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Questionnaire April 2005

Q185 - Enforcement of IP Rights

Answer of the Philippine Group A. Introduction I. Present status

As indicated in the Report for the Congress in Geneva in summer 2004, the complexity and diversity of the topic “enforcement of intellectual property rights” requires a concentration of the Committee’s work on matters that are particularly critical and demand harmonization at the international level. One such matter identified by the Committee concerns the specific aspects of producing evidence in IP proceedings, on which, for the time being, the work of the Committee is specifically focused.

Basic standards at international level are provided by the Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter: TRIPS Agreement). Of particular importance and interest for the present Questionnaire is Part III, section 2 and section 3 of the TRIPS Agreement. Within the European Union, common standards have been set in Directive 2004/48/EC of the European Parliament and of the Council of April 29, 2004 on the enforcement of Intellectual Property rights (hereinafter: IP Directive). The Directive is supposed to set common minimum standards for the European Member States. It supplements the TRIPS Agreement regarding specific provisions, for which reason it has also been called “TRIPS plus”. The aspects of production of evidence have been particularly addressed in Article 6 “Evidence”, Article 7 “Measures for Preserving Evidence” and Article 9 “Right of Information” of the IP Directive. According to Article 20 of the IP Directive, the EU Member States shall implement the provisions of the IP Directive, which are at least for the time being not directly applicable, by April 29, 2006. The present Questionnaire refers to TRIPS provisions as well as to the IP Directive. Primarily, both frameworks should be taken into account by the National Groups as references and guidelines for the answers to the

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questions. For states that are not members of the European Union the IP Directive is – obviously – only relevant and interesting from a comparative view and not as applicable law. Nevertheless, all National Groups – i.e. with or without EU membership - are equally invited to highlight existing differences and discrepancies to both TRIPS and the IP Directive.

II. Aim of the study

The present study is embedded in previous achievements and results of the AIPPI. Of particular interest in this respect are the results of Special Committee Q134 and its Subcommittees encompassing a methodological study of national legislations. The work of Special Committee Q185 is continuing with the aforementioned specific orientation. The present study is aimed at analyzing the various national systems and is consequently focused on the identification of the existing gaps between these systems. At the international level the present study aims to elucidate in a first stage the status and the different ways the TRIPS Agreement has been implemented within the national systems. As indicated above, a predominant concern of this analysis is the content, requirements and extent of available means for collecting evidence, on the one hand, and, on the other hand, their limits. Both the IP Directive and the TRIPS Agreement contain a set of minimum standard rules, which may be interpreted differently from country to country. In particular their implementation varies from system to system. The aim is to identify existing problems or best practices regarding the application of implemented rules and to determine whether – in the opinion of the National Groups - there is still need for improvement or a further demand for implementation. Thus, the study is intended to illuminate gaps that still exist between national systems and determine whether there is a chance of reaching common standpoints in the AIPPI in view of further approximating national systems. Additionally, this study is aimed at identifying the consequences of the IP Directive within the states of the National Groups belonging to the European Union. The National Groups are also invited to describe any existing problems and/or deficiencies that may be identified within their national systems.

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B. Questions The present Questionnaire is based on those provisions of the TRIPS Agreement and of the IP Directive which are relevant for the present study. They are specifically quoted in the following. From a general view it would be interesting if the National Groups would illustrate the legal way in which the TRIPS provisions are implemented in their national laws. Is this implementation achieved for instance by means of (written) legislation (or regulation) or is the implementation directly applied by the Courts? If there is (written) legislation, it would be useful for the present study if the National Groups could furnish the English translation of the text (if available).

I. Article 43 TRIPS Agreement and Article 6 of the IP Directive

Article 43 “Evidence” (TRIPS) 1. The judicial authorities shall have the authority, where a party has presented reasonably available

evidence sufficient to support its claims and has specified evidence relevant to substantiation of its claims which lies in the control of the opposing party, to order that this evidence be produced by the opposing party, subject in appropriate cases to conditions which ensure the protection of confidential information.

2. In cases in which a party to a proceeding voluntarily and without good reason refuses access to, or

otherwise does not provide necessary information within a reasonable period, or significantly impedes a procedure relating to an enforcement action, a Member may accord judicial authorities the authority to make preliminary and final determinations, affirmative or negative, on the basis of the information presented to them, including the complaint or the allegation presented by the party adversely affected by the denial of access to information, subject to providing the parties an opportunity to be heard on the allegations or evidence.

Article 6 “Evidence” (IP Directive) 1. Member States shall ensure that, on application by a party which has presented reasonably available

evidence sufficient to support its claims, and has, in substantiating those claims, specified evidence which lies in the control of the opposing party, the competent judicial authorities may order that such evidence be presented by the opposing party, subject to the protection of confidential information. For the purposes of this paragraph, Member States may provide that a reasonable sample of a substantial number of copies of a work or any other protected object be considered by the competent judicial authorities to constitute reasonable evidence.

2. Under the same conditions, in the case of an infringement committed on a commercial scale Member States shall take such measures as are necessary to enable the competent judicial authorities to order, where appropriate, on application by a party, the communication of banking, financial or commercial documents under the control of the opposing party, subject to the protection of confidential information.

1. General remarks

From a comparison of the above provisions, it appears that Article 6 (1, first sentence) of the IP Directive does not go beyond Article 43 (1) of the TRIPS Agreement, i.e. according to both provisions, means for gathering evidence (which lies within the control of the opposing parties), regardless of the burden of proof, should be available in the national

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laws, provided that the protection of confidential information is ensured. Both provisions are modeled as procedural means for pending court proceedings. Article 43 (2) of the TRIPS Agreement stipulates what may be the consequences if the order is not fulfilled by the opposing party. A comparable provision regarding the consequences of such refusal is missing in the IP Directive. According to Article 6 (2) of the IP Directive it should be possible to order the communication of banking or financial documents provided that the infringement is committed on a commercial scale. A comparable provision is missing in TRIPS. The IP Directive contains a definition of the terms “commercial scale” in item (14) of its preamble: “Acts carried out on a commercial scale are those carried for direct or indirect economic or commercial advantage; this would normally exclude acts carried out by end consumers acting in good faith”. It appears that this provision is aimed at ensuring access to information contained in such documents by means of which the claimant would be able to identify the beneficiaries of the infringement (on different distribution levels).

In the following the questions are divided into two sections: a section with questions as to content, requirements and extent of the provisions of any national system, and a section with questions as to the limits of the available means identified in the national systems.

