basis of the recordation, the Bureau
shall monitor and inspect on its own initiative suspect imports to
determine whether or not they are liable to seizure and forfeiture
pursuant to law.  However, the exercise of such
power shall be governed and circumscribed by existing rules and
regulations on the issuance of alert or hold orders.

2.         IPR not Recorded with BOC

The IPR Holder/Owner, or his duly designated
agent, who has not recorded in accordance with Section II.C.1 of this
Order his IPR and the product or products protected thereunder,
may request the Commissioner of Customs or the District Collector of
Customs concerned in case of ports of entry outside of Metro Manila (outports)
to issue an alert or hold order against any importation suspected to
contain infringing goods upon submission of the documents enumerated in
Section II.C.1.1 to 2.

In meritorious cases, the Commissioner of
Customs or the District Collector of Customs concerned in case of ports
of entry outside of Metro Manila (outports)
shall issue the alert or hold order; the goods shall be examined in the
presence of the IPR Holder/Owner or his duly authorized agent who shall
be accordingly notified of the time and place of the examination.  Notwithstanding
the absence of the IPR Holder/Owner or his agent who has been notified
of the scheduled date and time of examination, the inspection shall
proceed and the examining official shall, through proper channel, make
his findings and recommendation to the Commissioner or District
Collector of Customs, as the case may be.

D.        Random checks

Section II paragraph C.1 and C.2 hereof
notwithstanding, the Bureau reserves the right to conduct, on its own
initiative, random inspection of goods/shipments under existing
regulations on the issuance of alert or hold orders, in connection with
the discharge of its police functions over imports and exports.

E.        Creation of an Intellectual Property Unit

To more effectively implement border control
measures for the protection and enforcement of IPR, the Commissioner of
Customs shall study and submit to the Secretary of Finance a work plan
for the creation of a permanent intellectual property service or
division, identifying its organizational set up and alignment, powers
and functions, logistical requirements and support, and personnel
complement.  In the meantime, the Commissioner of
Customs is hereby enjoined to establish an interim intellectual property
unit with the following interim functions:

1.         To handle all application for recordation of IPRs and product or products covered therein.

2.         To
receive requests for issuance of alert or hold order addressed to the
Commissioner of Customs and to record similar requests addressed to the
District Collector of Customs in case of outport.

3.         To investigate, and in case of seizure, to prosecute IPR violations in the appropriate forfeiture proceedings.

4.         To
gather and manage data relating to IP enforcement and run in
coordination the Management Information Systems and Technology Group the
IP database system to be put up for the purpose.

5.         To coordinate all BOC activities relating to IPR matters.

6.         To
draw up in coordination with the Human Resource Management Division an
appropriate training program on IPR border control enforcement.

7.         To act as the liaison office of BOC for IPO and other agencies of government control with IP enforcement.

F.         Intellectual Property Rights Risk Management and Database Support System

The Bureau of Customs is hereby enjoined to
establish a risk assessment program and a management information system
where all relevant data for the effective enforcement of the IP Code
shall be gathered, stored and utilized to monitor, screen out, and
interdict infringing goods at the border and on a post entry basis.  For
the purpose, it shall establish appropriate linkages with the
Intellectual Property Office, other concerned law enforcement agencies,
and the private sector.

III.        Operational Provisions

A.        Steps to be taken for the recordation pursuant to Section II C.1 of this Order of IPR and product or products covered therein.

1.         Applicant
shall accomplish the prescribed application form before the
Intellectual Property Unit (IPU) or, pending creation of such unit, the
Legal Service.

2.         The
application shall be accompanied by the Affidavit referred to in
Section II.C.1.1 and other relevant information, as required in Section
II.C.1.2.

3.         Applicant shall pay the recordation fee.

4.         Upon
compliance with the above requirements, the IPU, or the Legal Service
pending the creation of said unit, shall prepare for the Commissioner’s
signature a Customs Memorandum Circular addressed to all Collectors of
Customs setting forth the fact of recordation together with a
description or model of the registered product or products.

