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Thursday, November 7, 2013

Philippines trademark litigation - the risks of going to court

Araneta Center, Inc. sued Erico Perez in November 2009 for misuse of a trademark in the domain name www.aranetacenter.com. The case started at the  Bureau of Legal Affairs.  Perez is the owner of the website www.aranetacenter.com. Araneta Center, Inc runs a large residential and commercial property in Quezon City including the  sports venue the Araneta Coliseum.

Initially Perez lost, but appealed to the courts and now 4 years later the case was decided in October by the Court of Appeals. The judges reversed the Bureau of Legal Affairs decision. Perez made a number of what ought to be irrelevant arguments about his constitutional right to free speech and that ACI has no exclusive control over the use of the words “araneta center. He also argued that the case should not be brought in the BLA but the court.

The court made the odd decision that "ACI being a domestic corporation does not enjoy the right...(to) administrative proceeding before the IPO-BLA for violation of Section 169, precisely because its rights are given under Section 163 of the IPC Code and that is to file their suit in regular courts,” the ruling stated.

They basically overruled the right to sue in BLA on non-existent grounds that the Plaintiff was not foreign. This interpretation is inaccurate and the combination of sections erroneous. The language used and the incorrect application of the IP Code is suspicious according to some commentators.

It underlines a risk that litigants must manage in the Philippines civil courts, namely the predilection of judges to go off on procedural tangents at the expense of substantive decisions and therefore actual justice. This is done when a judge wants to avoid deciding he actual case. The Plaintiff is now stuck having to appeal.

All this does in emphasize the importance of the BLA to IP justice! Unfortunately the right of appeal to the courts is a risk and suggests parties should take strategic steps to avoid appeals wherever possible.

 

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