2. Questions to be answered regarding content, requirements and extent a. Does your country already provide for a mechanism in

compliance with Article 43 (1) of the TRIPS Agreement and/or Article 6 (1) of the IP Directive. Yes, generally, a party to a case may be compelled to present any book, document, or other things under his control through a subpoena duces tecum.1 A subpoena duces tecum is “a process by which the court, at the instance of a party, commands a witness who has in his possession or control some document or paper, that is pertinent to the issues of a pending controversy, to produce it at the trial.”2 As defined, a subpoena is not an order by a judicial or administrative body but merely a process issued by a competent authority.

However, a party may not be compelled to produce documents or objects when such production will be in violation of a person’s right

1 RULES OF COURT, rule 21, Sec. 1 2 HERRERA, OSCAR M., REMEDIAL LAW 859 (2000).

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against self-incrimination. The Philippine Constitution provides that “No person shall be compelled to be a witness against himself”.3 The right against self-incrimination is the right of a person to refuse to give any evidence that may lead to his conviction unless he willingly decides otherwise; or simply, the right of a person not to be compelled to be a witness against himself.4 The prohibition applies to the compulsion for the production of documents, papers and chattels that may be used as evidence against the witness, except where the State has the right to inspect the same, such as the books of accounts of corporations under the police power.5 The protection then extends to the production by the accused of documents, chattels, or other objects, demanded from him, which may constitute evidence of his guilt or innocence, for then he is compelled to make a statement, express or implied, as to the identity of the articles produced.6

In addition, the court may also, upon motion of any party, require the “production or inspection of documents and things”.7 Under this mode of discovery, a party may be ordered to produce and permit inspection, copying or photographing of any designated papers, books of accounts, letters, photographs, object or tangible things and/or to permit entry upon designated land, or other property, inspecting, measuring, surveying or photographing.8 As opposed to Article 43 (2) of the TRIPS agreement wherein the judicial authorities may make preliminary or final determination upon the refusal of a party to give access or to provide the requested information, the court may issue orders considering certain matters to be established facts or disallowing the disobedient party to either support or oppose designated claims or defenses upon a party’s failure to comply with the court’s order to allow the production or inspection of documents or objects.9

3 Sec. 17, Art. III of the 1987 Philippine Constituion 4 DE LEON, HECTOR S., PHILIPPINE CONSTITUTIONAL LAW: PRINCIPLES AND CASES VOLUME 1 881 (1999) 5 CRUZ, ISAGANI A., CONSTITUTIONAL LAW 288 (1995). 6 DE LEON, HECTOR S., PHILIPPINE CONSTITUTIONAL LAW: PRINCIPLES AND CASES VOLUME 1 889 (1999) 7 RULES OF COURT, Rule 27. 8 Ibid., Rule 27, Sec.1. 9 Ibid., Rule 29, Sec. 3.

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b. How does your system work and what are its specific requirements, in particular:

• Are these mechanisms arranged differently as to the different types of IP (i.e. patents, utility models, design models, trademarks, copyright).

No, the requirements for a subpoena duces tecum as well as for “the production or inspection of documents and things” do not make a distinction and may therefore apply to all types of Intellectual Property Rights.

• According to Article 43 (1) of the TRIPS Agreement and Article 6 (1) of the IP Directive, the claimant must present reasonably available evidence sufficient to support the claim: Is there a comparable requirement in the laws of your national system? If yes, it will be interesting to know the extent to which the infringement must already be proven beforehand by the claimant. For the issuance of a subpoena duces tecum, there is no

similar requirement under Philippine laws.

However, under “the production or inspection of documents or things”, good cause must be shown. “Good cause” does not relate to the substance of the documents, but to the reason for producing relevant or material matters, therein.10

• How (clearly) and to what extent must the claimant “specify” the means of evidence to be produced that is within the control of the opposing party? For a subpoena duces tecum, the requirement is for it to

contain a reasonable description of the books, documents or things demanded.11 The Supreme Court has held that:

“Well-settled is our jurisprudence that, in order to entitle a party to the issuance of a "subpoena duces tecum," it must appear, by clear and unequivocal proof, that the book or document sought to be produced contains evidence relevant and material to the issue before the court, and that the precise book, paper or document containing such evidence has been

10 HERRERA, OSCAR M., REMEDIAL LAW 60 (2000). 11 RULES OF COURT, Rule 21, Sec. 3

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so designated or described that it may be identified (Arnaldo vs. Locsin, 69 Phil. 113).12

On the other hand, under “the production or inspection of documents or things” a description of the designated documents, objects, or tangible things with sufficient certainty is required. Designation of documents demanded for inspection is sufficiently definite if it informs the adverse party what it is required to produce.

• Are there other requirements which must be fulfilled? The other requirements for a subpoena duces tecum are as

follows:

1. It must be reasonable and not oppressive,

2. The articles sought to be produced must appear prima facie to be relevant to the issues;

3. The party asking for the subpoena advances the costs for the production of the articles desired.13

On the other hand, the other requirements for “the production or inspection of documents or things” are as follows:

1. Motion with notice to all parties in a suit pending in court showing good cause;

2. Subject matter is not privileged;

3. It refers to evidence material to any matters involved in the case;

4. It is in the possession, custody, and control of the party addressed;

5. Available only between opposing parties to an action;14 and

6. Specification of time and place and the manner for the production and inspection.

12 Universal Rubber Products, Inc. Vs. Court of Appeals, L-30266 (1984) 13 RULES OF COURT, Rule 21, Sec. 4 14HERRERA, OSCAR M., REMEDIAL LAW 59 (2000).

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c. Regarding the extent and enforcement of the order:

• Is it possible to get such an order only in view of proving the infringement or can the order also be focused on evidence which may be relevant for the determination of the extent of damages? A subpoena duces tecum can be used for the production of

documents to determine damages. Aside from the production of relevant documents, a subpoena duces tecum may also be issued in a suit for unfair competition as the claim for damages of the plaintiff can be based on the records or documents of the defendant sought to be produced.15

• Can such order also be used to identify the possible existence of evidence, i.e. are there any means in your system that enable the claimant to search for evidence? A subpoena duces tecum cannot be used to identify the

existence of possible evidence.

