Category: Insights

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Are Online Shopping Sites Liable for the Sale of Fake Products?

The COVID-19 pandemic has popularized online shopping as a convenient and safe mode of buying goods. More and more buyers prefer purchasing goods online. As a result, companies have started selling products through their websites.

Additionally, online purchases can be made via third parties through social media pages (Facebook/Instagram) and online shopping sites (Lazada/Shopee). However, recent reports on sales of supposedly counterfeit goods have revealed the dangers of online shopping.[1]

 Liability of Online Shopping Sites

Under the Philippine Intellectual Property Code (I.P. Code), any person who sells products that bear the registered mark of another, without the latter’s consent, is liable for trademark infringement.[2] For instance, the owner of an Instagram page that sells counterfeit products may be held liable for infringement. With respect to online shopping sites, however, ascribing liability becomes tricky. Many sites disclaim liability by alleging that they act as mere intermediaries that bring sellers and buyers together.

Other Jurisdictions

A landmark case in Europe has held that online sites are indeed liable for selling counterfeit products.[3] It ruled that these platforms could not disclaim liability if they fail to act expeditiously after (1) playing an active role in the promotion or sale of the trade-marked goods, or (2) gaining knowledge of facts or circumstances that should have put them on notice that the offers for sale were unlawful.[4]

In the U.S, it was held that online marketplaces are not liable for sales of counterfeit items if they did not have knowledge of specific infringing sellers or listings.[5] However, in another case, Court subsequently held an online marketplace liable even if the infringed brands did not send formal take-down notices to the seller.[6] Another was held liable for failing to send an email blast which would have curtailed acts of infringement.[7]  

Philippines

The DTI has advocated for legislation that would make online platforms liable for selling counterfeit products.[8] Senate Bill No. 1591 seeks to regulate e-commerce in the Philippines by penalizing online merchants and shopping platforms who sell fake or unregistered items, with a fine equivalent to a hundred percent of the amount of the counterfeit goods offered.[9] Considering that there is still no settled jurisprudence on this matter, such proposal is a welcome development. Nevertheless, we believe that a penalty equivalent to the value of the counterfeit product is a mere slap on the wrist. Congress can certainly do more to protect consumers!

What to do when you receive a counterfeit product

Despite the vacuum in our laws, there are ways to make companies accountable for selling fake products. One way is to alert the online platform that one of their sellers is advertising fake products. Doing so would prompt them to conduct and investigation and possibly blacklist the guilty seller. More importantly, it would render them unable to raise the defense of lack of knowledge regarding the sale of fake products. Notably, popular sites like Lazada and Shopee provide ways for consumers to chat with their customer care teams. One can even go further and alert the owners of the products that other sellers are infringing upon their brands.

Can you reject or return the product?

The short answer to this is yes. The sale of a counterfeit product is a criminal act [10] which should not be condoned nor tolerated. Aside from the I.P. Code, the Consumer Act allows a buyer to file a case against sellers who are guilty of false advertising.[11] Surely, one should never be forced to accept the product of a criminal offense.

For questions regarding this article, email us at inquiry@cfiplaw.com.


Note: The article above is for informational purposes only and does not constitute
legal advice.


[1] https://www.pna.gov.ph/articles/1122237; https://news.abs-cbn.com/business/10/23/15/why-etude-house-distributor-sued-lazada.

[2] Sec. 155, Intellectual Property Code of the Philippines, Rep. Act No. 8293.

[3] Case C-324/09, L’Oréal SA v. eBay Int’l AG, 2011 E.C.R. I-6011.

[4] Ibid.

[5] Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2nd Cir. 2010)

[6] Chloé SAS et al. v. Sawabeh Information Services Co. et al., Civil Action No. 2:11-cv-04147 (C.D. Cal.).

[7] 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013).

[8] https://cnnphilippines.com/news/2019/10/8/DTI-counterfeit-online-shopping.html.

[9] https://news.abs-cbn.com/business/09/03/20/gatchalian-wants-online-shopping-apps-penalized-for-sale-of-fake-items.

[10] Sec. 170, Intellectual Property Code of the Philippines, Rep. Act No. 8293.

[11] Article 123 in relation to Article 110, Consumer Act of the Philippines, Rep. Act No. 7394.

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Can Your Trademark Be Registered?

If you own a business, chances are, you are already using trademarks on your products. However, do you know if those trademarks are registrable?

A trademark is used to associate a product with a business. Overtime, a trademark could become so popular that customers would look for it when they are looking for a product of a certain quality. Therefore as an identifier, a trademark must be uncommon and cannot be confusingly similar to other trademarks.

