A registered trademark owner facing infringement in the Philippines can pursue a civil action for damages and injunction under Section 156 of the Intellectual Property Code — recovering either the profits the owner lost or the profits the infringer made, doubled if actual intent to defraud is shown — and can separately pursue a criminal case under Section 170, carrying 2 to 5 years imprisonment and a fine of ₱50,000 to ₱200,000. Infringement occurs the moment the infringing act is committed, regardless of whether an actual sale takes place.
What counts as trademark infringement
Section 155 of the Intellectual Property Code (Republic Act No. 8293) describes infringement as using, without the registered owner's consent, a reproduction, counterfeit, copy, or colorable imitation of a registered mark (or its dominant feature) in connection with the sale, offering for sale, distribution, or advertising of goods or services, in a way likely to cause confusion, cause mistake, or deceive. It equally covers reproducing or copying a mark and applying it to labels, packaging, or advertisements intended for that same commercial use.
A critical detail buried in the statute: infringement takes place “at the moment any of the acts stated… are committed regardless of whether there is actual sale of goods or services using the infringing material.” A trademark owner does not have to wait until the infringer actually sells something — manufacturing, labeling, or advertising with the infringing mark is already enough to trigger liability.
Civil remedies: damages and injunction
Section 156 gives the registered owner several overlapping remedies in a civil infringement action:
- Damages, measured as either the reasonable profit the trademark owner would have made had the infringement not occurred, or the profit the infringer actually made from the infringement — whichever applies, and where neither can be readily and certainly ascertained, the court may instead award damages as a reasonable percentage of the infringer's gross sales or the value of the infringing services.
- Impoundment of sales invoices and other documents evidencing sales, on the complainant's application, during the pendency of the case — a powerful evidence-preservation tool.
- Doubled damages where actual intent to mislead the public or defraud the complainant is shown, at the court's discretion.
- Injunction, upon proper showing, to stop the ongoing infringing use.
Criminal liability, independent of the civil case
Section 170 makes clear that criminal liability for trademark infringement is “independent of the civil and administrative sanctions imposed by law” — a trademark owner is not forced to choose only one track. The criminal penalty is imprisonment of 2 to 5 years and a fine of ₱50,000 to ₱200,000 for anyone found guilty of the acts described in Section 155 (infringement), as well as related provisions on unfair competition (Section 168) and false designations of origin (Section 169.1).
Choosing between civil and criminal action
Because the law allows both tracks independently, a trademark owner facing a determined or repeat infringer often pursues both: a civil action to recover damages and secure an injunction stopping the ongoing infringement, and a criminal complaint to create real deterrent consequences and pressure for the infringer, particularly where the infringement appears deliberate rather than an innocent, accidental overlap in branding.
What a trademark owner needs to build a strong case
- Proof of valid trademark registration with the Intellectual Property Office of the Philippines (IPOPHL), establishing the owner's exclusive rights;
- Evidence of the infringing mark's use — photographs, purchased samples, advertisements, packaging, or online listings showing the confusingly similar mark in commercial use;
- Evidence of likely confusion, typically shown through the visual, phonetic, or conceptual similarity between the marks and the overlap in the goods or services and target market; and
- Sales or financial records, where available, to support the damages computation under Section 156.
Where to bring a complaint
Civil infringement actions can be filed before the regular courts or, for administrative complaints, before the IPOPHL's Bureau of Legal Affairs, which has jurisdiction over IP disputes below a certain damages threshold. Criminal complaints follow the ordinary criminal procedure, starting with a complaint filed before the prosecutor's office.
Frequently Asked Questions
Do I need to prove an actual sale happened to sue for trademark infringement? No. IP Code Section 155 specifies that infringement occurs the moment the infringing act — such as using, reproducing, or advertising with the infringing mark — is committed, regardless of whether an actual sale of goods or services takes place.
Can I pursue both a civil case and a criminal case for trademark infringement? Yes. Section 170 states that criminal liability is independent of civil and administrative sanctions, so a trademark owner can pursue both a civil action for damages/injunction and a separate criminal complaint.
What is the criminal penalty for trademark infringement in the Philippines? Imprisonment of 2 to 5 years and a fine of ₱50,000 to ₱200,000, under IP Code Section 170.
Can damages be doubled in a trademark infringement case? Yes, under Section 156.3, where actual intent to mislead the public or defraud the complainant is shown, the court has discretion to double the damages awarded.
This commentary is for general informational purposes only and does not constitute legal advice. For guidance specific to your situation, please consult a licensed attorney.
If you have questions about your rights or options under Philippine law, our firm is available to assist. You may reach us via Viber or WhatsApp, call us at 0995 433 5550, or send an email to vivasnobles@gmail.com. We look forward to hearing from you.