However, the other available modes of discovery other than “the production or inspection of documents or things” are:

1. Depositions (whether by oral examination or written interrogatories);16

2. Interrogatories to parties; and17

3. Requests for admissions;18

The Supreme Court has recognized the importance of the different modes of discovery when it ruled in the case of Republic vs. Sandiganbayan19 that:

“No longer can the time-honored cry of “fishing expedition” serve to preclude a party from inquiring into the facts underlying his opponent’s case. Mutual knowledge of all the relevant facts gathered by both parties is essential to proper litigation. To that end,

15 REGALADO, FLORENZ D., REMEDIAL LAW COMPENDIUM VOLUME ONE 298 (7TH ed., 1999) citing Universal Rubber Products, Inc. Vs. Courtt of Appeals, L-30266, 29 June 1984 16 RULES OF COURT, Rule 24. 17 Ibid., Rule 25. 18 Ibid., Rule 26. 19 204 SCRA 22.

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either party may compel the other to disgorge whatever fact she has in his possession. The deposition-discovery procedure simply advances the stage at which the disclosure can be compelled from the time of trial to the period preceding it, thus reducing the possibility of surprise.”

The purpose of the Rules of Discovery was explained by the Supreme Court in the case of Koh vs. Intermediate Appellate Court:20

“The rules of discovery (Rules 24, 25, 26, 27, 28, and 29 of the Revised Rules of Court) are intended to enable a party to obtain knowledge of material facts within the knowledge of the adverse party or of third parties through depositions; to obtain knowledge of material facts or admission from the adverse party through written interrogatories; to obtain admissions from the adverse party regarding the genuiness of relevant documents or relevant matters of fact through requests for admissions; to inspect relevant documents or objects and lands or other property in the possession or control of the adverse party; and to determine the physical or mental condition of a party when such is in controversy. This mutual discovery enables a party to discover the evidence of the adverse party and thus facilitates an amicable settlement or expedites the trial of the case. Trial judges should, therefore, encourage the proper uitilization of the rules on discovery…”

• How can the order be enforced? A subpoena duces tecum is served either personally or

through substituted service together with the tender of reasonable cost of producing the books, documents or things demanded.21

• Is it possible by means of such an order to effectively enter the private sphere of the opposing party (for instance premises)? A subpoena duces tecum cannot authorize entry into the

premises of the opposing party. It merely orders a party to produce the required documents or objects.

20 144 SCRA 259. 21 RULES OF COURT, Rule, 21 Sec.6.

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However under “the production or inspection of documents or things”, the court may order any party to permit entry upon a designated land or other property in his possession or control for the purpose of inspecting, measuring, surveying, or photographing the property or any designated relevant object or operation thereon.22

• What are the consequences if the order is not complied with by the opposing party. For example: Shift of burden of proof, or a solution comparable to the solution of Article 43 (1) of the TRIPS Agreement? A party’s failure to comply with a subpoena duces tecum could

make the party liable for contempt.23

On the other hand, for a party’s failure to comply with the court’s order under “the production or inspection of documents or things”, the court may issue any of the following:

1. An Order that the matters regarding which the questions were asked, or the character or description of the thing or land, or the contents of the paper x x x, or any other designated facts shall be taken to be established for the purposes of the action in accordance with the claim of the party obtaining the order;

2. An Order refusing to allow the disobedient party to support or oppose designated claims or defenses or prohibiting him from introducing in evidence designated documents or things or items of testimony x x x;

3. An Order striking out pleadings or parts thereof, or staying further proceedings until the order is obeyed, dismissing the action or proceedings or any part thereof, or rendering a judgment by default against the disobedient party; and

4. In lieu of any of the foregoing orders or in addition thereto, an order directing the arrest of any party or agent of a party for disobeying any such orders except an order to submit to a physical or mental examination.24

22 Ibid., Rule, 27 Sec.1. 23 RULES OF COURT, Rule, 21 Sec.9 and RULES AND REGULATIONS ON ADMINISTRATIVE COMPLAINTS FOR VIOLATION F LAWS INVOLVING INTELLECTUALPROPERTY RIGHTS AS AMENDED, Rule 6. 24 RULES OF COURT, Rule 29, Sec. 3.

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• Can such order be obtained in your country based on an IP right registered in another country but not registered or even applied for in your country? The only instance wherein a subpoena duces tecum or an

order for “the production or inspection of documents or things” can be obtained even if an Intellectual Property right is not registered or even applied for in the Philippines is when there is a pending action for Unfair Competition and any of the parties have requested for either a subpoena duces tecum or for an order for “the production or inspection of documents or things.” A case for Unfair Competition in the Philippines does not require that a registered mark be employed. Thus, a case for Unfair Competition can be based on a mark not registered or applied for in the Philippines.

d. Does your system provide for legal presumptions comparable to the stipulation of the second sentence of Article 6 of the IP Directive. This provision apparently refers to a problem arising in cases where a large amount of infringing items such as optical discs are to be seized. Requiring detailed proof of copyright for each infringing item would lead to loss of time, effort and money by the right holder.

No, there is no legal presumption comparable to the stipulation of the second sentence of Article 6 of the IP Directive under Philippine Law.

e. Questions regarding procedural aspects: i) What is the competent court? Who makes the decision,

an administrative or a judicial body? A subpoena duces tecum or an order for “the production or

inspection of documents or things” can be issued by either the regular courts or by the Intellectual Property Office, an administrative body, where there is a pending action for Intellectual Property violations.25

ii) How costly and time-consuming are these proceedings? Without need for a written motion, a subpoena duces tecum

may be issued by the competent authority provided all the requirements are met.

25 RULES AND REGULATIONS ON ADMINISTRATIVE COMPLAINTS FOR VIOLATION OF LAWS INVOLVING INTELLECTUAL PROPERTY RIGHTS AS AMENDED Rule 1, Sec. 3 and REGULATIONS ON INTERPARTES PROCEEDINGS Rule 2, Sec.6.

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On the other hand, “the production or inspection of documents or things” require that it be made by motion and for good cause shown. In such as case, the opposing party may be given an opportunity to file a written opposition to the motion. This may be a cause for delay before the competent authority can issue a ruling on the motion.

iii) Is the order subject to appeal? - by whom? - within what time limit? - on what grounds? - before what court?

A subpoena duces tecum is not subject to appeal since it is a process issued by a court and is not an order. However, a subpoena duces tecum may be quashed upon showing that it is unreasonable and oppressive, or the relevancy of the books, documents or things does not appear, or if the person in whose behalf the subpoena is issued fails to advance the reasonable cost of the production thereof.26

An Order for “the production or inspection of documents or things” is likewise not a proper subject of an appeal considering that it is an interlocutory order which is expressly prohibited by the Rules to be appealed.27 A Petition for Certiorari under Rule 65 of the Rules of Court for grave abuse of discretion and (not an appeal) is the proper remedy.