Generic and Descriptive Marks are Unregistrable

Generally, a mark is not registrable if it is generic[1] or merely descriptive.[2]  To illustrate, the word “PEN” may not be used as a trademark for pens and the word “BRIGHT” may not be used for light bulbs. Allowing the registration of these marks would prevent others from fairly using generic and descriptive terms as labels to describe their products. Nevertheless, a common word may be used as a mark for an unrelated product. For example, the word “APPLE”, though common, may be used as a trademark for phones. Another option is to opt for more distinctive terms which do not have common dictionary meanings such as “XEROX” for photocopiers.[3]

Other Unregistrable Marks

A trademark is also unregistrable if it consists of immoral, deceptive or scandalous matter,[4] or if it is contrary to public order.[5] A mark may be disallowed if it disparages or falsely suggests a connection with persons, institutions, beliefs, or national symbols.[6] For example, the flag of a country is unregistrable.[7] Similarly, signs or of indications that have become customary or usual as product designations in everyday language or in established trade practices are unregistrable.[8] Thus, a barber’s pole may not be registered as a trademark for barbershops because it has become a customary mark for barbershops. Other unregistrable marks include colors (unless defined by a given form),[9] misleading marks,[10] and marks consisting of shapes necessitated by technical factors or by the nature of goods, such as figure of water drops for water products.[11]

Marks Identical or Confusingly Similar to Registered or Internationally Well-Known Marks

Furthermore, a mark may not be registered if it is identical or if it is confusingly similar to a previously registered mark (or one with an earlier filing date)[12] or to an internationally well-known mark.[13] For this purpose, an internationally well-known mark does not have to be registered in the Philippines in order to gain protection. However, such protection is conditioned upon a prior declaration by either the Bureau of Legal Affairs, the Office of the Director General of the Intellectual Property Office or the Courts, that such mark is internationally well-known.[14]

To determine if a trademark has already been registered by others, you may check the trademark database of the Intellectual Property Office of the Philippines which is posted at https://www3.wipo.int/branddb/ph/en/.

For questions regarding the article “Can Your Trademark Be Registered”, you may email us at inquiry@cfiplaw.com.

Note: The article above is for informational purposes only and does not constitute legal advice.

[1] Sec. 123 (h), IP Code of the Philippines.

[2] Sec. 123 (j), IP Code of the Philippines.

[3] https://www.inta.org/fact-sheets/trademark-strength/, accessed on 25 September 2020.

[4] Sec. 123 (a), IP Code of the Philippines.

[5] Sec. 123 (m), IP Code of the Philippines.

[6] Ibid.

[7] Sec. 123 (b), IP Code of the Philippines.

[8] Sec. 123 (i), IP Code of the Philippines.

[9] Sec. 123 (l), IP Code of the Philippines.

[10] Sec. 123 (g), IP Code of the Philippines.

[11] Sec. 123 (k), IP Code of the Philippines.

[12] Sec. 123 (d), IP Code of the Philippines.

[13] Sec. 123 (e) and (f), IP Code of the Philippines.

[14] Dy vs. Philips Electronics, G.R. No. 186088, 22 March 2017.

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4 Easy Steps to Follow in Registering Your Trademark

A mark is any visible sign that is capable of distinguishing the goods or services of an enterprise.[1] Company logos, marketing taglines, and even the entire packaging design on goods and services, are examples of trademarks. Some of the most famous brands in the market today are identified through their trademarks. For this reason, it is vital that you register your trademark. We outlined below simple steps to follow in registering your trademark.

1. SUBMIT. Make sure to have the following ready: your name and contact details, a reproduction of the mark that you wish to register, and a list of the goods or services that your mark would cover.[2] Other information could be necessary depending on your specific circumstances. You may then submit all relevant information to thePhilippine Intellectual Property Office (IPO).[3] With the pandemic, you might prefer filling-in these details through the online portal which can be accessed at https://www.ipophil.gov.ph/etm-file-trademark/.

2. PAY. As with other government transactions, filing trademark applications entail costs.[4]  Government fees could reach around Php 3,500 to 5,700.[5] Note that the IPO recently disallowed the option to pay manually through its office cashier. Instead, you may pay online through the IPO’s partner institutions such as Dragonpay.

3. RESPOND. After successful payment, the IPO will look into the sufficiency of the application,[6] and check if the trademark complies with the requisites for registrability.[7] Should the IPO need any clarification, it may send you a registrability report which contains questions concerning your application. You need to respond to this not later than two months from its mailing date.[8]

4. WAIT. Once the IPO is satisfied with your trademark application, it will issue a Notice of Allowance which will require you to pay the publication fees. Once paid, the IPO will cause the publication of the application in the IPO Trademark Electronic Gazette.[9] For a period of 30 days, any person who believes that he would be damaged by the registration may file an Opposition.[10] If nothing is filed or if the IPO denies the Opposition, you will receive a Notice of Issuance requiring you to pay the second publication fee and the fee for the issuance of the Certificate of Registration. Once paid, your Certificate of Registration will be issued.[11]

Register your trademark in four easy steps: submit, pay, respond and wait.

For questions regarding the article “4 Easy Steps to Follow in Registering your Trademark”, email us at inquiry@cfiplaw.com.

Note: The article above is for informational purposes only and does not constitute legal advice.

[1] Sec. 121, IP Code of the Philippines.

[2] Sec. 127.1, IP Code of the Philippines.

