MERCANTILE LAW Clarice Questin
DRAFT NO. 2
INTELLECTUAL PROPERTY ASSOCIATION OF THE PHILIPPINES v. HON.
PAQUITO OCHOA, IN HIS CAPACITY AS EXECUTIVE SECRETARY, ET AL.
G.R. No. 204605, 19 July 2016, EN BANC (Bersamin, J.)
DOCTRINE OF THE CASE
The registration of trademarks and copyrights have been the subject of executive
agreements entered into without the concurrence of the Senate. Some executive
agreements have been concluded in conformity with the policies declared in the acts of
Congress with respect to the general subject matter.
FACTS
The Madrid System for the International Registration of Marks (Madrid System),
which is the centralized system providing a one-stop solution for registering and
managing marks worldwide, allows the trademark owner to file one application in one
language, and to pay one set of fees to protect his mark in the territories of up to 97
member-states. The Madrid System is governed by the Madrid Agreement, concluded in
1891, and the Madrid Protocol, concluded in 1989. The Madrid Protocol has two
objectives, namely: (1) to facilitate securing protection for marks; and (2) to make the
management of the registered marks easier in different countries.
In 2004, the Intellectual Property Office of the Philippines (IPOPHL), began
considering the country's accession to the Madrid Protocol. After a campaign for
information dissemination, and a series of consultations with stakeholders, IPOPHL
ultimately arrived at the conclusion that accession would benefit the country and help
raise the level of competitiveness for Filipino brands. Hence, it recommended to the
Department of Foreign Affairs (DFA) that the Philippines should accede to the Madrid
Protocol. After its own review, the DFA endorsed to the President the country's accession
to the Madrid Protocol. The DFA determined that the Madrid Protocol was an executive
agreement.
On March 27, 2012, President Benigno C. Aquino III ratified the Madrid Protocol
through an instrument of accession, which was deposited with the Director General of the
World Intellectual Property Organization (WIPO) on April 25, 2012. The Madrid Protocol
entered into force in the Philippines on July 25, 2012.
Thus, the Intellectual Property Association of the Philippines (IPAP) commenced
this special civil action for certiorari and prohibition to challenge the validity of the
President's accession to the Madrid Protocol without the concurrence of the Senate.
According to the IPAP, the Madrid Protocol is a treaty, not an executive agreement;
hence, respondent DFA Secretary Albert Del Rosario acted with grave abuse of discretion
in determining the Madrid Protocol as an executive agreement. Also, the IPAP has argued
that the implementation of the Madrid Protocol in the Philippines; specifically the
processing of foreign trademark applications, conflicts with the Intellectual Property Code
of the Philippines.
ISSUE
Is the Madrid Protocol unconstitutional for lack of concurrence by the Senate?
RULING
NO. The Court finds and declares that the Presidents ratification is valid and
constitutional because the Madrid Protocol, being an executive agreement as determined
by the Department of Foreign Affairs, does not require the concurrence of the Senate.
Under prevailing jurisprudence, the registration of trademarks and copyrights have
been the subject of executive agreements entered into without the concurrence of the
Senate. Some executive agreements have been concluded in conformity with the policies
declared in the acts of Congress with respect to the general subject matter.
Accordingly, DFA Secretary Del Rosarios determination and treatment of the
Madrid Protocol as an executive agreement; being in apparent contemplation of the
express state policies on intellectual property as well as within his power under Executive
Order No. 459, are upheld.
The Court observed that there are no hard and fast rules on the propriety of
entering into a treaty or an executive agreement on a given subject as an instrument of
international relations. The primary consideration in the choice of the form of agreement
is the parties intent and desire to craft their international agreement in the form they so
wish to further their respective interests. The matter of form takes a back seat when it
comes to effectiveness and binding effect of the enforcement of a treaty or an executive
agreement; inasmuch as all the parties; regardless of the form, become obliged to comply
conformably with the time-honored principle of pacta sunt servanda. The principle binds
the parties to perform in good faith their parts in the agreements.