The Supreme Court held in the case of Diesel Construction Company, Inc. vs. Jollibee Foods Corp.28 that:

“Interlocutory orders are those that determine incidental matters which do not touch on the merits of the case or put an end to the proceedings. It is well settled that a petition for certiorari under Rule 65, not Rule 45, is the proper remedy to question an improvident order granting execution pending appeal and thereby relieve the adverse party from the immediate effects thereof. x x x”

26 RULES OF COURT, Rule 21, Sec. 4. 27 Ibid., Rule 41, Sec.1. 28 G.R. No. 136805, 28 January 2000.

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iv) What kind of counter-arguments may successfully be asserted against such an order, or what counteractive measures can be taken by the respondent in order to lift the order?

The counter arguments that can raised against the issuance of a subpoena are as follows:

1. It is unreasonable and oppressive;

2. The relevancy of the books, documents or things does not appear;

3. The person in whose behalf the subpoena is issued fails to advance the reasonable cost of the production thereof.29

On the other hand, a written opposition to the motion for “the production or inspection of documents or things” can show that the requirements for the issuance of an order were not met, such as:

1. Failure to show good cause,

2. Subject matter is privileged;

3. Evidence is not material to the action involved;

4. Evidence is not in the possession or under the control and custody of the party addressed;

5. Lack of particularity of the description of the documents or things sought to be produced.

v) What are the implications if either claimant or respondent or both parties are foreigners?

Provided that the foreigner is a resident in the Philippines and jurisdiction over the person of the resident foreigner can be acquired, a subpoena duces tecum or an order for “the production or inspection of documents or things” can be issued and enforced by the competent authority. In the case of a foreign private juridical entity which has transacted business in the Philippines, service can be effected on its resident agent.30

However, if the respondent is a foreign non-resident, jurisdiction over his person cannot be acquired and an action cannot be filed against him in the Philippines.

29 RULES OF COURT, Rule 21, Sec. 4. 30 Ibid., Rule 14, Sec. 12.

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vi) Is the order enforceable even if an appeal is pending.

A subpoena duces tecum and an order for “the production or inspection of documents or things” are not subject to appeal.

3. Questions to be answered regarding limits

a. Whether and how and through what procedures can secret

information (business information, know-how etc.) of the opposing party be protected in the laws of your system?

To safeguard secret information, an opposing party may move

that the subpoena duces tecum be quashed if it is unreasonable and oppressive, or the relevance of the books, documents or things does not appear31.

On the other hand, to safeguard secret information when an order for the production or inspection of documents or things is issued, the opposing party may move for the issuance of an order to specify the time, place and manner of making the inspection and taking copies and photographs, and may prescribe such terms and conditions as are just.32

b. In particular, are there in your system procedural possibilities to

restrict the access to the information to specific persons involved in the proceedings (attorney only, neutral expert)? If so, how is this restriction legally implemented and ensured?

While there is no specific rule of procedure which affords this kind

of a remedy, such is still possible through a proper motion submitted to the court praying for this kind of relief. The basis thereof is the equity jurisdiction of the court in the interest of justice (i.e. justice for the opposing party who may be abused by the disclosure of secret information, business information or know-how).

c. How can abuses be prevented?

As mentioned, there are procedural devices that may be used to resist abuses to the opposing party committed through the inquiry of secret business information. These include an opposition to a motion

31 Ibid., Rules of Court, at Rule 21, Sec. 1. Also, at IRR-IPV, ibid. at Sec. 3. 32 Rules of Court, Rule 27.

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for the production or inspection of documents or things and a motion to quash an improper subpoena duces tecum.33

d. Is it possible for the opposing party to rely on privileges such as

attorney/client privilege?

• If so, are there different types of privileges? • What are the possible consequences if a fact cannot be proven due

to the invocation of a privilege?

The opposing party may rely on such privileges as the attorney/client privilege. This privilege states that an attorney cannot without the consent of his client, be examined as to any communication made by the client to him, or his advice given thereon in the course of, or with a view to, professional employment; nor can an attorney’s secretary, stenographer, or clerk be examined, without the consent of the client and his employer, concerning any fact the knowledge of which has been acquired in such capacity.34

Other privileges also exist in Philippine jurisdiction, to wit (1)

husband and wife privilege35, (2) physician-patient privilege36, (3) clergyman-penitent privilege37, (4) public officer-public interest privilege38.

Upon such grounds of public policy, the parties to such privilege

communications are, under certain circumstances, made incompetent, by law, to testify to such communications.39 Thus, if a fact cannot be proved due to the invocation of a privilege, such fact would remain unsubstantiated.

d. What are the consequences if it turns out that the order was

unjustified?

33 Rules of Court, Rule 21, Sec. 4. 34 Ibid., Rule 130, Sec. 24 (b). 35 Ibid., at par. (a). 36 Ibid., at par. (c). 37 Ibid., at par. (d). 38 Ibid., at par. (e). 39 Francisco, Ricardo J., Basic Evidence 322 (1991).

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If the order is unjustified, the effect is that such an order, being interlocutory in character, cannot be the subject of an appeal.40 The remedy is to wait for the termination of the case in the trial court, and in case of an adverse judgment, appeal the same, assigning as an error such unjustified order. In any case, a special civil action for certiorari is always a remedy when there is no plain, adequate or speedy remedy in the ordinary course of law.41

In case of an unjustified subpoena, the remedy is a motion to

quash.42

e. Is the order subject to a security bond?

No security bond is required for the issuance of such an order or in availing the foregoing remedies.

4. Questions to be answered regarding future improvements

a. According to the opinion of your National Group, are there ambitions or motivations to further develop or improve your system?

b. Are there any governmental or public ambitions in your country to improve or to change the existing systems?

A bill has been approved in Congress that provides for a system of protection and exclusive rights with respect to plant varieties, Republic Act 9168. In the lower house of Congress, several bills are also pending including House Bill Nos. 2093 and 3777. House Bill No. 2093 seeks to create a Joint Cybercrime Investigation Unit (“JCIU”) with the power to effect search and seizures in the premises of, as well cause the arrest, investigation and prosecution of persons engaged in cybercrimes. It further proposes to oblige Internet service providers to preserve, by electronic means and for a definite period, the integrity of computer data and traffic record in its system, to facilitate the gathering of evidence in cybercrimes. House Bill No. 3777 on the other hand seeks to punish certain transactions committed through electronic documents or electronic data messages.

