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Philippines’ Accession to the Madrid Protocol Upheld as Constitutional by the Supreme Court

by Jose Cochingyan, III (Cochingyan & Peralta Law Offices - Philippines)

On July 19, 2016, the Supreme Court of the Philippines upheld the constitutionality of the accession of the Philippines to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol).

The decision rendered by the Supreme Court resolves the petition filed by the Intellectual Property Association of the Philippines (IPAP) on December 14, 2012 (1) questioning the constitutionality of the Madrid Protocol on the ground of the lack of concurrence by the Senate of the Philippines, and (2) challenging the implementation of the Madrid Protocol for being in conflict with Republic Act No. 8293, otherwise known as the Intellectual Property Code of the Philippines (IP Code).

Accession to the Madrid Protocol is Constitutional.

The Supreme Court held that the ratification of the President of the Philippines of the Madrid Protocol is valid and constitutional because the Madrid Protocol is an executive agreement, as validly determined by the Department of Foreign Affairs (DFA), which does not require the concurrence of the Senate.

The 1987 Constitution of the Philippines provides that no treaty shall be valid and effective unless affirmed by at least two-thirds of all Members of the Senate. An executive agreement, on the other hand, becomes binding through executive action without the need of a vote by the Senate.

The DFA is given the power to determine whether an international agreement is to be treated as a treaty or as an executive agreement. The IPAP alleged that DFA Secretary Del Rosario gravely abused his discretion in determining the Madrid Protocol to be an executive agreement. The Supreme Court upheld the determination and treatment of DFA Secretary Del Rosario of the Madrid Protocol as an executive agreement. The Supreme Court reasoned that, historically, the registration of trademarks and copyrights have been the subject of executive agreements entered into without the concurrence of the Senate. Further, the determination and treatment of the Madrid Protocol as an executive agreement is in apparent contemplation of the express state policies found in the IP Code.

No Conflict between the Madrid Protocol and the IP Code.

The Supreme Court held that the implementation of the Madrid Protocol is not in conflict with the IP Code.

The IPAP challenged the constitutionality of the Madrid Protocol on the ground that it dispenses with the requirement of a resident agent under the IP Code, thereby modifying the local law.

The Supreme Court held that the Madrid Protocol does not amend the IP Code. The method of registration under the IP Code is distinct and separate from the method of registration under the Madrid Protocol. The comparison of the two methods of registration is misplaced because they are governed by two separate systems of registration. Also, the designation of a resident agent is still required when the registration of a mark is refused. Local representation is also required in the submission of the Declaration of Actual Use and the submission of a license contract for record purposes. The Madrid Protocol is, in fact, in accord with the intent and spirit of the IP Code as it expressly provides that all applications shall be examined according to Philippine national law.