EN BANC Petitioner IP AP, an association of more than 100 law firms and individual

practitioners in Intellectual Property Law whose main objective is to

promote and protect intellectual property rights in the Philippines
G.R. No. 204605 July 19, 2016
through constant assistance and involvement in the legislation of
intellectual property law,10 has commenced this special civil action
INTELLECTUAL PROPERTY ASSOCIATION OF THE for certiorari and prohibition11 to challenge the validity of the President's
PHILIPPINES, Petitioner,  accession to the Madrid Protocol without the concurrence of the Senate.
vs. Citing Pimentel, Jr. v. Office of the Executive Secretary, the IPAP has
HON. PAQUITO OCHOA, IN HIS CAPACITY AS EXECUTIVE SECRETARY, averred:
HON. ALBERT DEL ROSARIO, IN HIS CAPACITY AS SECRETARY OF
THE DEPARTMENT OF FOREIGN AFFAIRS, AND HON. RICARDO
Nonetheless, while the President has the sole authority to negotiate and
BLANCAFLOR, IN HIS CAPACITY AS THE DIRECTOR GENERAL OF THE
enter into treaties, the Constitution provides a limitation to his power by
INTELLECTUAL PROPERTY OFFICE OF THE
requiring the concurrence of 2/3 of all the members of the Senate for the
PHILIPPINES, Respondents.
validity of the treaty entered into by him. Section 21, Article VII of the
1987 Constitution provides that "no treaty or international agreement
DECISION shall be valid and effective unless concurred in by at least two-thirds of all
the Members of the Senate." The 1935 and the 1973 Constitution also
required the concurrence by the legislature to the treaties entered into by
BERSAMIN, J.:
the executive.12

In this special civil action for certiorari and prohibition, the Intellectual

According to the IPAP, the Madrid Protocol is a treaty, not an executive
Property Association of the Philippines (IPAP) seeks to declare the
agreement; hence, respondent DFA Secretary Albert Del Rosario acted
accession of the Philippines to the Protocol Relating to the Madrid
with grave abuse of discretion in determining the Madrid Protocol as an
Agreement Concerning the International Registration of Marks (Madrid
executive agreement.13
Protocol) unconstitutional on the ground of the lack of concurrence by
the Senate, and in the alternative, to declare the implementation thereof
as unconstitutional because it conflicts with Republic Act No. 8293, The IPAP has argued that the implementation of the Madrid Protocol in
otherwise known as the Intellectual Property Code of the Philippines (IP the Philippines; specifically the processing of foreign trademark
Code).1 applications, conflicts with the IP Code,14 whose Section 125 states:

