The Supreme Court En Banc in its decision dated July 19, 2016 ordered the dismissal of the petition for Special Civil Action for Certiorari filed by the Intellectual Property Association of the Philippines (IPAP) challenging the constitutionality of the ratification of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) having been made without the concurrence of the Senate. The IPAP argued that the Madrid Protocol is a treaty needing the concurrence of the Senate and even if the accession is declared constitutional, its implementation would still be unconstitutional for being violative of Section 125 of Republic Act No. 8293, or the Intellectual Property Code (IP Code). According to IPAP, the IP Code requires the foreign trademark owners seeking protection of their trademarks in the Philippines to file their applications with the IPO through a resident agent.
The Supreme Court held that the Madrid Protocol is an executive agreement that does not require the concurrence of the Senate. It also declared that there is no conflict between the Madrid Protocol and the IP Code as the method of registration through the IPO 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.
The Madrid Protocol is an international agreement that establishes a simplified procedure for a trademark owner to apply for protection of a trademark in each of the 97 countries that are members to the agreement. It allows an applicant to file a single application in one language, through one national IP Office instead of filing applications in each country where protection is sought. The Philippines’ Instrument of Accession to the Madrid Protocol was signed on March 27, 2012 by President Benigno Aquino and entered into force in the country on July 25, 2012.