July 19, 2016 | G.R. No. 204605
Intellectual Property Association of the Philippines, petitioner
Executive Secretary Paquito Ochoa, DFA Secretary Albert del Rosario, IPOPHL Director General Ricardo Blancaflor, respondents
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, which was adopted in order to remove the challenges deterring some countries from acceding to the Madrid Agreement, 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 2011, the Intellectual Property Office of the Philippines (IPOPHL) recommended to the Department of Foreign Affairs (DFA) the country's accession to the Madrid Protocol. The DFA then endorsed the Madrid Protocol to President Benigno Aquino III, who eventually signed it on March 27, 2012. The DFA treated the Madrid Protocol as an executive agreement, not a treaty, and therefore did not require the concurrence of at least 2/3 of all members of the Senators following its ratification. The Madrid Protocol entered into force in the Philippines on July 25, 2012.
Subsequently, the Intellectual Property Association of the Philippines (IPAP), an association of more than 100 law firms and individual practitioners in intellectual property law, challenged the constitutionality of the entry into force of the Madrid Protocol. IPAP argued that the Madrid Protocol was a treaty that required Presidential ratification and Senate concurrence before its entry into force in the Philippines. Because the Madrid Protocol did not have Senate's concurrence, IPAP argued that its entry into force was unconstitutional.
Hence, the instant petition.
ISSUE:
1. Is the Madrid Protocol an executive agreement or a treaty?
HELD:
The Supreme Court held that the Madrid Protocol is an executive agreement, not a treaty. Therefore its entry into force on account of the ratification by the President is constitutional because an executive agreement does not require the concurrence of 2/3 of all members of the Senate prior to its entry into force.
Treaty vs. Executive Agreement:
1. The classic formulation to distinguish a treaty from an executive agreement is found in the case of Commissioner of Customs v. Eastern Sea Trading: "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 embodying adjustments of detail carrying out well-established national policies and traditions and those involving arrangements of a more or less temporary nature usually take the form of executive agreements."Why the Madrid Protocol is an executive agreement:
2. In his separate concurring opinion, Justice Arturo Brion said that when an international agreement merely implements an existing agreement, it is properly in the form of an executive agreement. In contrast, when an international agreement involves the introduction of a new subject matter or an amendment of existing agreements or laws, then it should properly be in the form of a treaty. This is an updated take on the doctrine first enunciated in the case of Commissioner of Customs v. Eastern Sea Trading.
1. 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.On the power of the DFA to determine whether an international agreement is a treaty or an executive agreement:
2. The Intellectual Property Code of the Philippines, for example, says it is also the policy of the State to streamline administrative procedures of registering patents, trademarks and copyright.
3. There is also no need to enact a new domestic law to make the Madrid Protocol enforceable in the Philippines. Contrary to IPAP's contention that there is a conflict between the Madrid Protocol and the IP Code of the Philippines, the SC held that IPAP was incorrect to compare the two because 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.
1. The Supreme Court also held that consistent with its authority to determine whether an agreement is an executive agreement or a treaty, the DFA was correct in determining that the Madrid Protocol was an executive agreement and not a treaty, and as such did not require legislative concurrence following its ratification.
2. The DFA, by virtue of Section 9, Executive Order No. 459, is initially given the power to determine whether an agreement is to be treated as a treaty or as an executive agreement.