We find and declare that the President's ratification is valid and Sec. 125. Representation; Address for Service. - If the applicant is not
constitutional because the Madrid Protocol, being an executive agreement domiciled or has no real and effective commercial establishment in the
as determined by the Department of Foreign Affairs, does not require the Philippines; he shall designate by a written document filed in the office,
concurrence of the Senate. the name and address of a Philippine resident who may be served notices
or process in proceedings affecting the mark. Such notices or services
may be served upon the person so designated by leaving a copy thereof at
Antecedents
the address specified in the last designation filed. If the person so
designated cannot be found at the address given in the last designation,
The Madrid System for the International Registration of Marks (Madrid such notice or process may be served upon the Director. (Sec. 3; R.A. No.
System), which is the centralized system providing a one-stop solution for 166 a)
registering and managing marks worldwide, allows the trademark owner
to file one application in one language, and to pay one set of fees to
It has posited that Article 2 of the Madrid Protocol provides in contrast:
protect his mark in the territories of up to 97 member-
states.2 The Madrid System is governed by the Madrid
Agreement, concluded in 1891, and the Madrid Protocol, concluded in Article 2
1989.3
Securing Protection through International Registration
The Madrid Protocol, which was adopted in order to remove the
challenges deterring some countries from acceding to the Madrid
(1) Where an application for the registration of a mark has been filed with
Agreement, has two objectives, namely: (1) to facilitate securing
the Office of a Contracting Party, or where a mark has been registered in
protection for marks; and (2) to make the management of the registered
the register of the Office of a Contracting Party, the person in whose name
marks easier in different countries.4
that application (hereinafter referred to as "the basic application;') or that
registration (hereinafter referred to as "the basic registration") stands
In 2004; the Intellectual Property Office of the Philippines (IPOPHL), the may, subject to the provisions of this Protocol secure protection for his
government agency mandated to administer the intellectual property mark in the territory of the Contracting Parties, by obtaining the
system of the country and to implement the state policies on intellectual registration of that mark in the register of the International Bureau of the
property; began considering the country's accession to the Madrid World Intellectual Property Organization (hereinafter referred to as "the
Protocol. However, based on its assessment in 2005, the IPOPHL needed international registration," "the International Register," "the International
to first improve its own operations before making the recommendation in Bureau" and "the Organization'', respectively), provided that,
favor of accession. The IPOPHL thus implemented reforms to eliminate
trademark backlogs and to reduce the turnaround time for the
(i) where the basic application has been filed with the Office of a
registration of marks.5
Contracting State or where the basic registration has been made by such
an Office, the person in whose name that application or registration
In the meanwhile, the IPOPHL mounted a campaign for information stands is a national of that Contracting State, or is domiciled, or has a real
dissemination to raise awareness of the Madrid Protocol. It launched a and effective industrial or commercial establishment, in the said
series of consultations with stakeholders and various business groups Contracting State,
regarding the Philippines' accession to the Madrid Protocol. It ultimately
arrived at the conclusion that accession would benefit the country and
(ii) where the basic application has been filed with the Office of a
help raise the level of competitiveness for Filipino brands. Hence, it
Contracting Organization or where the basic registration has been made
recommended in September 2011 to the Department of Foreign Affairs
by such an Office, the person in whose name that application or
(DFA) that the Philippines should accede to the Madrid Protocol.6
registration stands is a national of a State member of that Contracting
Organization, or is domiciled, or has a real and effective industrial or
After its own review, the DFA endorsed to the President the country's commercial establishment, in the territory of the said Contracting
accession to the Madrid Protocol. Conformably with its express authority Organization.
under Section 9 of Executive Order No. 459 (Providing for the Guidelines
in the Negotiation of International Agreements and its Ratification) dated
(2) The application for international registration (hereinafter referred to
November 25, 1997, the DFA determined that the Madrid Protocol was an
as "the international application") shall be filed with the International
executive agreement.1âwphi1 The IPOPHL, the Department of Science
Bureau through the intermediary of the Office with which the basic
and Technology, and the Department of Trade and Industry concurred in
application was filed or by which the basic registration was made
the recommendation of the DFA.7
(hereinafter referred to as "the Office of origin"), as the case may be.

