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LEGAL FRAMEWORK FOR THE

PROTECTION OF GEOGRAPHICAL
INDICATIONS IN THE PHILIPPINES
(FOR AND ON BEHALF OF THE
INTELLECTUAL PROPERTY
ASSOCIATION OF THE PHILIPPINES)
Atty. Maria Trinidad P. Villareal
Senior Partner
CARAG JAMORA SOMERA & VILLAREAL Law Offices
2ND Floor, The Plaza Royale, 120 L. P. Leviste Street
Salcedo Village, Makati City 1227, Metro Manila
Philippines
I. Geographical Indications, in general

TRIPS Agreement definition:

- Those “indications which identify a good as


originating in the territory of a Member, or a
region or locality in that territory, where a
given quality, reputation or other
characteristic of the good is essentially
attributable to its geographic origin.”
- A geographical indication should show
the link between some characteristic of
the good and the particular region where
it was produced. Example: the Florida
Sunshine Tree is a symbol known to
consumers that links citrus products
featuring the Sunshine Tree to Florida,
where distinctive-tasting citrus is grown.
(US PTO, supra at note 1.)
Geographical indications serve as quality
indicators of goods and services.

Geographical indications are quality


indicators, are widely used by producers,
distributors and retailers as an advertising or
promotional tool to attract consumers and
investors.
Geographical Indications
- Philippine Setting

Similar to experiences in other states, there


appears to be a positive correlation between:
(a) the value of the commodity, in terms of
profitability or viability; and (b) the protection
accorded to geographical indications
associated with said commodity, in the
Philippines.
Examples:
1. “Manila hemp”
Refers to a fiber sourced from the leaves of
the abacá plant. Manila hemp takes its
name from the capital city of the
Philippines, the country where the abacá
plant is primarily cultivated. Because of its
textile strength, the Manila hemp is used
to create standard binder twines, ropes
and cables. Moreover, this fiber also has
paper by-products, such as “Manila
envelopes” and “manila paper.”
Despite its popularity, the geographical
indication associated with this fiber was not
accorded much protection. Subsequently, the
abacá plant was brought to, and cultivated in
other countries such as India and Ecuador.
Hence, the Filipino exporters of abacá-based
products had to contend with competition from
other states.

In addition to competition from other states, the


development of synthetic fibers may have
contributed to the decline in demand for the
Manila hemp.
Manila mangoes

Very popular products of the Philippines, the


Philippine Government took immediate action
to protect geographical indications associated
with highly-valued commodities in the country,
as shown in the “Manila mango” controversy.
“Manila mango” refers to a variety of mango
grown in Mexico’s Veracruz state. However,
its seedlings are said to have originated in the
Philippines, and transported to Mexico during
the Manila-Acapulco galleon trade.
In 2005, the Intellectual Property Office
(IPOPHL), which regulates intellectual property
rights in the Philippines, announced that it
would be opposing Mexico’s application to
register Manila mango as a geographical
indication. According to the IPOPHL, the
registration of Manila mango will mislead
consumers into believing that Manila mangoes
came from the Philippines, when these are
actually cultivated in Mexico. The IPOPHL’s
opposition to Mexico’s application is not
surprising, especially since the mango is the
Philippines’ national fruit, as well as one of the
country’s primary exports.
Philippine IP Code:

In compliance with the TRIPS Agreement, the


Philippine Congress included geographical
indications in the enumeration of recognized forms
of intellectual property rights, as shown in Section 4
of the Intellectual Property Code (the “IP Code”).

Strangely, the remaining provisions of the IP Code do


not make further, express reference to geographical
indications. In fact, the IP Code does not even
define what is a “geographical indication” for
purposes of Philippine law.
While the IP Code does not provide a legal
framework specific to the registration and
enforcement of rights relating to, or arising from
geographical indications, it does extend some
protection to geographical indications:

a. Geographical indications per se cannot be


registered as trademarks under Section 123:
123.1. A mark cannot be registered if it:

. . .