40 Ibid., at Rule 41, Sec. 1 (c). 41 Ibid., at Rule 65, Sec. 1. 42 Ibid., at Rule 21, Sec. 4.

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c. The following question is particularly addressed to the National Groups within the European Union: Do you think that the laws of your national systems are already in compliance with the said provisions of the IP Directive? Not applicable.

II. Article 50 TRIPS Agreement and Article 7 of the IP Directive

Article 50 (TRIPS) 1. The judicial authorities shall have the authority to order prompt and effective provisional measures:

(a) (...) (b) to preserve relevant evidence in regard to the alleged infringement.

2. The judicial authorities shall have the authority to adopt provisional measures inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder, or where there is a demonstrable risk of evidence being destroyed.

3. The judicial authorities shall have the authority to require the applicant to provide any reasonably available evidence in order to satisfy themselves with a sufficient degree of certainty that the applicant is the right holder and that the applicant's right is being infringed or that such infringement is imminent, and to order the applicant to provide a security or equivalent assurance sufficient to protect the defendant and to prevent abuse.

4. Where provisional measures have been adopted inaudita altera parte, the parties affected shall be given notice, without delay after the execution of the measures at the latest. A review, including a right to be heard, shall take place upon request of the defendant with a view to deciding, within a reasonable period after the notification of the measures, whether these measures shall be modified, revoked or confirmed.

5. The applicant may be required to supply other information necessary for the identification of the goods concerned by the authority that will execute the provisional measures.

6. Without prejudice to paragraph 4, provisional measures taken on the basis of paragraphs 1 and 2 shall, upon request by the defendant, be revoked or otherwise cease to have effect, if proceedings leading to a decision on the merits of the case are not initiated within a reasonable period, to be determined by the judicial authority ordering the measures where a Member's law so permits or, in the absence of such a determination, not to exceed 20 working days or 31 calendar days, whichever is the longer.

7. Where the provisional measures are revoked or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by these measures.

8. To the extent that any provisional measure can be ordered as a result of administrative procedures, such procedures shall conform to principles equivalent in substance to those set forth in this Section.

Article 7 “Measures for preserving evidence” (IP Directive)

1. Member States shall ensure that, even before the commencement of proceedings on the merits of the case, the competent judicial authorities may, on application by a party who has presented reasonably available evidence to support his/her claims that his/her intellectual property right has been infringed or is about to be infringed, order prompt and effective provisional measures to preserve relevant evidence in respect of the alleged infringement, subject to the protection of confidential information. Such measures may include the detailed description, with or without the taking of samples, or the physical seizure of the infringing goods, and, in appropriate cases, the materials and implements used in the production and/or distribution of these goods and the documents relating thereto. Those measures shall be taken, if necessary without the other party having been heard, in particular where any delay is likely to cause irreparable harm to the rightholder or where there is a demonstrable risk of evidence being destroyed.

Where measures to preserve evidence are adopted without the other party having been heard, the parties affected shall be given notice, without delay after the execution of the measures at the latest. A review, including a right to be heard, shall take place upon request of the parties affected with a view to deciding, within a reasonable period after the notification of the measures, whether the measures shall be modified, revoked or confirmed.

2. Member States shall ensure that the measures to preserve evidence may be subject to the lodging by the applicant of adequate security or an equivalent assurance intended to ensure compensation for any prejudice suffered by the defendant as provided for in paragraph 4.

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3. Member States shall ensure that the measures to preserve evidence are revoked or otherwise cease to have effect, upon request of the defendant, without prejudice to the damages which may be claimed, if the applicant does not institute, within a reasonable period, proceedings leading to a decision on the merits of the case before the competent judicial authority, the period to be determined by the judicial authority ordering the measures where the law of a Member State so permits or, in the absence of such determination, within a period not exceeding 20 working days or 31 calendar days, whichever is the longer.

4. Where the measures to preserve evidence are revoked, or where they lapse due to any act or omission by the applicant, or where it is subsequently found that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall have the authority to order the applicant, upon request of the defendant, to provide the defendant appropriate compensation for any injury caused by those measures.

5. Member States may take measures to protect witnesses’ identity.

1. General Remarks:

Both provisions concern measures to preserve evidence relating to the alleged infringement: According to Art. 7 of the IP Directive, such measures should explicitly be applicable even before the commencement of proceedings on the merits (or preliminary injunction proceedings). This provision has been – as is specifically indicated in the Explanatory Memorandum to the proposal for the IP Directive43 – modeled on provisions such as the UK’s Anton-Piller order and the French saisie contrefacon. Accordingly, the right holder may initiate either a detailed description, with or without the taking of samples, or the seizure of infringing goods and, in appropriate cases, he should also have access to the materials and implements used in the production and/or distribution of these goods and the documents relating thereto. It may even be granted in exceptional cases in “ex parte” proceedings. Also Article 50 obliges TRIPS member countries to grant their judicial authorities the power to impose provisional measures for preserving evidence (Article 50 (1) b) inaudita altera parte (without the defendant being heard) where appropriate (see Article 50 (2). However, TRIPS contains only few indications regarding the extent, content and requirements of such measures to preserve evidence.

2. Questions to be answered regarding content, requirements and extent

a. Do you have in your national law measures which could be

deemed analogous to or comparable with the measures described above?

Yes. Administrative Matter Numbered 02-1-06 of the Supreme Court of the Philippines established the Rules on Search and Seizure

43 COM(2003) 46 final, page 21.

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in Civil Actions for Infringement of Intellectual Property Rights (“IP Rules on Search and Seizure”), which took effect on February 15 2002.

Further, there is Customs Administrative Order No. 6-2002

(“Customs A.O. 6-2002”) issued on September 23 2002, which implements the IP Code in relation to Sections 51-60 of TRIPS Agreement, amending for the purpose Customs A.O. No. 7-93 on Customs Border Control. This administrative order seeks to prohibit the importation of goods or products that infringe upon all intellectual property rights as defined by law. Thus, under Section III.C.1 the Bureau of Customs (“BOC”) may issue alert or hold order against imports suspected to contain infringing goods, on the basis of reliable information or upon the request of an Intellectual Property Right (“IPR”) Holder/Owner as recorded in the BOC’s IPR registry.44

b. If so, what are the differences?

Since the aforementioned rule of procedure was specifically stated to be an implementation of Article 50 of the Trade Related Aspects of Intellectual Property Rights (“TRIPS”), there is no substantial distinction with the said treaty except as to formalities. Below are some examples.