On March 27, 2012, President Benigno C. Aquino III ratified the Madrid

(3) Any reference in this Protocol to an "Office" or an "Office of a
Protocol through an instrument of accession, The instrument of accession
Contracting Party" shall be construed as a reference to the office that is in
was deposited with the Director General of the World Intellectual
charge, on behalf of a Contracting Party, of the registration of marks, and
Property Organization (WIPO) on April 25, 2012. 8 The Madrid
any reference in this Protocol to "marks" shall be construed as a reference
Protocol entered into force in the Philippines on July 25, 2012.9
to trademarks and service marks.
(4) For the purposes of this Protocol, "territory of a Contracting Party" because in some cases, suits are not brought by parties who have been
means, where the Contracting Party is a State, the territory of that State personally injured by the operation of a law or any other government act
and, where the Contracting Party is an intergovernmental organization, but by concerned citizens, taxpayers or voters who actually sue in the
the territory in which the constituting treaty of that intergovernmental public interest."
organization applied.
The Court has frequently felt the need to dwell on the issue of standing in
The IPAP has insisted that Article 2 of the Madrid Protocol means that public or constitutional litigations to sift the worthy from the unworthy
foreign trademark applicants may file their applications through the public law litigants seeking redress or relief. The following elucidation
International Bureau or the WIPO, and their applications will be in De Castro v. Judicial and Bar Council24offers the general understanding
automatically granted trademark protection without the need for of the context of legal standing, or locus standi for that purpose, viz. :
designating their resident agents in the country.15
In public or constitutional litigations, the Court is often burdened with the
Moreover, the IPAP has submitted that the procedure outlined in determination of the locus standi of the petitioners due to the ever-
the Guide to the International Registration of Marks relating to present need to regulate the invocation of the intervention of the Court to
representation before the International Bureau is the following, to wit: correct any official action or policy in order to avoid obstructing the
efficient functioning of public officials and offices involved in public
service. It is required, therefore, that the petitioner must have a personal
Rule 3(1)(a) 09.02 References in the Regulations, Administrative
stake in the outcome of the controversy, for, as indicated in Agan, Jr. v.
Instructions or in this Guide to representation relate only to
Philippine International Air Terminals Co., Inc.:
representation before the International Bureau. The questions of the need
for a representative before the Office of origin or the Office of a
designated Contracting Party (for example, in the event of a refusal of The question on legal standing is whether such parties have
protection issued by such an Office), who may act as a representative in "'alleged such a personal stake in the outcome of the controversy as
such cases and the method of appointment, are outside the scope of the to assure that concrete adverseness which sharpens the
Agreement, Protocol and Regulations and are governed by the law and presentation of issues upon which the court so largely depends for
practice of the Contracting Party concerned. illumination of difficult constitutional questions," Accordingly, it has
been held that the interest of a person assailing the constitutionality
of a statute must be direct and personal. He must be able to show,
which procedure is in conflict with that under Section 125 of the IP Code,
not only that the law or any government act is invalid, but also that
and constitutes in effect an amendment of the local law by the Executive
he sustained or is in imminent danger of sustaining some direct
Department.16
injury as a result of its enforcement, and not merely that he suffers
thereby in some indefinite way. It must appear that the person
The IPAP has prayed that the implementation of the Madrid Protocol in complaining has been or is about to be denied some right or
the Philippines be restrained in order to prevent future wrongs privilege to which he is lawfully entitled or that he is about to be
considering that the IP AP and its constituency have a clear and subjected to some burdens or penalties by reason of the statute or
unmistakable right not to be deprived of the rights granted them by the IP act complained of.
Code and existing local laws.17
It is true that as early as in 1937, in People v. Vera, the Court adopted
In its comment in behalf of the respondents, the Office of the Solicitor the direct injury test for determining whether a petitioner in a public
General (OSG) has stated that the IPAP does not have the locus standi to action had locus standi. There, the Court held that the person who would
challenge the accession to the Madrid Protocol; that the IPAP cannot assail the validity of a statute must have "a personal and substantial
invoke the Court's original jurisdiction absent a showing of any grave interest in the case such that he has sustained, or will sustain direct injury
abuse of discretion on the part of the respondents; that the President's as a result." Vera was followed in Custodio v. President of the Senate,
ratification of the Madrid Protocol as an executive agreement is valid Manila Race Horse Trainers' Association v. De la Fuente, Anti-Chinese
because the Madrid Protocol is only procedural, does not create League of the Philippines v. Felix, and Pascual v. Secretary of Public Works.
substantive rights, and does not require the amendment of the IP Code;
that the IPAP is not entitled to the restraining order or injunction because
Yet, the Court has also held that the requirement of locus standi, being a
it suffers no damage from the ratification by the President, and there is
mere procedural technicality, can be waived by the Court in the exercise
also no urgency for such relief; and the IPAP has no clear unmistakable
of its discretion. For instance, in 1949, in Araneta v. Dinglasan, the Court
right to the relief sought.18
liberalized the approach when the cases had "transcendental
importance." Some notable controversies whose petitioners did not pass
Issues the direct injury test were allowed to be treated in the same way as
in Araneta v. Dinglasan.
The following issues are to be resolved, namely:
In the 1975 decision in Aquino v. Commission on Elections, this Court
decided to resolve the issues raised by the petition due to their
I. Whether or not the IP AP has locus standi to challenge the President's
"farreaching implications,'; even if the petitioner had no personality to file
ratification of the Madrid Protocol;
the suit. The liberal approach of Aquino v. Commission on Elections has
been adopted in several notable cases, permitting ordinary citizens,
II. Whether or not the President's ratification of the Madrid Protocol is legislators, and civic organizations to bring their suits involving the
valid and constitutional; and constitutionality or validity of laws, regulations, and rulings.

