Intellectual Property; foreign corporation not doing business in thePhilippines can file an administrative complaint for alleged violationof intellectual property rights

Can a foreign corporation not doing business in the Philippines file an administrative complaint for alleged violation of intellectual property rights?

ANSWER:

YES.  A foreign corporation has the legal capacity to sue for the protection of its trademarks, albeit it is not doing business in the Philippines.  Sec. 160 in relation to Sec. 3 of R.A. 8293, provides:

SEC. 160. “Any foreign national or juridical person who meets the requirements of Sec. 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines under existing laws.”

SEC. 3.  “Any person who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act.” (Sehwani, Incorporated and/or Benita’s Frites, Inc., vs. In-N-Out Burger, Inc., G.R. No. 171053, October 15, 2007 [Ynares-Santiago, J.]).

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Stated differently, in the case of Philip Morris, Inc. vs. Fortune Tobacco Corporation, 493 SCRA 333 [2006]), to wit:

“Foreign corporations may not successfully sue on the basis alone of their respective certificates of registration of trademarks, for as a condition to availment of the rights and privileges vis-à-vis their trademarks in this country, they ought to show proof that, on top of Philippine registration, their country grants substantially similar rights and privileges to Filipino citizens pursuant to Section 21-A of R.A. 166 (now Sec. 3, R.A. 8293).