Application— Under the Philippine IP Rules on Search and Seizure, the

application for the issuance of a writ of search and seizure must (1) be verified by the applicant alleging the ground upon which it is based and the specific description and location of the documents and articles to be searched, inspected, copied or seized and their value, (2) be supported by affidavits of witnesses who personally know of the facts and by authenticated or certified documents, and (3) contain a certification against forum shopping as prescribed by the Rules of Court.45 Moreover, the application shall also state the name of the applicant, his representative, witnesses and counsel who will attend the search in the event that the application is granted.46

Examination of witnesses and proof of facts—

44 Customs A. O. 6-2002, Section III.C.1 and 2. 45 IP Rules on Search and Seizure, Section 4. 46 Ibid.

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The judge must, before issuing the writ, examine in the form of searching questions and answers, in writing and under oath or affirmation, the applicant and the witnesses he may produce on facts personally known to them. The examination of the applicant and his witnesses shall be recorded. Their sworn statements and their affidavits shall form part of the record of the case. The hearing on the application for the writ shall be held in the chambers of the judge. And court personnel shall maintain the confidentiality of the application proceeding.47

Issuance and enforcement of the writ— The writ shall be issued if the judge is satisfied with the proof of

facts upon which the application is based.48 The enforcement of the writ shall be supervised by an independent Commissioner to be appointed by the court.49 The writ shall also contain a warning that violation of any of the terms and conditions of the writ shall constitute contempt of court.50 It shall be enforceable for a period of not more than ten (10) days from the date of the issuance.51

The premises may not be searched except in the presence of the alleged infringing defendant, expected adverse party or his representative or the person in charge or in control of the premises or residing or working therein who shall be given the opportunity to read the writ before its enforcement and seek its interpretation from the Commissioner. In the absence of the latter, two persons of sufficient age and discretion residing in the nearest locality shall suffice.52 The sheriff, under the supervision of the independent Commissioner, shall search for all the documents and articles specified in the writ and take them to his custody subject to the control of the court. If the subject articles are not capable of manual delivery, the sheriff shall attach to them a tag or label stating the fact of seizure and warning all persons from tampering with them.53 The sheriff shall, in the presence of the applicant or his representative, and under the supervision of the Commissioner, prepare a detailed list of the seized documents and articles and shall give an accurate copy of the same to the aforesaid person/s required to be present

47 Ibid., at Sec. 5. 48 Ibid., at Sec. 7. 49 Ibid. 50 Ibid., at Sec. 8. 51 Ibid., at par 1 (c) 52 Ibid., at Sec. 13. 53 Ibid., at Sec. 14.

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during the search. The applicant or his representative and the Commissioner shall also be given a copy of the receipt.54 The sheriff in proper cases may use force to enforce the writ.55

Custody of the items seized— After the sheriff has taken possession of the documents and

articles, he shall deliver them to a bonded warehouse or government warehouse for safekeeping. The applicant or his representative shall be allowed access to said materials for the purpose of examining them. The applicant shall be responsible for the necessary expenses incurred in the seizure and safekeeping of the documents and articles in a bonded warehouse or government warehouse.56

Remedies of the opposing party— The opposing party has, in order to protect his rights, the following

remedies against a writ of search and seizure: (1) motion to discharge the writ on any of the following grounds (a) the writ was improperly or irregularly issued, or excessively enforced, (b) the bond is insufficient, (c) the safeguards provided in the writ have been violated by the applicant or the sheriff; (d) the documents and articles seized are not infringing copies or means for making the materials alleged to infringe the intellectual property right of the applicant,57 or (d) there is no case filed with the appropriate court or authority within thirty-one (31) calendar days from the date of issuance of the writ.58

Compensation of the opposing party— Compensation may, on motion, be awarded when the writ is

discharged or when the court found no infringement or threat of infringement after the trial. The court in such case shall order the applicant to compensate the alleged infringing defendant or expected adverse party upon the cash bond, surety bond or other equivalent

54 Ibid. 55 Ibid., at Sec. 15. 56 Ibid., at Sec. 14. 57 Ibid., at Sec. 18. 58 Ibid., at Sec. 20.

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security for any injury or damage the latter suffered by the issuance and enforcement of the writ. Should damages exceed the amount of the bond, the applicant shall be liable for the payment of the excess.59

c. Regarding content, requirements and extent: Reference is made

to the catalogue of questions under B. I., which may equally apply to the measures according to the above provisions and which may be taken as a guideline for describing content, requirements and extent of the available means, in particular:

i) Are there differences as to the types of IP?

None, the IP Rules on Search and Seizure do not make such a distinction and may therefore apply to all types of Intellectual Property Rights.

ii) To what extent must the infringement already be proven beforehand by the claimant?

The extent of proof required for the issuance of the writ of search and seizure is only probable cause to believe that the applicant’s right is being infringed or that such infringement is imminent and there is a prima facie case for final relief against the alleged infringing defendant or expected averse party.60

iii) How (clearly) and to what extent must the claimant “specify” the means of evidence to be produced?

The court may require the applicant to give other information necessary for the identification of the articles and documents to be searched, inspected, copied or seized and the premises to be searched. Where feasible, it may direct the applicant to submit copies and photographs of the documents or articles to be seized and impounded.61

iv) Are there other requirements which must be fulfilled?

There are, as mentioned above, several requirements in the application for the issuance of a writ if search and seizure, to wit: (1) verification of the application

59 Ibid., at Sec. 21. 60 Ibid., at Sec. 6 (b) 61 IP Rules on Search and Seizure, Sec. 5.

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which must contain a certification of non-forum shopping,62 (2) affidavits of the witnesses and other supporting documents which must be authenticated or certified,63 and (3) bond or security to compensate the respondent in case the writ is discharged or when after the trial, no infringement or threat of infringement is found.64

v) Is the measure only applicable in view of proving the infringement or is it possible to apply it to evidence relevant for the extent of damages?

The foregoing measure may be used only in proving the prima facie case of infringement for the issuance of the writ of search and seizure, but not in proving the extent of damages. Thus, it appears that since no specific provision under the said rule makes such evidence admitted in the proceeding for the application for a writ of search and seizure, automatically reproduced in a subsequent complaint for violation of intellectual property rights, the facts must be re-pleaded and the evidence thereon, presented again.

iv) Can such an order also be applied to identify the possible existence of evidence, i.e. are there any means in your system enabling the claimant to search for evidence?