III. Whether or not the Madrid Protocol is in conflict with the IP Code. However, the assertion of a public right as a predicate for challenging a
supposedly illegal or unconstitutional executive or legislative action rests
on the theory that the petitioner represents the public in general.
Ruling of the Court
Although such petitioner may not be as adversely affected by the action
complained against as are others, it is enough that he sufficiently
The petition for certiorari and prohibition is without merit. demonstrates in his petition that he is entitled to protection or relief from
the Court in the vindication ofa public right.25
A.
The injury that the IPAP will allegedly suffer from the implementation of
the Madrid Protocol is imaginary, incidental and speculative as opposed
The issue of legal standing to sue, or locus standi
to a direct and material injury required by the foregoing tenets on locus
standi. Additionally, as the OSG points out in the comment,26 the IPAP has
The IPAP argues in its reply 19 that it has the locus standi to file the present misinterpreted Section 125 of the IP Code on the issue of representation.
case by virtue of its being an association whose members stand to be The provision only states that a foreign trademark applicant "shall
injured as a result of the enforcement of the Madrid Protocol in the designate by a written document filed in the office, the name and address
Philippines; that the injury pertains to the acceptance and approval of of a Philippine resident who may be served notices or process in
applications submitted through the Madrid Protocol without local proceedings affecting the mark;" it does not grant anyone in particular
representation as required by Section 125 of the IP Code; 20 and that such the right to represent the foreign trademark applicant. Hence, the IPAP
will diminish the rights granted by the IP Code to Intellectual Property cannot justly claim that it will suffer irreparable injury or diminution of
Law practitioners like the members of the IPAP.21 rights granted to it by Section 125 of the IP Code from the
implementation of the Madrid Protocol.
The argument of the IPAP is untenable.
Nonetheless, the IPAP also emphasizes that the paramount public interest
Legal standing refers to "a right of appearance in a court of justice on a involved has transcendental importance because its petition asserts that
given question."22 According to Agan, Jr. v. Philippine International Air the Executive Department has overstepped the bounds of its authority by
Terminals Co., Inc.,23standing is "a peculiar concept in constitutional law thereby cutting into another branch's functions and responsibilities.27 The
assertion of the IPAP may be valid on this score. There is little question has been confirmed by long usage. From the earliest days of our history
that the issues raised herein against the implementation of the Madrid we have entered into executive agreements covering such subjects as
Protocol are of transcendental importance. Accordingly, we recognize commercial and consular relations, most-favored-nation rights, patent
IPAP's locus standi to bring the present challenge. Indeed, the Court has rights, trademark and copyright protection, postal and navigation
adopted a liberal attitude towards locus standi whenever the issue arrangements and the settlement of claims. The validity of these has never
presented for consideration has transcendental significance to the people, been seriously questioned by our courts.
or whenever the issues raised are of paramount importance to the
public.28
xxxx