(j) Consists exclusively of signs or of


indications that may serve in trade to
designate the kind, quality, quantity,
intended purpose, value, geographical
origin, time or production of the goods or
rendering of the services, or other
characteristics of the goods or services;”
2.A person who commits any act or omission
constituting misrepresentation as to the
geographical origin of a particular good may be
held criminally and civilly liable therefore, to wit:

“Sec. 169. False Designations of Origin; False


Description or Representation. - 169.1. Any person
who, on or in connection with any goods or
services, or any container for goods, uses in
commerce any word, term, name, symbol, or
device, or any combination thereof, or any false
designation of origin, false or misleading description
of fact, or false or misleading representation of fact
xxx.”
3. The IP Code considers goods containing
false or misleading designations of origin
to be contraband, and prohibits their
importation into the Philippines, thus:

“Sec. 166. Goods Bearing Infringing Marks or


Trade Names. - No article of imported
merchandise which shall copy or simulate
the name of any domestic product, or
manufacturer, or dealer,
or which shall copy or simulate a mark
registered in accordance with the provisions
of this Act, or shall bear a mark or trade name
calculated to induce the public to believe that
the article is manufactured in the Philippines,
or that it is manufactured in any foreign
country or locality other than the country or
locality where it is in fact manufactured, shall
be admitted to entry at any customhouse of
the Philippines.
In order to aid the officers of the customs
service in enforcing this prohibition, any
person who is entitled to the benefits of this
Act, may require that his name and residence,
and the name of the locality in which his
goods are manufactured, a copy of the
certificate of registration of his mark or trade
name, to be recorded in books which shall be
kept for this purpose in the Bureau of
Customs, under such regulations as the
Collector of Customs with the approval of the
Secretary of Finance shall
prescribe,
and may furnish to the said Bureau facsimiles
of his name, the name of the locality in which
his goods are manufactured, or his registered
mark or trade name, and thereupon the
Collector of Customs shall cause one (1) or
more copies of the same to be transmitted to
each collector or to other proper officer of the
Bureau of Customs”.
4. The IP Code allows for the registration of
collective marks. Rule 100 of the
Trademark Rules defines collective marks
as:
. . . 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.
While the IP Code does not treat
geographical indications as sui generis forms
of intellectual property, the same may be
protected and registered as collective marks.
Interested parties may thus register
geographic indications as collective marks
with the IPOPHL.
As regards the process of registration, an
application for registration of a collective mark
follows the usual or general procedures for
trademark applications. Considering,
however, that collective marks and
trademarks perform different functions, it may
be advisable for the IPOPHL to promulgate a
specific set of rules governing registration of
geographical indications as collective marks.
PHILIPPINE PLANT VARIETY PROTECTION
ACT OF 2002

Republic Act (R.A.) No. 9168, which was enacted in


2002, established a certification system to protect
newly-discovered, bred or cultivated plant varieties.

Under this Act, the National Plant Variety Protection


Board (NPVPB) may issue a “Certificate of Plant
Variety Protection” to plant varieties that are new,
distinct, uniform and stable (the “Certificate”).
Holders of a Certificate shall have the right to
authorize the:
(i) production or reproduction of the covered
plant variety;

(ii) conditioning the covered plant variety for


the purpose of propagation;

(iii) offering the covered plant variety for sale;

(iv) selling or other marketing of the covered


plant variety;
(v) exporting or importing the covered plant
variety; and

(vi) stocking the covered plant variety.

While the certification system provided by R.A. No.


9168 is arguably similar to the framework
adopted by the EU, Mexico and Indonesia, the
same applies expressly to plant varieties, and do
not cover geographical indications.
Matters for Consideration:
Philippine intellectual property law recognizes that
geographical indications are forms of intellectual
property, and prohibits the misuse thereof through
unfair competition clauses in the IP Code. However,
the Code does not consider geographical
indications to be sui generis, nor does it provide for
them an independent system of protection.

The lack of a sui generis framework in the IP Code or


under other Philippine laws for that matter, may be
based on the following:
Philippine exporters rely very little, if at all, on
geographical indications to promote their products to
consumers.

The Philippine government apparently takes action


with regard to geographical indications only when use
of the same will harm the country’s highly-valued
commodities.

The Philippines’ imports usually exceed its exports


which may have likewise inhibited the development of
geographical indications in the Philippines
Notwithstanding the foregoing, it is still
possible to protect existing geographical
indications by registering the same as
collective marks under the IP Code. For clarity
and convenience, as well as to increase
public awareness on geographical indications,
it is recommended that the IPOPHL
promulgate implementing rules specific to
geographic indications, based on Secs. 121.1
and 167 of the IP Code.
In the near future, however, it is possible that Filipinos
may become more aware of the benefits of using
geographical indications as a tool of economic policy.
This development will necessarily bring with it an
increase in Philippine-based geographic indications,
which will need more protection than what
administrative regulations can provide. As such, it
would be prudent, if not wise, for the Philippine
Congress to revisit the IP Code, and determine the
legislative amendments that should be undertaken to
extend the scope of protection accorded by the law to
geographical indications.
Thank you for your kind attention.