No, the writ of search and seizure only contains an order to the alleged infringing defendant, expected adverse party or to the person in charge or in control of the premises to disclose to the sheriff serving the writ the location of the documents and articles subject of the writ.65 The writ could, therefore, not be used to search for other evidence.

v) How can the order be enforced? For instance, is it possible by means of such an order to enter the private sphere of the opposing party (for instance premises) and/or to effectively seize suspected “infringing” products? Who is entitled to enter the respondent's private sphere?

62 Ibid., at Sec. 4. 63 Ibid. 64 Ibid., at Sec. 9. 65 Ibid., at Sec. 8 (b).

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The order shall be enforced by serving the writ on the alleged infringing defendant or expected adverse party in the place to be searched. If the alleged infringing defendant or expected adverse party in the place to be searched cannot be found on the premises, the writ shall be served on his agent or representative. In the absence of an agent or representative, it shall be served on the person in charge or in control of the premises, or residing or working therein who is of sufficient age and discretion. If such person is absent, the sheriff or proper officer shall post the papers on the premises and proceed with the enforcement of the writ.66 The sheriff together with the Commissioner supervising the enforcement of the writ shall enter the premises of the opposing party and search and seize the articles specified in the writ.67

vi) What are the consequences if the opposing parties refuse access?

If the sheriff is refused admittance to the premises after giving notice of his purpose and authority or in the absence of the alleged infringing defendant or expected adverse party, his agent or representative, or person in charge or in control of the premises or residing or working therein who is of sufficient age and discretion, he may use reasonable force to gain entry to the premises or any part of the building or anything therein, to enforce the writ or to liberate himself or any person lawfully aiding him when unlawfully detained therein.68

d. What experiences have been made in the past with such

measures?

Although initial resistance was encountered, eventually the infringing party allowed admittance to the premises.

3. Questions to be answered regarding limits

As the focus of the measures regarding the question whether and how and by means of what procedures secret information (the opposing party's business information, know-how etc. may be protected) is the

66 Ibid., at Sec. 11 67 Ibid., at Sec. 14. 68 Ibid., at Sec. 15.

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same as indicated above in section B. I, reference is made to the catalogue of measures in B. I (3), Limits). This also relates to the extent and limits of the measure, including the question of how privileges such as attorney/client privileges are to be taken into consideration in your national system, i.e. the questions should be taken as a guideline for describing the limits of the means.

a. Whether and how and through what procedures can secret information (business information, know-how etc.) of the opposing party be protected in the laws of your system? Under the Rules on Search and Seizure in Civil Actions for Infringement of Intellectual Property Rights (“Rules”), the applicant must provide for the specific description and location of the documents and articles to be searched, inspected, copied or seized and their value.69 The requirement seeks to limit the scope of the items that can be seized. Unless specifically described in the writ, documents and articles containing secret information cannot be seized. Moreover, the writ commands the sheriff to take the seized items into his custody subject to the control of the court. The enforcement of the writ shall be supervised by an independent Commissioner to be appointed by the court. 70 If the court finds no infringement after trial, the seized materials shall be immediately returned to the defendant.71 With such requirements, a third party cannot readily gain access to seized items containing secret information. b. In particular, are there in your system procedural possibilities to restrict the access to the information to specific persons involved in the proceedings (attorney only, neutral expert)? If so, how is this restriction legally implemented and ensured? Although the seized items are subject to the control of the court, the Rules do not restrict the persons who may access the information contained in the seized articles or documents. In fact, the applicant or his representative is expressly allowed access to the said materials. The Rules state:

69 RULE ON SEARCH AND SEIZURE IN CIVIL ACTIONS FOR INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS, A.M. No. 02-1-06-SC, Sec. 4. 70 Ibid., Sec. 7. 71 Ibid., Sec. 22, par. 2.

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“After the sheriff has taken possession of the documents and articles, he shall deliver them to a bonded warehouse or government warehouse for safekeeping. The applicant or his representative shall be allowed access to said materials for the purpose of examining them.”72

c. How can abuses be prevented? The formal requirements for the application of the writ serve as safeguards against abuse. The application for a search warrant should be verified by the applicant and supported by the affidavits of witnesses. The writ must also state the names of the applicant, his representative, witnesses and counsel who will attend the search in the even the application is granted.73 Before the writ is issued, the judge must examine in he form of searching questions and answers, in writing and under oath or affirmation, the application and the witnesses he may produce on facts personally known to them.74

d. Is it possible for the opposing party to rely on privileges such as attorney/client privilege?

• If so, are there different types of privileges? • What are the possible consequences if a fact cannot be

proven due to the invocation of a privilege?

Again, the opposing party may rely on such privileges as the attorney/client privilege, husband and wife privilege, physician-patient privilege, clergyman-penitent privilege, and public officer-public interest privilege75.

The parties to such privilege communications are, under certain circumstances, made incompetent, by law, to testify on such communications.76 Thus, if a fact cannot be proved due to the invocation of a privilege, such fact would remain unsubstantiated.

e. What are the consequences if it turns out that the order was

unjustified?

72 Ibid., Sec. 14. 73 Ibid., Sec. 4 74 Ibid., Sec. 5

75 Ibid., at par. (e). 76 Francisco, Ricardo J., Basic Evidence 322 (1991).

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The Rules provide that where it is found after trial that there has been no infringement or threat of infringement of an intellectual property right, the court, upon motion of the alleged infringing defendant or expected adverse party and after due hearing, shall order the applicant to compensate the defendant or expected adverse party upon the cash bond, surety bond or other equivalent security for any injury or damage the latter suffered by the issuance and enforcement of the writ. Should the damages exceed the amount of the bond, the applicant shall be liable for the payment of the excess.77 The damages claimed above is independent from the damages claimed by the defendant in his counterclaim.78 f. Is the order subject to a security bond?

Yes, the order is subject to a bond. Under the Rules, the applicant

shall be required to post a cash bond, surety bond or other equivalent security executed in favor of the defendant or expected adverse party in a reasonable amount to be fixed by the court in its order granting the issuance of a writ of search and seizure. The bond shall be conditioned on the undertaking of the applicant that he will pay all the costs which may be adjudged to the defendant or expected adverse party and all damages which the latter may sustain by reason of the issuance of the writ.79

4. Questions to be answered regarding future improvements

a. Does your system comply with the TRIPS Agreement? Our system substantially complies with Art. 50 of the TRIPS

Agreement. There is no substantial distinction with the said treaty except as to formalities as previously discussed.

b. Are there ambitions or motivation for further developments,

improvements etc.? c. Are there any governmental or public ambitions in your country

to change the existing systems in the near future? As previously discussed, House Bill No. 2093 proposes to require Internet service providers to preserve, by electronic means and for a definite period, the integrity of computer data and traffic records in its system to facilitate the gathering of evidence in cybercrimes.