B.
Agreements with respect to the registration of trademarks have been
concluded by the Executive with various countries under the Act of
Accession to the Congress of March 3, 1881 (21 Stat. 502), x x x

Madrid Protocol was constitutional xxxx

The IP AP submits that respondents Executive Secretary and DFA In this connection, Francis B. Sayre, former U.S. High Commissioner to the
Secretary Del Rosario gravely abused their discretion in determining that Philippines, said in his work on "The Constitutionality of Trade
there was no need for the Philippine Senate's concurrence with Agreement Acts":
the Madrid Protocol; that the Madrid Protocol involves changes of
national policy, and its being of a permanent character requires the
Agreements concluded by the President which fall short of treaties are
Senate's concurrence,29 pursuant to Section 21, Article VII of the
commonly referred to as executive agreements and are no less common
Constitution, which states that "no treaty or international agreement shall
in our scheme of government than are the more formal instruments -
be valid and effective unless concurred in by at least two-thirds of all the
treaties and conventions. They sometimes take the form of exchanges of
Members of the Senate."
notes and at other times that or more formal documents denominated
'agreements' or 'protocols'. The point where ordinary correspondence
Before going further, we have to distinguish between treaties and between this and other governments ends and agreements - whether
international agreements, which require the Senate's concurrence, on one denominated executive agreements or exchanges of notes or otherwise -
hand, and executive agreements, which may be validly entered into begin, may sometimes be difficult of ready ascertainment. It would be
without the Senate's concurrence. Executive Order No. 459, Series of useless to undertake to discuss here the large variety of executive
1997,30 notes the following definitions, to wit: agreements as such, concluded from time to time. Hundreds of executive
agreements, other than those entered into under the trade-agreements
act, have been negotiated with foreign governments. x x x It would seem
Sec. 2. Definition of Terms.
to be sufficient, in order to show that the trade agreements under the act
of 1934 are not anomalous in character, that they are not treaties, and
a. International agreement - shall refer to a contract or understanding, that they have abundant precedent in our history, to refer to certain
regardless of nomenclature, entered into between the Philippines and classes of agreements heretofore entered into by the Executive without
another government in written form and governed by international law, the approval of the Senate. They cover such subjects as the inspection
whether embodied in a single instrument or in two or more related of vessels, navigation dues, income tax on shipping profits, the
instruments. admission of civil aircraft, customs matters, and commercial
relations generally, international claims, postal matters, the
registration of trademarks and copyrights, etcetera. Some of them
b. Treaties - international agreements entered into by the Philippines
were concluded not by specific congressional authorization but in
which require legislative concurrence after executive ratification. This
conformity with policies declared in acts of Congress with respect to
term may include compacts like conventions, declarations, covenants and
the general subject matter, such as tariff acts; while still others,
acts.
particularly those with respect of the settlement of claims against foreign
governments, were concluded independently of any legislation.
c. Executive Agreements - similar to treaties except that they do not (Emphasis ours)
require legislative concurrence.
As the foregoing pronouncement indicates, the registration of trademarks
The Court has highlighted the difference between treaties and executive and copyrights have been the subject of executive agreements entered
agreements in Commissioner of Customs v. Eastern Sea Trading,31 thusly: 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.
International agreements involving political issues or changes of national
policy and those involving international arrangements of a permanent
character usually take the form of treaties. But international agreements It then becomes relevant to examine our state policy on intellectual
embodying adjustments of detail carrying out well-established national property in general, as reflected in Section 2 of our IP Code, to wit:
policies and traditions and those involving arrangements of a more or
less temporary nature usually take the form of executive agreements.
Section 2. Declaration of State Policy. - The State recognizes that an
effective intellectual and industrial property system is vital to the
In the Philippines, the DFA, by virtue of Section 9, Executive Order No. development of domestic and creative activity, facilitates transfer of
459,32 is initially given the power to determine whether an agreement is technology, attracts foreign investments, and ensures market access
to be treated as a treaty or as an executive agreement. To determine the for our products. It shall protect and secure the exclusive rights of
issue of whether DFA Secretary Del Rosario gravely abused his discretion scientists, inventors, artists and other gifted citizens to their
in making his determination relative to the Madrid Protocol, we review intellectual property and creations, particularly when beneficial to
the jurisprudence on the nature of executive agreements, as well as the the people, for such periods as provided in this Act.
subject matters to be covered by executive agreements.
The use of intellectual property bears a social function. To this end, the
The pronouncement in Commissioner of Customs v. Eastern Sea Trading33is State shall promote the diffusion of knowledge and information for the
instructive, to wit: promotion of national development and progress and the common good.

