Interview with Philippines IP Office Director General: Part I

Note: This is part I of a two-part interview. Part II is available here.

Rowel S. Barba, Director General, Intellectual Property Office of the Philippines (IPOPHL)

Brand owners and trademark professionals attending INTA’s upcoming 2020 Annual Meeting & Leadership Meeting will receive updates from regions around the world. One such briefing will come from the newly appointed Director General of the Intellectual Property Office of the Philippines (IPOPHL), Rowel S. Barba. For IPOPHL, Mr. Barba envisions a fully modernized and highly efficient agency by the end of his term.

Mr. Barba took office on February 6, 2020, for a five-year term ending December 31, 2024, with the possibility of reappointment for another five-year term. In his role as Director General of IPOPHL, Mr. Barba is also currently chair of the ASEAN Network of IP Enforcement Experts (ANIEE), where he is working to further IPOPHL’s influence in the regional community, as the Philippines leads the way in 13 out of 19 initiatives under the ASEAN IP Rights Action Plan 2016–2025. He currently also sits as Governor of the Board of Investments (BOI) and is Acting Chairman of the Cagayan Economic Zone Authority.

Mr. Barba has more than 20 years of experience in business and law circles. His corporate background includes Vice President and Head of the Corporate Legal and HR Divisions of the RFM Corporation, and several positions at the JAKA Group of companies, including Vice President and Chief Legal Counsel.

Prior to his appointment as Director General of IPOPHL, Mr. Barba was Undersecretary at the Philippines Department of Trade and Industry. He holds an AB in Political Science and a Bachelor of Laws degree from the University of the Philippines, where he also was on the editorial board of the Philippine Law Journal.

Mr. Barba is a speaker at the 2020 Annual Meeting & Leadership Meeting, on the panel entitled “Asia Update: IPR Border Enforcement in ASEAN and Beyond” (November 18 at 11:45 am GMT+8).

You are scheduled to speak on the panel entitled “Asia Update: IPR Border Enforcement in ASEAN and Beyond.” What would you like to highlight, and why do you feel this is a critical issue in the Asia-Pacific region?
Online transactions have become the go-to of consumers and have also become a lifeline for businesses regardless of their size. The data we have from the IPOPHL and the National Committee on Intellectual Property Rights (NCIPR) show that IP violations in the online space have increased, no doubt caused by this shift to online commerce. Consequently, it has become of primary importance that we ensure the safety of commerce in this space. The IPOPHL and the NCIPR, of which we are Vice-Chair, are implementing changes in our policies and procedures to ensure that IP enforcement online is as swift and effective as that which occurs offline.

What are the most recent legislative updates in the Philippines with respect to intellectual property (IP) protection and enforcement that INTA members should be aware of and monitor, and how will those changes impact them?
IPOPHL submitted a bill last year—the New IP Act—to amend our 23-year-old IP law. We are now drafting a new version but without overhauling the IP Code. The proposed amendments will transform the IP law to be more robust, effective, modern, and forward-looking, and will eventually make the Philippines a more attractive investment destination. We hope the revisions will also pave the way for enabling an environment that will promote and steer creativity, innovation, and development of MSMEs [micro, small, and medium-sized enterprises].

Among the priorities of the amendments is to further intensify the government’s enforcement efforts. Hence, part of the salient provisions includes giving IPOPHL takedown and site-blocking power for IP rights infringing sites; institutionalizing the IP Rights Enforcement and Coordination Office (IEO) for stronger implementation of enforcement actions and initiatives; and imposing a secondary liability with reference to trademark infringement, similar to the secondary liability currently being imposed for copyright infringement.

Aside from amendments to the IP Code, the proposed Internet Transactions Bill will also be a game changer toward making e-commerce safer. The bill will set the standard measures that e-commerce platforms, merchants, and websites must adopt to protect consumers and deter online counterfeiting, among other possible legal violations.

The Internet Transactions Bill also pushes for the solidary liability, which will hold e-commerce platforms liable for illegal actions of their merchant-clients. Further, it gives the Secretary of the Department of Trade and Industry [the ability] to issue orders for blocking and takedown of infringing sites.