77 Ibid., Sec. 21, par. 1. 78 Ibid., Sec. 21, par. 5. 79 Ibid., Sec. 9.

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d. The following question is particularly addressed to the National Groups within the European Union: Do you think that the laws of your national systems are already in compliance with the said provision of the IP Directive or is there an immanent need for legal change?

Not applicable.

III. Article 47 TRIPS and Article 8 of the IP Directive

Article 47 (TRIPS) Right of Information Members may provide that the judicial authorities shall have the authority, unless this would be out of proportion to the seriousness of the infringement, to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution.

Article 8 “Right of Information” (IP Directive)

1. Member States shall ensure that, in the context of proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who:

(a) was found in possession of the infringing goods on a commercial scale;

(b) was found to be using the infringing services on a commercial scale;

(c) was found to be providing on a commercial scale services used in infringing activities;

or

(d) was indicated by the person referred to in point (a), (b) or (c) as being involved in the production, manufacture or distribution of the goods or the provision of the services.

2. The information referred to in paragraph 1 shall, as appropriate, comprise:

(a) the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers;

(b) information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question.

3. Paragraphs 1 and 2 shall apply without prejudice to other statutory provisions which:

(a) grant the rightholder rights to receive fuller information;

(b) govern the use in civil or criminal proceedings of the information communicated pursuant to this Article;

(c) govern responsibility for misuse of the right of information;

or

(d) afford an opportunity for refusing to provide information which would force the person referred to in paragraph 1 to admit to his/her own participation or that of his/her close relatives in an infringement of an intellectual property right;

or

(e) govern the protection of confidentiality of information sources or the processing of personal data.

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1. Remarks

According to Article 8 of the IP Directive, the infringer and/or even any other person found in the possession of infringing goods or using infringing services can be ordered to provide information on the origin and the distribution networks of the infringing goods or services within the context of proceedings concerning the infringement of an intellectual property right and in response to a “justified and proportionate” request by the claimant. Apparently a requirement of this “Right of information” is that the infringement has been proven.

This Article supplements Article 47 of the TRIPS Agreement.

2. Questions to be answered regarding requirements, extent and enforcement

a. It would be interesting to know whether and how Art 47 of the

TRIPS Agreement is implemented in the laws of your system? Art. 47 of the TRIPS Agreement is not implemented in the Philippines. Judicial authorities cannot compel the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution. However, such information may be obtained indirectly through the various modes of discovery such as deposition, written interrogatories, request for admission and production or inspection of documents or things (e.g. sales invoice evidencing the source of the infringing goods or services).

b. Do you think that the right holder must first prove that his property right is infringed in order to be entitled to assert this right?

Yes, the right holder must first satisfactorily establish that there was infringement of his property right before the infringer may be judicially compelled to divulge any information as to the identity of third persons who are involved in the production and distribution of the infringing goods or services. Otherwise, this right of information can be availed of, and abused, by one who does not have a right thereto.

c. Art. 8 of the IP Directive may also be directed against third

parties if the activity is on a “commercial scale”. Consequently it would be interesting to know if any experiences have been made in your country regarding requests which are directed against third parties.

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Since Art. 47 of the TRIPS Agreement is not implemented in the Philippines, we have not encountered this situation. In the Philippines, the right holder usually hires private investigators to aid him in obtaining information on the identity of the infringers as well as the whereabouts of the infringing goods or services.

d. Do you think that this right should also be enforceable in

preliminary injunction proceedings? It is our opinion that this right should be availed of only after a final judgment on the merits is rendered whereby a party is held liable for infringement.

In preliminary injunction proceedings, there is no finding of infringement yet. To avail of such right at this stage can lead to its abuse. The right holder can identify and obtain evidence against the manufacturers and distributors of the infringing goods or services even if after the trial on the merits, the respondent is subsequently not found liable for infringement.

e. Are there any ambitions in your country to change the law in view of complying with the TRIPS Agreement?

At present, there is no pending bill which proposes to implement the right of information under Art. 47 of the TRIPS Agreement.

3. Questions to be answered regarding limits and future improvements

The assertion of a right of information according to the abovementioned provisions may also be in conflict with the opposing party's confidential information. In this respect reference is made to the questions listed in B. I. 3. and B. II. 3. These questions may be taken into consideration in order to illustrate the limits to the enforcement of the right of information.

The same applies to the questions under B I. 4. and B II. 4 as to the description of any national ambitions in view of improving the legal system.

a. Whether and how and through what procedures can secret information (business information, know-how etc.) of the opposing party be protected in the laws of your system?

Not applicable.

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b. In particular, are there in your system procedural possibilities to restrict the access to the information to specific persons involved in the proceedings (attorney only, neutral expert)? If so, how is this restriction legally implemented and ensured?

Not applicable. c. How can abuses be prevented?

Not applicable. d. Is it possible for the opposing party to rely on privileges such as

attorney/client privilege?

• If so, are there different types of privileges? • What are the possible consequences if a fact cannot be

proven due to the invocation of a privilege? Not applicable. e. What are the consequences if it turns out that the order was

unjustified? Not applicable. f. Is the order subject to a security bond?

Not applicable. 4. Questions to be answered regarding future improvements

a. According to the opinion of your National Group, are there ambitions or motivations to further develop or improve your system? b. Are there any governmental or public ambitions in your country to improve or to change the existing systems?

At present, there is no pending legislation that seeks to empower the court to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the infringing goods or services and of their channels of distribution.

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c. The following question is particularly addressed to the National Groups within the European Union: Do you think that the laws of your national systems are already in compliance with the said provisions of the IP Directive? Not applicable.

IV. Miscellaneous questions

The National Groups are invited to comment on any additional aspect which they find relevant with regard to the foregoing questions and the specific aspects of the production of evidence.

Replies should be received before

June 6, 2005

and should be sent by email to the following address:

AIPPI General Secretariat

Tödistrasse 16

8027 Zurich – Switzerland

E-mail: mail@aippi.org Note: It will be helpful if the Groups follow the order of the questions in their Reports and cite the questions and numbers for each answer.