x x x The concurrence of said House of Congress is required by our It is also the policy of the State to streamline administrative
fundamental law in the making of "treaties" (Constitution of the procedures of registering patents, trademarks and copyright, to
Philippines; Article VII, Section 10[7]), which are, however, distinct and liberalize the registration on the transfer of technology; and to enhance
different from "executive agreements," which may be validly entered into the enforcement of intellectual property rights in the Philippines.
without such concurrence.
In view of the expression of state policy having been made by the
"Treaties are formal documents which require ratification with the Congress itself, the IPAP is plainly mistaken in asserting that "there was
approval of two thirds of the Senate. Executive agreements become no Congressional act that authorized the accession of the Philippines to
binding through executive action without the need of a vote by the Senate the Madrid Protocol."34
or by Congress.
Accordingly, DFA Secretary Del Rosario’s determination and treatment of
xxxx 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. We
"x x x the right of the Executive to enter into binding
observe at this point that there are no hard and fast rules on the propriety
agreements without the necessity of subsequent Congressional approval
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.35The principle binds the parties to perform in
good faith their parts in the agreements.36

c.

There is no conflict between the

Madrid Protocol and the IP Code.

The IPAP also rests its challenge on the supposed conflict between
the Madrid Protocol and the IP Code, contending that the Madrid
Protocol does away with the requirement of a resident agent under
Section 125 of the IP Code; and that the Madrid Protocol is
unconstitutional for being in conflict with the local law, which it cannot
modify.

The IPAP's contentions stand on a faulty premise. The method of

registration through the IPOPHL, as laid down by the IP Code, is distinct
and separate from the method of registration through the WIPO, as set in
the Madrid Protocol. Comparing the two methods of registration despite
their being governed by two separate systems of registration is thus
misplaced.

In arguing that the Madrid Protocol conflicts with Section 125 of the IP

Code, the IP AP highlights the importance of the requirement for the
designation of a resident agent. It underscores that the requirement is
intended to ensure that non-resident entities seeking protection or
privileges under Philippine Intellectual Property Laws will be subjected
to the country's jurisdiction. It submits that without such resident agent,
there will be a need to resort to costly, time consuming and cumbersome
extraterritorial service of writs and processes.37

The IPAP misapprehends the procedure for examination under

the Madrid Protocol, The difficulty, which the IPAP illustrates, is minimal,
if not altogether inexistent. The IPOPHL actually requires the designation
of the resident agent when it refuses the registration of a mark. Local
representation is further required in the submission of the Declaration of
Actual Use, as well as in the submission of the license
contract.38 The Madrid Protocol accords with the intent and spirit of the IP
Code, particularly on the subject of the registration of trademarks.
The Madrid Protocol does not amend or modify the IP Code on the
acquisition of trademark rights considering that the applications under
the Madrid Protocol are still examined according to the relevant national
law, In that regard, the IPOPHL will only grant protection to a mark that
meets the local registration requirements.

WHEREFORE, this Court DISMISSES the petition for certiorari and

prohibition for lack of merit; and ORDERS the petitioner to pay the costs
of suit.

SO ORDERED.

LUCAS P. BERSAMIN
Associate Justice