IPOPHL has an enforcement mandate to coordinate with other government agencies and the private sector to formulate and implement policies to strengthen the protection of IP rights in the country, as well as to undertake enforcement functions supported by the Philippines National Police, the National Bureau of Investigation, the Bureau of Customs (BOC), and local government units. In its role of coordinator with the National Committee on IP Rights (NCIPR), IPOPHL has set standards for a more active role as IPO in enforcement as well. Can you share some statistics and best practices of such coordination and the next steps?
Here are some statistics. One of the testaments to the NCIPR’s unwavering commitment in stamping out counterfeiting is the sizable seizures we haul as this shows increased operations, increased manpower, and increased awareness.

From 2008 to 2018, the value of seized counterfeit goods grew at an average of 55 percent annually. Values from P3.5 billion (US $72.3 million) in 2008, grew to P23.6 billion (US $487.2 million) in 2018, which was also our record-high year for seizures.

In 2019, total seizure stood at P22.13 billion (US $456.9 million). Around 42 percent—or more than P9 billion (US $186.1 million)—was seized at the border by BOC.

We are also pleased to report that the disposal rate of IP cases before the courts has improved. The Department of Justice, which is also part of the NCIPR network, said the disposition rate climbed 6 percent in 2019 from 2018, while last year also saw an increase of more than 200 percent in convictions (34 in 2019 from 7 in 2018).

Here are some best practices. An ongoing development is our urgent work to impose new rules that will expand the enforcement functions of the IP Rights IEO with regard to online violations. The new rules, which we are just finalizing, will include the following: explicitly adding online counterfeiting and piracy in its coverage; coordinating with the National Telecommunications Commission to take down IP-rights offending posts; monitoring marketplaces and streaming sites based on findings of the IPOPHL; and elevating issues found by IP rights owners.

We are also anticipating the signing of an IP agreement between e-commerce platforms and select rights holders, which will result in a swifter notice and takedown system and procedure.

Another notable gain for the IP rights holders is our Supreme Court’s issuance in October 2020 of the 2020 Revised Rules for Intellectual Property Rights, which revises the 2013 version and will speed up IP prosecution.

The 2020 IPR Rules are designed to provide an adequate and effective legal environment that promotes creative activity and innovation, technology transfer, and foreign investment. It is the product of extensive and thorough discussions by stakeholders from various sectors—practitioners, academia, IPOPHL, and the judiciary—with the goal of improving, facilitating, and expediting cases in response to the ever-changing landscape of IP rights litigation in the country.

Among the salient features of the new IPR Rules are:

An overhauled order of destruction to include the disposal of infringing goods, related objects, or devices, specifying the manner or method of disposal and/or destruction thereof;
A listing, for the first time, of the accepted proof of actual use of a mark in trademark infringement and unfair competition cases;
A new provision on market survey as evidence to prove primary significance, distinctiveness, or status of a mark and/or likelihood of confusion;
The reduction of the period for rendering judgment on regular cases to 60 days from 90 days and allowing select special commercial courts to issue writs of search and seizure in civil and criminal actions;
The adoption of the fine points of the highly successful Revised Guidelines for Continuous Trial of Criminal Cases. These include the grounds for prohibited motions and the mandatory use of judicial affidavits which constitute the direct testimonies of the witnesses who executed them; the simultaneous setting of arraignment and pre-trial; proper scheduling of the trial of cases; strict rules on postponement; the proper stipulation of facts and testimonies of witnesses; and the adoption of timelines and other rules intended to hasten the resolution of criminal cases; and
The permitting of courts, under the modes of discovery, to use electronic means, such as teleconferencing or videoconferencing, in the taking of depositions and in other modes of discovery.

IPOPHL’s main strategy in protecting IP rights enforcement is promoting it as a whole-of-nation approach. As such, we are working with [several current and future] partners.

One is the Department of Trade and Industry (DTI), which is the regulator of business and consumer interests. We signed, in October, a memorandum of agreement (MOU) in order for us to exchange information on consumer complaints that concern counterfeit or pirated goods. The DTI reported seeing a surge in consumer complaints from January to October and the figures were more than four times from last year, with the bulk classified as “deceptive sales.”

We are also expanding the membership of NCIPR to include the Bureau of Internal Revenue and the Bureau of Immigration.

IPOPHL will also be part of an inter-agency effort to enhance border protection against smuggling and the illicit trade of anti-social goods. The MOU, enjoining 30+ government agencies, with BOC as lead, was signed on October 21, 2020.

From this MOU, IPOPHL will (1) have easier facilitation when requesting BOC to provide data on specific goods that enter Philippine borders, and (2) allow quick reference to BOC documents, which contain material details for the IEO to further its enforcement activities.