5.         After
receipt of the Circular, the Collectors of Customs concerned shall
distribute copy or copies of documents containing relevant data on the
IPR and covered product or products among the front-line customs
assessment officers, and to direct them to monitor imports accordingly.

B.        Procedure on the request for issuance of alert or hold order pursuant to Section II C.2 of this Order.

1.         The
IPR Holder/Owner or his agent shall request in writing the Commissioner
of Customs, or the District Collector of Customs in the case of outports, for the issuance of an alert or hold order on goods suspected to be infringing.

The applicant shall attach all documentary
requirements and other relevant information about his IPR and the
product or products covered therein, as provided in Section II.C.1.1 and
1.2.

C.        Guidelines on the issuance of alert or hold orders for suspect goods.

1.         On
the basis of reliable information, BOC may on its own initiative issue
alert or hold order against imports suspected to contain infringing
goods pursuant to Section II.C.1 of this Order.

2.         An alert or hold order may also be issued upon the request of an IPR Holder/Owner pursuant to Section II.C.2 of this Order.

3.         Articles
placed under Hold or Alert Orders under this Order shall be examined by
the assigned examiner in the presence of the IPR Holder/Owner or his
agent and the consignee or his duly authorized representative/s within
twenty-four (24) hours from receipt of notice of the alert or hold
order.

4.         If,
upon examination of the goods, no basis is found to subject the goods
to seizure proceedings, the alert or hold order shall immediately be
lifted, and the processing of the import entry shall immediately
continue.

5.         In
case there is prima facie basis to subject the goods to seizure
proceedings, the matter shall, within twenty-four (24) hours, be
referred to the Collector of Customs for the issuance of a Warrant of
Seizure and Detention against the shipment.

D.        Special provisions relating to seizure proceedings involving infringing goods.

1.         Upon
seizure, the Collector shall, within five (5) working days from date of
seizure, give the claimant, importer or the owner of the seized article
or his agent a written notice of the seizure and shall give him the
opportunity to be heard.  For the purpose of
giving such notice, the importer, consignee, or person holding the bill
of lading shall be deemed the owner of the seized property described in
the bill of lading.  For the same purpose, “agent”
shall be deemed to include not only the agent in fact of the owner of
the seized property but also any person having legal possession of the
property at the time of the seizure, if the owner or his agent in fact
is unknown or cannot be reached.

2.         In case of an unknown owner or claimant, the notice shall be effected
posting for five (5) days in public corridor of the customhouse of the
district in which the seizure is made, and, in the discretion of the
Commissioner, by publication in a newspaper, or by such other means as
he shall deem desirable.,

3.         If
within ten (10) days after due notification prescribe in the preceding
paragraph, no claimant, owner or agent appears or can be found, the
Collector shall declare the property forfeited in favor of the
government.

4.         After due notice is served, the Collector shall immediately set the case for hearing.  The case shall be decided within Twenty (20) working days from the date the case is set for hearing.

5.         The provisions of the Tariff and Customs Code of the Philippines on appeal and automatic review shall be applicable in these cases.

6.         The
disposition of goods forfeited by final decree shall be governed by
existing laws and regulations applicable in the premises with due regard
to the statutory policy on IPR protection.  To
expedite action on the disposition of forfeited articles, the Bureau,
through the IPU, shall within 30 days from creation issue supplemental
guidelines relating to the handling and safekeeping of these goods,
including provisions for internal and external coordination, and
logistical support.

IV.       Authority of the Commissioner to Promulgate Additional Rules

The Commissioner of Customs is hereby
authorized to issue additional rules and regulations to more effectively
implement this Order.

V.        Repealing Clause

All Orders, Memoranda or Circulars, inconsistent herewith are hereby repealed and/or deemed modified accordingly.

VI.       Effectivity

This Order shall take effect upon the
approval by the Secretary of Finance and thirty (30) days after
publication hereof in a newspaper of general circulation in the Philippines.

Adopted: 23 September 2002

(SGD.) ANTONIO M. BERNARDO
Commissioner of Customs

Approved:

(SGD.) JOSE ISIDRO CAMACHO
Secretary of Finance