[3] Sec. 127.1, IP Code of the Philippines.

[4] Sec. 127.2, IP Code of the Philippines.

[5] https://www.ipophil.gov.ph/services/schedule-of-fees/trademark-related-fees/

[6] Sec. 132.1, IP Code of the Philippines.

[7] Sec. 123, IP Code of the Philippines.

[8] Rule 610, Implementing Rules and Regulations on Trademarks

[9] Sec. 133.5, IP Code of the Philippines.

[10] Sec. 134, IP Code of the Philippines.

[11] Sec. 136, IP Code of the Philippines.

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Register the Trademark of your Home Business!

Trademark Brand Intellectual Property

As the pandemic started affecting the country, many Filipinos displayed their creativity by opening their own home businesses. Many families started selling food, goods, and services from the comfort of their homes. While these businesses began operating under extraordinary circumstances, it is important to remember that they are still subject to government rules. More importantly, they remain vulnerable to being copied!

Whether you are designing a wrapper for your baked goods, engraving the company logo on your products, or placing a marketing tagline on your services, chances are, you are making use of trademarks. A mark is any visible sign that is capable of distinguishing the goods (trademark) or services (service mark) of an enterprise.[1] These marks identify the source of the products, linking them to a specific enterprise.

 Once your business starts growing and your products begin earning loyal customers, others could attempt to get a free ride on your brand by copying your mark. We outline below the benefits of registering your mark and the actions you may take against those pesky copycats.

Acquire ownership over your mark. The Philippines adopts a first to file rule on trademark ownership.[2] Our Intellectual Property Code (IP Code) provides that the rights in a mark shall be acquired through registration.[3] Failure to register a mark enables others to register it under their name, making it prudent for businesses to register marks even before putting out  their products or services in the market.

Protect yourself from infringement cases. Trademark registration involves an examination process wherein a trademark that is being applied for is compared to other existing registered marks in the country. If the subject mark is found to be confusingly similar to any other mark, the application is rejected. Otherwise, a certificate of registration is issued. This certificate serves as prima facie evidence of ownership over the mark.[4]

Sue persons copying your mark. The registrant is entitled to the exclusive use of the mark on the goods or services specified in the certificate of registration.[5] Should others use the mark without consent, the registrant may file a criminal case for trademark infringement. Persons who are found guilty of infringement will suffer a penalty of imprisonment from two to five years and a fine ranging from P50,000 to P200,000.[6] Such persons may also be subjected to civil or administrative claims for monetary damages.

Prevent importation of counterfeit goods. A trademark registration may be recorded with the Bureau of Customs in order to ensure that no counterfeit goods bearing the mark would be imported into the Philippines.[7] The Bureau of Customs will issue an alert or hold order on goods that are suspected of infringing upon the registered mark.[8]  

Protect your business by investing on you trademark asset. Register your trademark now!

For questions regarding the article “Register the Trademark of your Home Business!”, email us at inquiry@cfiplaw.com.

Note: The article above is for informational purposes only and does not constitute legal advice.

[1] Sec. 121, IP Code of the Philippines.

[2] Sec. 123, IP Code of the Philippines.

[3] Sec. 122, IP Code of the Philippines.

[4] Sec. 138, IP Code of the Philippines.

[5] Sec. 138, IP Code of the Philippines.

[6] Sec. 170, IP Code of the Philippines.

[7] Customs Administrative Order No. 6-2002.

[8] Ibid.

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Philippine Human Rights in the Time of Pandemic: Analyzing the Challenges to the Effectiveness of the Commission on Human Rights as an NHRI in the Midst of COVID-19

Created before the United Nations adopted the Paris Principles, and after a dictatorship engulfed the Philippines, the Commission on Human Rights (CHR) seemed poised to lead NHRIs across the globe. The CHR, with its constitutional mandate, was seen as the long-term solution to the country’s human rights woes. However, the current pandemic has revealed cracks within the CHR’s system. This study will demonstrate that, despite its perceived strengths, the CHR suffers from institutional weaknesses that limit its effectiveness during the pandemic. An analysis of the international framework on NHRIs, the legal structure of the CHR, and the effects of the state of emergency on Philippine bureaucracy will reveal that structural deficiencies, such as lack of independence, an incomplete mandate, and inadequate investigatory powers, make the Philippine NHRI vulnerable at a time when it is needed most by Filipinos.

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Being a UP graduate

Recently, a Facebook post by an official of the University of the Philippines went viral. In a rant directed at students waiting for the results of the UP College Admission Test, the official thrice proudly invoked his connection to the university, bragging that he took his undergraduate and postgraduate studies there, and ended his post by displaying his position in the UP administration.

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Bringing down the cost of medicine through compulsory licensing

The prices of medicine in the Philippines are higher compared to other countries in Asia and in countries of similar economic status. Some of the factors affecting medicine prices are the cost of research, presence of competition in the market, government regulations, and patent protection.


Medicines with existing patents are expensive due to the ability of pharmaceutical companies to dictate their price. The grant of a patent over such products practically results in a monopoly.

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