This strategy of IPOPHL to collaborate will continue, as it helps us gain a positive standing in the international community. For one, the country has maintained a good standing in the Office of the U.S. Trade Representative’s annual Special 301 Watch List for seven straight years, from 2014 to 2020. The Philippines posted a higher score in the U.S. Chamber of Commerce’s 2020 International IP Index mainly due to the cooperative approach taken by various sectors in the country.

European Union IP rights holders also saw improvements in Philippine IP enforcement, leading to the country’s removal this year from the European Commission’s biennial watchlist on the protection and enforcement of IP rights in third countries.

And just recently, in October, at a UK-ASEAN Enforcement Webinar, speakers from industry stakeholders touted IPOPHL’s focus on its enforcement network as a best practice for intergovernmental coordination efforts in fighting counterfeiting and piracy.

The Philippines, as represented by IPOPHL, has maintained its chairmanship of ANIEE, the lead group in implementing IP rights enforcement initiatives under the economic bloc’s IP Rights Action Plan 2016–2025. As chair, IPOPHL proposed the “ANIEE ACTS Beyond 2020” program which will focus on speeding up the region’s progress by drawing focus on ACTS, which stands for Awareness, Capacity, Technology, and Synergy. What will be your priorities in this respect?
As the word ACTS suggests, the Philippines, as chair, is proposing more ASEAN-wide enforcement actions, especially as we at ANIEE have already completed the enforcement deliverables under the bloc’s previous IPR Action Plan. We believe that we should continue the work on enforcement and not rest on our achievement of the previous deliverables.

To explain ACTS:

A – stands for awareness. We have to beef up efforts to raise awareness of the negative impacts of tolerating counterfeiting and piracy. We have to put emphasis on its implications for the economy, public health, and public security, and enjoin various members of society. We must optimize physical spaces and social media presence to post awareness messages and warnings.

C – stands for capacity building. Building knowledge and capacities on IP enforcement protocols must be integrated not only among IP offices but among all IP enforcement stakeholders and players. For this purpose, the ASEAN Handbook on IP Enforcement, a compendium of enforcement rules in every ASEAN country, will offer a significant first step towards more collaboration. The Handbook is one of the priority deliverables in the ASEAN IP Rights Action Plan and will be released soon within the year.

T – is technology. As IP rights infringers rely on technologies to cause disruptions en masse and still keep their identities secret, IP offices must also capitalize technologies that can level up enforcement actions.

S – for synergy. It is last but definitely not the least. We intend to strengthen existing partnerships and build new ones. One of the partnerships we are currently proposing is with the ASEAN Customs Enforcement Compliance Working Group of the ASEAN (CECWG). Specifically, the ANIEE and CECWG will explore possibilities for sharing information on counterfeit shipments, such as the types and the nature of goods; country of origin or transshipment point and destination of counterfeit goods; shipper and consignee details; number and amount of fake goods seized and forfeited; modalities of shipment; and manner of concealment of goods.

The CECWG has also committed to support ANIEE in widening the reach of its IP awareness campaigns. Moreover, as enforcement actions are heavily needed in the online space, ANIEE is working closely with government agencies that have authority in regulating the online space.

What are some priorities for IPOPHL at the World Intellectual Property Organization (WIPO)?
IPOPHL would like to further collaborate with WIPO on the following:

Enhancing the competitiveness of the Philippines in the Global Innovation Index;
Implementing the National IP Strategy that we launched last year, and our aims to accelerate IP awareness, use, and commercialization.
Enhancing IT tools and infrastructure—deploy an industrial property automation system version 4.0—to support our digital transformation agenda;
Enhancing institutional competence, particularly on capacity building for patent and trademark examiners, for our relatively new Bureau of Copyright and Related Rights, and upskilling management on IP administration and financial competence;
Creating bigger impact for our National IP Academy, the center of excellence for IP education, research, and professionalization; and
Maintaining engagement on building respect for IP, especially with IPOPHL’s greater role in the ASEAN as Chair of the ASEAN Network of IPR Enforcement Experts, which is the lead group implementing enforcement deliverables under our ASEAN IP Rights Action Plan 2016–2025, and as the next Chair of the ASEAN Working Group on Intellectual Property Cooperation if no other member state is willing to take on the challenge.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.